Cowbell AG v ICS Holdings Ltd
 4 All SA 242 (A)
Supreme Court of Appeal
16 March 2001
Nienaber, Harms, Navsa JJA, Melunsky and Nugent AJJA
2001 (3) SA 941 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
 Appeal Leave to appeal Appeal against refusal of application for registration of trade mark Whether leave to appeal
is required Trade Marks Act 62 of 1963 not requiring leave to appeal as prerequisite to filing notice of appeal.
 Intellectual property law Patents Registration of trade marks Bar to registration Section 17(1) Trade Marks
Act 62 of 1963 Section prohibits the registration of another trade mark if it sufficiently resembles an existing trade
mark on the register, if the use of both marks would lead to deception or confusion.
 Trade Marks Registration of Section 17(1) Trade Marks Act 62 of 1963 Section prohibits the registration of
another trade mark if it sufficiently resembles an existing trade mark on the register, if the use of both marks would lead
to deception or confusion.
Both parties in the present appeal were involved in the dairy industry. The Respondent was the registered
proprietor of a number of trade marks in a class in which the Appellant had sought to register its trade mark. The
Respondent successfully opposed the registration of the Appellant's mark, based on the provisions of section 17(1)
of the Trade Marks Act 62 of 1963 ("the Act"). This led to the noting of the present appeal.
Believing it necessary to apply for leave to appeal before filing a notice of appeal, the Appellants made such an
application to the lower court. The application was struck from the roll on the basis that leave to appeal was
unnecessary. The abortive proceedings rendered the filing of the notice to appeal late. An application for
condonation was therefore before the present Court.
Held As the application for registration was made during the course of the application of the 1963 Trade Marks
Act, it had to be dealt with in terms of that Act. The question was whether that Act required leave to appeal as a
precursor to filing a notice of appeal. An examination of the act established that the Appellant's right of appeal was
not subject to the need to apply for leave to appeal.
The notice of appeal had to be filed within one month of the judgment or order to which it related. The
Respondent's main ground of attack with regard to the condonation application was that the Appellant had no
prospects of success on appeal. This was found to be an argument without merit. The Appellant had followed the
advice of senior counsel in applying for leave to appeal, and had thereby lost time. It was decided that condonation
should be granted.
On the merits, the Court had to consider the provisions of section 17(1) of the Act. The section prohibits the
registration of another trade mark if it
Page 243 of  4 All SA 242 (A)
sufficiently resembles an existing trade mark on the register, if the use of both marks would lead to deception or
confusion. The Respondent argued that as it was the owner of a number of trade marks in the relevant class, there
was an absolute bar on the registration of the Appellant's mark. All the trade marks concerned related to dairy
products. The test was whether, on a comparison of the two marks, it could be said that there was a likelihood of
confusion if both were used together in the ordinary course of business.
It was agreed that the visual and aural similarity between the trade marks was nonexistent. However, the court
a quo found that there was a conceptual similarity. The present Court found the lower court's approach to be
untenable. If its argument were to be upheld, that would enable the Respondent to lay claim to all words having a
dairy connotation or to all breeds of dairy animal. The appeal was upheld, with costs.
For Intellectual Property Law see LAWSA Reissue (Vol 20(1), paras 55 91)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed. H N refers to
corresponding headnote number.)