Levi Strauss & Co v Coconut Trouser Manufacturers (Pty) Ltd
[2001] 4 All SA 1 (A)
Division:
Supreme Court of Appeal
Date:
17 May 2001
Case No:
274/99
Before:
Harms, Schutz, Farlam, Mthiyane JJA and Chetty AJA
Sourced by:
PR Cronje
Summarised by:
D Harris
Parallel Citation:
2001 (3) SA 1285 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
[1] Trade marks Competing applications for registration First application would take precedence Intention to use
trade mark constituting the jurisdictional fact in such application Absence of such intention by one applicant resulting in
other application taking precedence.
Editor's Summary
In the present appeal, the issue for determination was that of the competing rights of the Appellant and
Respondent, for the registration of trademarks under section 17(3) of the Trade Marks Act 62 of 1963. The
Appellant had been marketing clothing under a certain trademark overseas for some time. Before it reached the
South African market, a local businessman, aware of the use of the mark by Appellant, applied for the registration of
the mark in a certain class in relation to clothing. Subsequently, the Appellant applied for registration of its mark in
the same class. The Registrar of Trade Marks had to determine the rights of the two parties in terms of the Act, and
ruled in favour of the Appellant. By that time, the businessman mentioned above had been replaced by the
Respondent. The latter successfully appealed against the Registrar's decision, leading to the present appeal.
Held The businessman who had initially applied for the registration of the trademark before being substituted by
the Respondent had alleged that he had intended to use the mark in respect of clothing. This turned out to be
false. Without an intention on the part of Respondent to use the trademark, the Appellant's applications for
registration were entitled to precedence. When the Respondent's predecessor in the application became aware of
this problem, he applied to the Registrar for the substitution of himself with the Respondent, without notice to the
Appellant.
The granting of the substitution was held by the court a quo and by the present Court to be irregular. As a result,
the substitution could not have any retrospective effect, and the question remained as to whether the respondent's
predecessor intended to use the trademark at the date of his application for registration. As he had conceded that
he had no such intention, his argument that his application was first in line and that the first filing date would
determine the outcome of the case, fell away. According to the Court, even if the substitution of the Respondent for
its predecessor in the application could be equated with the amendment of a pleading as sought to do by the
Respondent, it could not confer on the Respondent rights which the original applicant lacked.
The Registrar was thus required to decide the competing applications for registration without regard to the
substitution. Intention was the jurisdictional fact in this regard. As the Respondent's predecessor lacked the
required intention at
Page 2 of [2001] 4 All SA 1 (A)
the relevant time, the Appellant was held to be entitled to precedence in its application.
Notes
For Trade Marks see LAWSA (Vol 29, paras 1 266)
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.)
South Africa
Associated Paint & Chemical Industries (Pty) Ltd t/a Albestra Paint and Lacquers v Smit [2000] 2 All SA 115 (A);
2000 (2) SA 789 (A)
Cowbell AG v ICS Holdings Ltd Case number 250/99, unreported (A)
Du Toit v Highway Carriers and another 1999 (4) SA 564 (W)
Valentino Globe BV v Phillips and another [1998] 4 All SA 1 (A); 1998 (3) SA 775 (A)
Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A)
Venda