"... arising from or forming part of proceedings instituted in another division of the said Supreme Court having jurisdiction
..."
The "proceedings" referred to can only be infringement proceedings. It is implicit that all divisions have jurisdiction.
Other proceedings contemplated by the Act are those relating to registration (section 16(5)); rectification of the
register (section 24); removal or variation (section 26); or removal (sections 26 and 27).
Disputes with the Registrar are those mentioned in section 53 and none of these can be said to "arise from
proceedings". These I can refer to as independent causes of action over which the Transvaal Provincial Division has
exclusive jurisdiction. The use of the word "claim" is not confusing, as argued. I can contemplate an applicant in
infringement proceedings finding it necessary to seek relief affecting the register as a prerequisite or sensible step
before claiming under section 34. He can join both in one application.
In my judgment, the object of the legislation was to avoid the impasse mentioned in the Spier Estate matter. Any
division of the Supreme Court, having jurisdiction to hear an infringement matter, can now adjudicate upon any
matter whether coraised in convention or raised reconvention, which was previously held to be the exclusive
function of the Transvaal Provincial Division.
The intention of the legislature, albeit badly expressed, can be summarised as follows:
Page 210 of [1996] 2 All SA 206 (W)
A. Any division or local division of the Supreme Court of South Africa has jurisdiction to hear an infringement action
subject, of course, to one or more of the traditional grounds of jurisdiction being present. (Veneta Mineraria Spa v
Carolina Collieries (Pty) Ltd (in Liquidation) 1987 (4) SA 883 (A).)
B. In those matters mentioned in Sections 53 and 57 of the Act the Transvaal Provincial Division has exclusive
jurisdiction notwithstanding an infringement action in some other division.
C. In those matters mentioned in Sections 16(5), 24, 26 and 27, if they are independent applications, the Transvaal
Provincial Division has exclusive jurisdiction.
D. If the matters mentioned in paragraph C above arise in infringement proceedings the court having jurisdiction to
hear the infringement action has concurrent jurisdiction with the Transvaal Provincial Division.
In the present matter the parties are resident in the Witwatersrand Local Division. The alleged infringement also
occurred within the jurisdiction of this Court. I conclude that this Court has jurisdiction to hear the matter and the
respondent's preliminary objection is dismissed.
Neither counsel spent time during argument about the history of the matter. It is all contained in the papers and
I will not repeat it herein, save what I consider to be relevant thereto.
The applicant is a society originally founded by members of the Dental Association. It has since blossomed and
almost every body comprising professional persons is now a member. It provides services relating to life assurance
and medical aid to members. At this stage 65 000 professional people are enrolled as members. There are about
4 500 authorised independent agents who market the applicant's product. It is obviously a soughtafter agency.
The respondent operates on the West Rand as a shortterm insurance broker. He is not one of the 4 500
authorised agents I have mentioned.
The applicant's trade mark and logo, herein of importance, is number 89/8658. It consists of two concentric
circles. In the outer circle the words "Protection Providence" appear clockwise in the upper half. In the bottom half,
appearing anticlockwise, are the words "Beskerming Voorsorg". The words are printed in capital letters. In the
inner circle the initials of the applicant, "P.P.S.", are printed in much bolder capitals.
The mark is not confined to any size or colour. However, the applicant has adopted a specific blue colour. The
blue colour features on all reproductions of the logo wherever it is used. They also appear on all the many buildings
which the applicant owns throughout the Republic.
During April 1993 the applicant became aware that the respondent was using a trade mark very similar to the
applicant's logo. The respondent's logo also consisted of two concentric circles. In the outer circle the words,
"Professional Personal Insurance" appear. They are printed in capitals and, sizewise, in the same proportion as the
applicant's logo. In the inner circle the letters "P.P.I." are printed in bold capitals in the same proportions as used in
the applicant's logo. Remarkably the same blue colour is used. I will refer to this logo as the "respondent's first
logo".
It cannot be, nor was it, disputed that the respondent's first logo so closely resembles the applicant's logo that
confusion would be inevitable.
Page 211 of [1996] 2 All SA 206 (W)
After April 1993 correspondence between the parties was exchanged. The respondent offered to design a new
logo. Square and triangular motifs were produced but rejected by the first respondent for reasons I need not
consider.
In an attempt to change his logo the respondent says:
"In the meanwhile the triangular motif and the square motif were both experimented on the letterheads of the first