exercised only in exceptional circumstances. Once a trade mark proprietor proved relevant use within a subsection
of a category, removal of the mark will not be granted unless evident that the expungement described a
commercially coherent category of goods within the existing specification.
The appeal was therefore upheld.
Notes
For Trade marks see LAWSA Reissue (Vol 29, paras 1 306).
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
Distillers Corporation (SA) Ltd v SA Breweries Ltd and another 1976 (3) SA 514 (A)
Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk 1963 (2) SA 10 (T) F
Page 149 of [2002] 2 All SA 147 (A)
McDonald's Corporation v Joburgers DriveInn Restaurant (Pty) Ltd and another [1996] 4 All SA 1 (1997 (1) SA 1) (A)
Oude Meester Groep Bpk and another v SA Breweries Ltd 1973 (4) SA 145 (W)
Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation 1963 (3) SA 341 (A)
United Kingdom
Electrolux Ltd v Electrix Ltd and another (1954) 71 RPC 23 (CA)
Imperial Group Ltd v Philip Morris Ltd [1982] FSR 72 (CA)
Kodiak Trade Mark [1990] FSR 49 (ChD)
Mercury Communications Ltd v Mercury Interactive (UK) Ltd [1995] FSR 850 (ChD)
Minerva Trade Mark [2000] FSR 734 (ChD)
View Parallel Citation
Judgment
CAMERON JA:
[1]
The appellant, a United Kingdom company ("Arjo"), is the proprietor in South Africa of the registered trade mark
"Idem". Its registration, granted in 1972, is in respect of "paper, paper articles, cardboard, cardboard articles
and paper stationery". Arjo trades in South Africa through an associated company registered locally as a
foreign corporation, Carbonless Papers Ltd ("CPL"), which is its exclusive distributor. The first respondent ("the
respondent"), a company incorporated locally in 1970, held for some twenty years until its expiry in 1993 the
registered trade mark "Idem" in respect of "stamps, stamp pads, drawing boards, compasses, drawing
squares, photographs, writing and drawing instruments for students, plastic products, paint brushes, printing
letters, pens, pencils and other writing instruments". After the respondent's registration lapsed, Arjo in 1997
issued summons, claiming an interdict, royalties and associated relief for infringement in terms of section 34 of
the Trade Marks Act 194 of 1993 ("the Act")1 of the Idem mark through its use on paper, cardboard, carbon
paper and envelopes. The respondent rejoined with an application for a stay of those proceedings, and then
launched its own
Page 150 of [2002] 2 All SA 147 (A)
foray, an expungement application in
View Parallel Citation
terms of section 27 of the Act.2 (The Registrar of Trade Marks, who abides the outcome, was the second
respondent.) It was common cause that the respondent is an "interested person" as contemplated in section
27, and that it has legal standing to challenge Arjo's registration. Before Hartzenberg J in the court below the
respondent failed to secure a stay of Arjo's action, but succeeded in obtaining the main relief it sought: the
deletion from the register of trade marks of Arjo's Idem mark in respect of all goods other than "carbonless
paper, namely specialised paper whose purpose it is to perform the same function as carbon paper because of
its special characteristics". There is no appeal against Hartzenberg J's refusal of a stay; but with his leave Arjo
appeals against the expungement order.
[2]
The facts are uncomplicated. Arjo's South African sales of "Idem" paper products have so far been confined to