9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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 s 38 within the
period concerned" (emphasis added).
See BOE Bank v Trustees, Knox Property Trust (supra) at 432437; Honoré South African Law of Trusts (5ed Juta) at
7072.
PlasconEvans Paints Ltd v Van Riebeeck Paints 1984 (3) SA 623 (A) at 634HI.
See Moolla Group Ltd and others v The GAP and others [2005] 4 All SA 245 (SCA) where Harms JA says the following:
"[38] In principle, there does not appear to be any reason at present to require quality control by or on behalf of
the proprietor as a requirement for permitted use. As Lord Nicholls explained in Scandecor.
'A trade mark is a badge of origin or source. The function of a trade mark is to distinguish goods
having one business source from goods having a different business source. It must be "distinctive".
That is to say, it must be recognisable by a buyer of goods to which it has been affixed as indicating
that they are of the same origin as other goods which bear the mark and whose quality has
engendered goodwill: see GE Trade Mark [1973] RPC 297,325, per Lord Diplock'.
This exposition accords with the position in our law. Further, he said:
'Although the use of trade marks is founded on customers' concern about the quality of goods on
offer, a trade mark does not itself amount to a representation of quality. Rather it indicates that the
goods are of the standard which the proprietor is content to distribute "under his banner": see Laddie
J, in Glaxo Group v Dowelhurst Ltd [2000] FSR 529, 540541. . . Thus, in relying on a trade mark
consumers rely, not on any legal guarantee of quality, but on the proprietor of a trade mark having
an economic interest in maintaining the value of his mark. It is normally contrary to a proprietor's
selfinterest to allow the quality of the goods sold under his banner to decline'.
[39] Put differently, although in the ordinary course of events a trade mark owner would wish to ensure the
consistency of the quality of the goods or services marketed under its mark, nothing prevents the owner
from, providing under one mark goods or services of differing, inconsistent or poor quality. The customer
has in the event of the purchase of a substandard product or the provision of substandard services no
redress based on trade mark principles. Market forces may eventually exact their toll. All a trade mark
does, in the words of Laddie J in Glaxo is to identify the enterprise that is responsible for the quality of the
goods or services. Again Lord Nicholls:
'This approach accords with business reality and customers' everyday expectations. Customers
realise there is always the prospect that, unbeknown to them, the management of a business may
change. To confine the use of a trade mark to the original owner of a business would be to give the
concept of a business origin or business source an unrealistically narrow and impractical meaning. Of
course, the new management, the new owners, may not adhere to the same standards as the
original owner. But the risk of an unannounced change of standards is ever present, even when there
has been no change in management. An owner may always decide to change his quality standards.
As already noted, customers rely on it being in the owner's selfinterest to maintain the value of his
mark. The selfinterest of the owner of a trade mark in maintaining its value applies as much to a
purchaser of the mark as it does to the original owner'.
[40] Although Scandecor was concerned with an exclusive licence, its conclusion that the current UK Act
countenances bare licensing, ie, licensing without quality control, applies in my view to all licences under our
current Act. As Lord Nicholls explained:
'Customers are well used to the practice of licensing of trade marks. When they see goods to which a
mark has been affixed, they understand that the goods have been produced either by the owner of
the mark or by someone else acting with his consent.
For their quality assurance customers rely on the selfinterest of the owner. They assume that if a
licence has been granted the owner can be expected to have chosen a suitable licensee and imposed
suitable terms. They also assume that during the currency of any licence the licensee, as well as the
owner, is likely to have an interest in maintaining the value of the brand name. Customers are not to
be taken to rely on the protection supposedly afforded by a legal requirement that the proprietor
must always retain and exercise an inherently imprecise degree of control over the licensee's
activities."
1978/05496 in Class 19; 1981/09520 in Class 12; 1990/04356 in Class 1; 1990/04357 in Class 2; 1990/04358 in Class
6; 1990/04359 in Class 8; 1990/04360 in Class 11; 1990/04361 in Class 16; 1990/04362 in Class 20; 1990/04363 in
Class 28; and 1990/04364 in Class 37'.
See, generally Webster & Page Trade Mark Law para [13.32], at 1334 to 1336, and the cases quoted.
Also see s 70(1) o f t h e A c t a s r e a d w i t h s 3 o f t h e A c t ; Mars Incorporated v Cadbury (Swaziland) (Pty) Ltd
2000 (4) SA 1010 (SCA) at para [10].
1997 (3) SA 13 (A) at 2426.
Cambridge Plan AG v Moore 1987 (4) SA 821 (D) at 837; approved in Hollywood Curl (Pty) Ltd v Twins Products (Pty)
Ltd (1) 1989 (1) SA 236 (A) at 249J.
McDonald's Corporation v Joburgers DriveInn Restaurant (Pty) Ltd; McDonald's Corporation v Dax Props CC;
McDonald's Corporation v Joburgers DriveInn Restaurant (Pty) Ltd 1997 (1) SA 1 (A).
See Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty) Ltd 1990 (1) SA 722 (A) at 729.
See, generally Federation Internationale de Football v Bartlett 1994 (4) SA 722 (T) at 743A as overruled in Luster
Products (supra) at 27A.
2001 (3) SA 941 (SCA) at 947H948D. [Also reported at [2001] 4 All SA 242 (A) Ed.]
2001 (1) SA 844 (SCA) at 850, para [9].
See: Beecham Group plc v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA) para [8] at 645B646B [also reported at [2002] 4
All SA 193 (SCA) Ed]; Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) 948AC; SAFA v Stanton Woodrush (Pty)
Ltd 2003 (3) SA 313 (SCA) para [13] at 322CD; Laugh it Off Promotions CC v SA Breweries International [2004] 4 All
SA 151 (SCA) at 156 para [12].
As per Standard Bank (supra). Also see the unreported judgment of Bayerische Motoren Werke Aktiengesellschaft v BW
Tech unreported judgment in TPD dated 29 November 2004 under case number 4990/04 at 3, line 10).
Peter Jackson (Overseas) Ltd v Rand Tobacco (1936) Ltd 1937 TPD 450 at 454; Glenton & Mitchell v French Tea &
Coffee Works 1927 WLD 272 at 275276.
PPI Makelaars v PPS 1998 (1) SA 595 (SCA) at 606C. [Also reported at [1997] 4 All SA 444 (A) Ed.]
See: Aktiebolaget Volvo v Heritage (LEIC) Ltd [2000] FSR 253 (ChD) at 264.
1984 (3) SA 623 at 634 (A).
2001 (1) SA 844 (SCA).