(1) The appeal succeeds with costs, including the costs of two counsel.
(2) Paragraph 1 of the order of the court below is substituted with:
"(a)The trade mark registration no 72/0463 Idem in class 16 in the name of Arjo Wiggins Ltd is rectified in terms of
section 27 of the Act by the deletion of all goods and the specification covered by the registration other than
paper and paper articles.
(b) The first respondent is to pay the costs".
(Nienaber, Harms, Navsa JJA and Froneman AJA concurred in the judgment of Cameron JA.)
For the appellant:
C Puckrin SC and J Cullabine SC instructed by Spoor and Fisher, Pretoria
Correspondents for the appellants:
Israel and Sackstein, Bloemfontein
For the respondent:
RM Robinson instructed by DM Kisch Incorporated, Pretoria
Correspondents for the respondents:
Rossouws, Bloemfontein
Footnotes
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Section 34(1) provides:
(1) The rights acquired by registration of a trade mark shall be infringed by
(a) the unauthorized use in the course of trade in relation to goods or services in respect of which the trade
mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or
cause confusion;
(b) the unauthorized use of a mark which is identical or similar to the trade mark registered, in the course of
trade in relation to goods or services which are so similar to the goods or services in respect of which the
trade mark is registered, that in such use there exists the likelihood of deception or confusion;
(c) the unauthorized use in the course of trade in relation to any goods or services of a mark which is identical
or similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the
said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the
repute of the registered trade mark, notwithstanding the absence of confusion or deception: Provided that
the provisions of this paragraph shall not apply to a trade mark referred to in section 70(2).
Section 27, which is titled "Removal from register on ground of nonuse", reads in part:
(1) Subject to the provisions of section 70(2), a registered trade mark may, on application to the court, or, at the
option of the applicant and subject to the provisions of section 59 and in the prescribed manner, to the registrar
by any interested person, be removed from the register in respect of any of the goods or services in respect of
which it is registered, on the ground either
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for
registration that it should be used in relation to those goods or services by him or any person permitted to
use the trade mark as contemplated by section 38, and that there has in fact been no bona fide use of the
trade mark in relation to those goods or services by any proprietor thereof or any person so permitted for
the time being up to the date three months before the date of the application;
(b) that up to the date three months before the date of the application, a continuous period of five years or
longer has elapsed from the date of issue of the certificate of registration during which the trade mark was
registered and during which there was no bona fide use thereof in relation to those goods or services by
any proprietor thereof or any person permitted to use the trade mark as contemplated in section 38 during
the period concerned; or
(c) subject to such notice as the court or the registrar, as the case may be, shall direct, and subject to the
provisions of the regulations, that, in the case of a trade mark registered in the name of a body corporate,
or in the name of a natural person, such body corporate was dissolved, or such natural person died, not
less than two years prior to the date of the application and that no application for registration of an
assignment of such trade mark has been made in terms of section 40.
(Act 38 of 1997 amended section 27(1) in a manner not material to the proceedings.)
1963 (2) SA 10 (T).
Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation 1963 (3) SA 341 (A).
1963 (3) SA at 351 EF.
1997 (1) SA 1 (A) at 2930 (EM Grosskopf JA). Also reported at [1996] 4 All SA 1 (A) Ed.
Section 36 protects as against the proprietor of a registered trade mark, or a trade mark entitled to protection under
the Paris convention of 1883 as a wellknown trade mark, the vested rights of certain persons who have made
"continuous and bona fide use" of the trade mark from certain dates.
1997 (1) SA 1 (A) at 30D.
1963 (2) SA 10 (T) at 27GH.
1963 (2) SA 10 (T) at 25EF.
1963 (3) SA 341 (A) at 351CF.
Section 1 of the Act defines "trade mark" so far as presently relevant as a mark used or proposed to be used "in
relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is
used or proposed to be used from the same kind of goods or services connected in the course of trade with any other
person". Section 27 likewise contemplates bona fide use "in relation to" goods and services. In terms of section 2(3)
(a), references in the Act to the use of a mark "in relation to goods" are to be construed as references to its use "upon,
or in physical or other relation to" the goods. For an exposition see Webster & Page South African Law of Trade Marks
4ed by CE Webster and GE Morley (1997) para 4.3 at 44.