Dumasi v Commissioner, Venda Police 1990 (1) SA 1068 (V)
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Judgment
HARMS JA:
[1]
This appeal concerns a determination of the rights of competing applicants for the registration of trade marks
under section 17(3) of the Trade Marks Act 62 of 1963. During 1986, the appellant ("Levi Strauss"), a well
known clothing manufacturer based in the United States of America, began marketing men's clothing under the
trade marks Dockers (as a word mark) and Dockers with a wings device. Starting in 1987 it began registering
them worldwide. Before reaching the South African market and prior to the filing of registration applications in
this country, Mr Chaiman Nathoo, a local businessman who was aware of the use of these marks by Levi
Strauss overseas, filed an application on 12 September 1988 for the registration (88/8163) of the mark
Dockers simpliciter in class 25 in relation to articles of clothing excluding footwear. Nearly a year later, on 9
August 1989, Levi Strauss filed two applications (89/7138 and 89/7139), also in class 25 and relating to, inter
alia, clothing, for its said marks.
[2]
The Registrar of Trade Marks was subsequently called upon to determine the rights of these two parties under
section 17(3) which read as follows:
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"Where separate applications are made by different persons to be registered as proprietors respectively of trade
marks that so resemble each other that the use of such trade marks in relation to goods or services in respect of
which they are respectively sought to be registered would be likely to deceive or cause confusion, the registrar
may refuse to register any of them until the rights of those persons have, upon application in the prescribed
manner, been determined by him, or have been settled by agreement in a manner approved by him."
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The parties duly filed their statements of case and supporting affidavits and after argument the Registrar ruled
in favour of Levi Strauss by accepting its applications and directing that they be advertised in the Patent
Journal. By the time of the hearing Mr Nathoo had been replaced by the present respondent ("Coconut") as the
applicant for the registration of the firstmentioned trade mark under circumstances to which I shall return. In
any event, there was an appeal by Coconut and a crossappeal by Levi Strauss to the Full Court of the
Transvaal Provincial Division. The appeal was upheld and the crossappeal dismissed (by Du Plessis,
Southwood and Van der Westhuizen JJ). The net effect of the order was that the Coconut application was
accepted. Hence the present appeal by Levi Strauss.
[3]
A number of matters need not detain us. First, the application has to be decided under the 1963 Act and not
under the current Trade Marks Act 194 of 1993 (see its section 3(2)). Second, Levi Strauss has a right of appeal
to this Court without any leave (Cowbell AG v ICS Holdings Ltd, an as yet unreported judgment of this Court).
Third, all things being equal, the first application for a trade mark in South Africa has in these circumstances
priority (at least under the 1963 Act) and the fact that Mr Nathoo intentionally copied a foreign trade mark is
per se of no consequence (Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A) at 746FH). Fourth, the
Registrar's ratio in upholding Levi Strauss's claim to preference was patently wrong and based upon an
incorrect understanding of the evidence relating to use.
[5]
In spite of the fact that Mr Nathoo "trading as Milord Clothing Industries" alleged in his application form that he
proposed to use the Dockers trade mark in respect of clothing, it transpired during the exchange of evidence
that this claim was false. His explanation was that he was a director of Coconut and it was this company which
traded as Milord Clothing Industries; because he was a principal shareholder, he wrongly equated himself with
the company; and he was under the bona fide impression that he could give instructions to file the application
in his name. Because Mr Nathoo never had the intention to use the trade mark, he could not have claimed to
be its proprietor and, once again, all things being equal, Levi Strauss's applications were then entitled to
precedence (Valentino Globe BV v Phillips and another 1998 (3) SA 775 (A)).
[6]
Aware of his Achilles heel and conscious of the fact that Levi Strauss had raised the issue pertinently and had
stated that in its view the matter could not be rectified, Mr Nathoo surreptitiously and without notice to Levi
Strauss, applied to the Registrar for a substitution of Coconut for himself as applicant for the trade mark and
the Registrar, without notice
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to Levi Strauss, granted the substitution. Apart from the unprofessional conduct in approaching the Registrar in
this manner, the application to substitute Mr Nathoo was, as the Full Court noted, irregular in almost every
possible respect.
[7]
How did the Registrar substitute the one for the other as applicant? Reliance was placed by counsel upon
sections 49(7) and 56(2) which permitted the substitution of an applicant for the registration of a trade mark.
Assuming that the substitution was in terms of these provisions, it could only have been effected ex nunc and
not ex tunc. Since, generally speaking, a claim to proprietorship in a registered trade mark arises by way