[18] When the repealed Act came into force, the registration originally filed in class 15 under number 516/42 in
1942 was divided into four marks covering classes 11, 12, 19 and 21. By virtue of the interest of the
Shatterprufe Company in building glass, it was decided in 1978 to register the Shatterprufe trade mark
defensively in terms of the provisions of section 53 of the repealed Act. By 1980, the Shatterprufe Company
was exporting windscreens to Europe, Australia and to the USA west coast. In 1987 an article appearing in
the Reader's Digest in South Africa mentioned Shatterprufe, amongst others (Lennons, Moirs, Purity, Sanlam
and Oros) as being one of the wellknown trade marks in South Africa. In 1990 application was made for
further defensive trade mark registrations. By 1990 the turnover of Shatterprufe products exceeded R335
million rand. In 1993 all of the Shatterprufe trade marks were assigned to "The Baker Street Trust". At all
times the actual users of the registered trade mark Shatterprufe (as opposed to the registered proprietor)
were recorded as registered users in terms of section 48 of the repealed Act. In terms of section 48 of the
repealed Act, such use was "permitted use" and inured to the benefit of the proprietor. In 2001, a further
restructuring took place in terms of which the third respondent, became the user of the Shatterprufe trade
marks under the licence from the Trust and with the authority of the trustees. In terms of section 38 of the
Act all use made of the Shatterprufe trade mark by the third respondent inured to the benefit of the Trustees
of the Trust, ie the respondents (as defined).
[19] Mr Morley argued that the aforementioned evidence shows extensive use of the Shatterprufe trade marks in
South Africa by the respondent and its predecessorintitle since at least 1929. I shall return to the use
presently made by the respondent through its licensee, the third respondent, when dealing with the
grounds of attack on the trade mark registrations by the applicant.
The expungement
[20] The expungement application of the applicant can be summarised as follows: (1) It is improper for the
Shatterprufe trade marks of the respondent to be registered in the name of a "trust"; being the Baker Street
Trust. Accordingly, the entries wrongly remain on the register as envisaged by section 24(1) of the Act. (2)
The trade marks of the respondent have not been used as contemplated by section 27(1)(a) and (b) of the
Act. It was argued that since "The Baker Street Trust" is not a legal entity, it is
Page 267 of [2006] 2 All SA 260 (T)
not entitled to own or exercise control over any property; there has, accordingly, been no use of the trade
mark as contemplated by section 27(1)(a) and (b) of the Act; and (3) for a number of reasons (all related to
the ability of the trade mark Shatterprufe to function as a trade mark), the Shatterprufe registrations of the
respondent fall to be expunged in terms of section 24(1) as read with sections 9, 10(1), 10(2), 10(12) and
10(13) of the Act.
[21] Section 1 of the Trust Property Contol Act 57 of 1988 makes it clear that a trust is not regarded as a
separate legal entity.4 As such, the applicant contends that "The Baker Street Trust" is not entitled in law to
"own" or be the registered proprietor of the trade mark registrations. Accordingly, the applicant argues that
the trade mark registrations registered in the name of "The Baker Street Trust" are entries wrongly
remaining on the register as they have been entered on the register in the name of an entity that is not a
"person" and thus not a valid "applicant" as contemplated in terms of the Act and therefore is not entitled to
claim proprietorship in a trade mark.
[22] There is no merit in this approach. If one examines the Trust Deed itself it is clear that the founder of the
Baker Street Trust intended that it be referred to as such for convenience, while at the same time
recognising the legal reality that its assets vested in the trustees of the Trust. The fact that the trade marks
are recorded in the register of trade marks as being in the name of "The Baker Street Trust" does not alter
the underlying reality that the trade marks in issue vest in the trustees of The Baker Street Trust.
[23] The authorities are also clear. In BOE Bank v Trustees, Knox Property Trust5 t h e C o u r t r e j e c t e d t h e
proposition that a suretyship undertaken for the debts of a trust (where recorded in the name of the trust)
could not be valid since the trust was not a legal entity. The court held that the identity of the trustees was
readily ascertainable and that it was not necessary to amend the Deed of Suretyship to make reference to
"the Trustees of that Trust". Similarly, the Supreme Court of Appeal has held that a bequest to an existing
trust is valid, and can be construed as a bequest to the trustees for the purposes of the trust. In this
regard Rabie CJ held in Kohlberg v Burnett NO and others:6
"If a trust can receive benefits under a will, I have difficulty in understanding the contention that the deceased
did not in clause 3 of his will declare who were to be the beneficiaries in respect of the residue of his estate. It is
clear from the language used in the clause that the deceased bequeathed the remainder of his estate to the two
trusts mentioned therein. It is true, of course, that a trust, not being a legal persona, cannot as a trust, acquire
or hold property, but this fact does not bring about that the two trusts were not properly appointed as
beneficiaries in clause 3 of the Will. The trustees of the two trusts are in law entitled to act on behalf of the =]
Page 268 of [2006] 2 All SA 260 (T)
trusts and to hold, in their capacities as trustees, property for the purposes of the trusts."
[24] In substance therefore the trade mark registrations in question are "owned" by the trustees of the Baker
Street Trust, whatever the form in which it has been registered; which is nothing other than a misnomer,
which is understood to be such by all concerned. The identities of the trustees for the time being of the
Baker Street Trust are readily ascertainable. Furthermore, it is not uncommon for trusts to litigate in their
own name and the technicality of the fact that it should be more proper to be in the name of the trustees in
their official capacity, is not fatal.7 There is, accordingly, no merit in this ground of attack on the registrations