Spier Estate v Die Bergkelder Bpk and Another 1988 (1) SA 94 (C)
Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty) Ltd 1990 (1) SA 722 (A)
Veneta Mineraria Spa v Carolina Collieries (Pty) Ltd (in Liquidation) 1987 (4) SA 883 (A)
The relief sought is an interdict restraining the respondents from infringing the applicant's rights in Trade Mark
Registration Numbers 89/8359 and 89/8658 for the mark "P.P.S." in Class 36 in terms of the provisions of section
34(1)(a), (b), (c ) of the Trade Marks Act, No. 194 of 1993 (to which I will refer as "the Act"). The applicant also seeks
relief restraining the respondents from passing off his services as, and for, those of the applicant.
The second respondent is the sole proprietor of the first respondent. They are indeed the same entity and I will
simply refer to them collectively as "the respondent".
It is the respondent's preliminary argument that this Court, the Witwatersrand Local Division, has no jurisdiction
to hear a matter wherein the cause of action is the infringement of rights in a trade mark.
It is a convenient starting point to refer to the provisions of the Trade Marks Act No. 62 of 1993 (the "old Act").
The old Act was repealed in terms of section 71 of the Act.
In terms of section 2 of the old Act "Court" was defined as:
"In relation to any matter means the division of the Supreme Court of South Africa having jurisdiction in respect of that
Thus an infringement action could be heard by any division or local division of the Supreme Court of South Africa.
A problem often arose when, as a defence to an infringement action, a counterclaim seeking the rectification of
the Trade Mark Register was raised. The register is kept in Pretoria. Such a counterclaim is, as regards the
Registrar, one in rem. It was held that only the Transvaal Provincial Division, as the forum rei sitae, had jurisdiction.
See for example Spier Estate v Die Bergkelder Bpk and Another 1988 (1) SA 94 (C).
This could result in considerable inconvenience to litigants and the courts. Confusion and uncertainty are not
difficult to visualise. Further confusion was caused by the obiter dictum in Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty)
Ltd 1990 (1) SA 722 (A). At pages 726F to 727B the learned Judge of Appeal doubted the correctness of the
judgment in the Spier Estates matter, supra. Whatever view is correct, the position was most unsatisfactory.
It is presumed that the legislature was aware of the situation and passed the Act to make matters certain. The
result, however, is anything but satisfactory. "Court" is defined in section 1(1) of the Act as follows:
Page 209 of  2 All SA 206 (W)
"Court means the Transvaal Provincial Division of the Supreme Court of South Africa, but in relation to any claim or
counterclaim for removal, amendment or variation of, or other relief affecting any entry in the register arising from or
forming part of proceedings instituted in any other Division of the said Supreme Court having jurisdiction in relation to the
proceedings, includes that division in respect of such a claim or counterclaim."
Section 34 of the Act deals with the infringement of registered trade marks. Section 34(3) provides as follows:
Where a trade mark registered in terms of this Act has been infringed, the court may grant the proprietor thereof the
following relief, namely ...".
Counsel contended that the only court which may hear infringement matters is the court defined in section 1(1),
namely the Transvaal Provincial Division.
The argument continues that the definition entails that all other divisions of the Supreme Court may hear claims
or counterclaims relating to:
(i) removal of registered trade marks;
(ii) amendments of registered trade marks;
(iii) variation of registered trade marks; or
(iv) other relief affecting any entry in the register.
Because infringement is not mentioned it is excluded.
If this argument is correct absurd results follow. There are two presumptions which can be applied.
First, the legislature does not intend absurdities and, secondly, the general presumption against an
interpretation that would oust the jurisdiction of the Supreme Court (see for example De Wet v Deetleefs 1928 AD
286 at 290).
I cannot accept the respondent's argument.
If reference is had to the definition it is clear that the removal, amendment or variation or other relief affecting an
entry is contemplated as: