marks containing a common element appears to me to be an extraneous matter. It is, however, not necessary
to reach a final decision on this aspect because the concept of a series of marks cannot arise in the present
instance. There is no series in use belonging to the appellant, and furthermore, the prefix in casu is not very
distinctive but is, rather, descriptive. Had the prefix been nondescriptive and borne a high degree of
distinctiveness there might have been merit in counsel's submission."
View Parallel Citation
These views, at the very least, accord with the practice adopted by the British Registry (Semigres Trade Mark
[1979] RPC 330) and with the general approach favoured by Corbett JA.
[18] The premise of the respondent's argument is that the main object of section 17(1) is consumer protection and
only indirectly the protection of registered trade marks. I disagree. Consumer protection is primarily catered for
by section 16(1) and registered monopolies by section 17(1). Registration of the appellant's mark would
provide an absolute defence against an infringement action based upon the respondent's earlier marks. To
prevent that eventuality where the second mark is confusingly similar to an earlier mark as registered is the
reason why section 17(1) was enacted. The further argument is that since, as a general rule, the singular
includes the plural, section 17(1) prohibits also the registration of a trade mark if it resembles "trade marks
belonging to a different proprietor". But if one extrapolates the argument that the singular includes the plural,
it would mean that trade marks belonging to different proprietors could form part of the series. That identifies
another problem. The respondent's
Page 250 of [2001] 4 All SA 242 (A)
rks are not associated and that means that they can be assigned individually to different proprietors. The fact
that they belong to one proprietor is fortuitous and transient. The series argument might have had some merit
had the marks been associated. I have in any event a conceptual difficulty. If A does not resemble B, C or D
individually, I fail to understand how it can resemble them collectively.
[19] In the result the appeal must succeed with costs. All that remains is the costs of the application for
condonation. It would have been unnecessary had the appellant accepted the respondent's advice. It would
also have been unnecessary had the respondent not taken the incorrect view that it could not have consented
to the late filing of the notice of appeal. Taking a broad approach, it seems to me that justice will be served if
no costs order is made in relation thereto.
[20] The order is consequently:
(a) The condonation application is granted.
(b) The appeal is upheld with costs, including the costs of two counsel.
(c) The order of the court a quo is amended to read: "The appeal is dismissed with costs, including the costs of
two counsel."
(Nienaber, Navsa JJA, Melunsky and Nugent AJJA concurred in the judgment of Harms JA.)
For the applicant:
L Bowman SC and B Du Plessis instructed by John & Kernick, Pretoria
For the respondent:
O Salmon instructed by Spoor & Fisher, Centurion