the respondent should not have a monopoly on the shatterproof description, even if only in the word
"Shatterprufe". The problem is, of course, that the use of the term "shatterproof" might lead to misuse by
the applicant or other traders. It has in fact been contended that the applicant has used the term on its tax
invoice and website in such a manner that it could readily be perceived to be a trade mark. The same
problem will arise when the applicant would place only the word shatterproof on its laminated glass: that is
likely to lead to confusion with Shatterprufe, thus: if the word shatterproof were to be placed on laminated
glass on its own, or even words such as "this is shatterproof" then it would not amount to a bona fide
description, since it might be perceived to be a trade mark. However, the words "this glass is shatterproof",
without any accent on the word shatterproof, would for example not be confusing and permit the applicant
to use the word which is indeed descriptive in the public's eye.
Declaratory order
[48] The applicant seeks a declaratory order that the descriptive use of the generic term "shatterproof" is not an
infringement of the respondent's trade mark registrations by virtue of section 34(2)(b) of the Act. Section
34(2)(b) provides that:
"A registered trade mark is not infringed by 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."
The relief that the applicant seeks in the nature of the declaratory order overlaps with the defence that the
applicant raises in the counterapplication for an interdict based on trade mark infringement. As such, the
declaratory order sought and the issue of infringement will be dealt with together.
[49] The respondent relies on trade mark registration number 1942/00516/2 Shatterprufe in Class 12 registered
in respect of:
"safety glass and windows included in the class; motor car windscreens; the aforegoing mode of safety glass;
articles of safety glass included in this class."
Section 34(1)(a) provides that:
"The rights acquired by registration of a trade mark shall be infringed by the unauthorised 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."
[50] For the principles to be considered in determining whether there is trade mark infringement, I need only
refer to PlasconEvans Paints (supra) at 640H641D; Cowbell AG v ICS Holdings Ltd20 a n d Bata Ltd v Face
Fashions CC and another.21 I shall quote passages from PlasconEvans and Bata (supra) hereunder.
Page 278 of [2006] 2 All SA 260 (T)
[51] That the mark Shatterproof is confusingly similar to the trade mark Shatterprufe is not in dispute. The entire
case of the applicant is, indeed, based on their phonetic similarity. The only issue in the infringement
proceedings therefore is whether the conduct of the applicant falls within the ambit of the defence set out in
section 34(2)(b) of the Act.
[52] Section 34(2)(b) of the Act has not received any significant legal consideration in South Africa. Section 46(b)
of the repealed Act provided that:
"No registration of a trade mark shall interfere with the use by any person of any bona fide description of the
character or quality of his goods or services."
In PlasconEvans (supra), the Court held as follows in this regard at 645F:
"Having regard to the aforegoing and without attempting to give an exact or comprehensive definition of what
constitutes a bona fide description for purposes of s 46(b), it seems to me that what the legislature intended to
safeguard by means of the provisions of the subsection is the use by a trader, in relation to his goods, of words,
which are fairly descriptive of his goods, generally for the purpose of describing the character or quality of the
goods: the use of the words must not be a mere device to secure some ulterior object, as for example where the
words were used in order to take advantage of the goodwill attaching to the registered trade mark of another."
[53] The question as to whether descriptive use was permitted by section 46(b) of the repealed Act was
pertinently considered in Standard Bank of SA Ltd v United Bank Ltd 1991 (4) SA 780 (T) where the Court
stated at 806BD:
"The need to grant an exception for the ordinary English word is less pressing than in the case of a name. No one
is prevented from using such words to describe the character or quality of his goods and services. But when it
comes to using them as a trade mark which would infringe a registered mark unless they were saved by section
46(b), I agree with Webster & Page that it is not the purpose of section 46(b) to save them. Another trade mark
can always be found, and the descriptive words remain to be used for description" (emphasis added).
On the question whether the use was bona fide or not the court stated:
"The alternative finding that I just made is less absolute, and is that it is very difficult to prove bona fide
descriptive use when the use is as a trade mark" (emphasis added).
[54] In the present case it was contended that applicant's manner of use is to proclaim the origin of the goods as
opposed to their description. In other words the applicant is using shatterproof to fulfil the essential function
of a trade mark.22 In June 2003 it came to the attention of the respondents that the applicant was using
the word "shatterproof" on its website. It was contended that the bold and prominent use thereof justified
the inference that it was used in a trade mark sense and not in any bona fide descriptive manner. The
prominent use of shatterproof is also evident, it was argued, from the tax invoice of the applicant. The