13
14
15
16
17
18
19
20
21
22
23
24
At 216 in fine.
This conflicts with something I said previously in Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and
another 2000 (2) SA 771 (SCA) at para 8 (also reported at [2000] 2 All SA 1 (SCA) Ed):
"During argument, counsel were unable to suggest an alternative name for the product. If one considers that a trade
mark performs an adjectival function in relation to goods or services, the fact that another noun for the product is not
readily apparent is a fair indication that the term does not perform any function."
The second sentence does not make sense as it stands since it contains a contradiction and should read:
"If one considers that a trade mark does not perform an adjectival function in relation to goods or services, the fact
that another noun for the product is not readily apparent is a fair indication that the term does not perform any
function."
Eg ITT Continental Baking Co v Registrar of Trade Marks 1980 (2) SA 127 (T) at 129H where the "rule" concerning the
nonregistrability of laudatory epithets was regarded as an example of the prohibition contained in section 10(1A). (Per
McEwan J, Nestadt J concurring.) Also Pleasure Foods (Pty) Ltd v TMI Foods CC t/a Mega Burger 2000 (4) SA 181 (T) at
189IJ.
S 34(2)(a)(c):
"A registered trade mark is not infringed by
(a) any bona fide use by a person of his own name, the name of his place of business, the name of any of his
predecessors in business, or the name of any such predecessor's place of business;
(b) the use by any person of any bona fide description or indication of the kind, quality, quantity, intended purpose,
value, geographical origin or other characteristics of his goods or services, or the mode or time of production of
the goods or the rendering of the services;
(c) t h e bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the
intended purpose of such goods, including spare parts and accessories, and such services."
1976 (3) SA 514 (A) at 552H553C.
Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and another 2000 (2) SA 771 (SCA) at para 9.
[1996] RPC 281 (ChD) at 302. A reference to this passage can be found in Beecham Group PLC and another v Triomed
(Pty) Ltd [2002] 4 All SA 193 (SCA) at para 15.
I do not deal separately with "Premier Package" because the package bit adds nothing of consequence.
[1962] RPC 222 at 223.
[2002] EWCA Civ 387. To be found at www.bailii.org/ew/cases/EWCA/Civ.
Cf Standard Bank of SA Ltd v United Bank Ltd and another 1991 (4) SA 780 (T).
Para 3.30.