of the respondent.
[25] The next ground of attack is based on section 27(1)8 of the Act. It is not disputed that:
Extensive use has been made of the trade mark. However, the ground is a legal one: a trust, not being a
legal entity, would also not be in a position to "use" the trade mark in relation to the goods or services. The
applicant alleges that because the trade marks are registered in the name of ''The Baker Street Trust" this
entity "is not legally able nor entitled to exercise any control over the use of the trade mark registrations"
and that it therefore "cannot itself use nor can it permit or consent to any third party using the trade marks";
any use by a third party, under any licence, is therefore not "permitted use" as contemplated by section 38
of the Act; "The Baker Street Trust" is "unable to grant a licence or consent to and control the use by any
third party of the trade mark 'Shatterprufe'."
[26] The attack on the basis of section 27(1)(a) is without merit. It is not in dispute that when the Shatterprufe
trade marks were originally registered in 1942 they were, in fact, in use. As such, not only did the applicant
for registration have the requisite intention to use, it was using the Shatterprufe trade marks. In relation to
the later marks under attack, they were registered as defensive registrations in respect of which the attack
based on section 27(1)(a) has no merit.
Page 269 of [2006] 2 All SA 260 (T)
[27] Similarly, the attack on the basis of section 27(1)(b) of the Act has no merit. Once it is accepted that the
validity of the trade mark registrations is not compromised because they were assigned to "The Baker Street
Trust" (as a convenient shorthand) as opposed to the "trustees for the time being of The Baker Street
Trust", there can be no further scope for attacking the registrations of the respondent in terms of section
27(1)(b) of the Act. The reference to the "Baker Street Trust" as assignee must be taken in common parlance
to refer to the Trustees of the "Baker Street Trust".9
[28] The applicant contends that "no consent or licence to use the first respondent's registered Shatterprufe
trade mark appears to have been obtained by the third respondent from the first respondent". Accordingly,
the applicant contends that there has been no bona fide permitted use of the Shatterprufe trade mark as
envisaged by section 38 of the Act. The evidence put forward by the respondent is quite to the contrary.
[29] In terms of the licensing and registered user provisions contained in section 48 of the repealed Act, the
recordal of a registered user was peremptory. The evidence is that each time that there was a licence to use
the Shatterprufe trade marks of the respondent (or its predecessorsintitle), these licensees were recorded
as registered users in terms of the repealed Act. The new Act came into force on 1 May 1995. Section 38 of
the Act brought about a relaxation of the strict formalities to have licensees formally recorded as registered
users. In terms of section 38 of the Act, a licensee may be recorded as a registered user and such recordal
is, accordingly, not peremptory.
[30] During 2001, a company by the name of Famexecs (Pty) Ltd changed its name to Shatterprufe (Pty) Ltd (the
third respondent) and became a user of the Shatterprufe trade marks. There is no evidence that the third
respondent is formally recorded as a registered user in terms of section 38 of the Act. Nonrecordal of the
third respondent as a registered user in terms of section 38 of the Act is, however, irrelevant and does not
take the application any further. The unequivocal statements under oath by Jennings are that: the third
respondent "has used the Shatterprufe trade marks as a licensee under authority continuously since the
restructuring took place in 2001; "control over the use of the mark is exercised by the trustees acting in their
representative capacity"; "the trustees of the Trust licensed the third respondent to use the Shatterprufe
trade marks"; "as a matter of fact and of law, the trustees . . . consented to the use by the third respondent
of the marks, and the third respondent's use of the marks, as licensee, has inured to the benefit of the
trustees . . ."; the trustees of "The Baker Street Trust" were "able to grant the requisite licence consent to
the use" of the Shatterprufe trade marks and "they have controlled the use of the Shatterprufe trade marks
on behalf of the Trust".
[31] It is not in dispute that the third respondent is using the Shatterprufe trade marks. The evidence of the
respondent therefore is that there has been
Page 270 of [2006] 2 All SA 260 (T)
proper and controlled use of the Shatterprufe trade marks by the third respondent and, as such, this
amounts to "permitted use" as envisaged by section 27(1)(b) as read with section 38 of the Act. Insofar as
the licence constitutes a factual dispute, it is trite that such a dispute is to be interpreted in favour of the
respondent.10
[32] In conclusion I might add that control, which would include quality control, is not requirement in terms of the
Act. From a business perspective quality control would, of course, be important. However, from a legal
perspective there would seem to be no reason why this must be controlled. Market forces will take care of
poor product and, where necessary, legal remedies provided by legislation and common law will ensure that
the public is not exploited.11
Page 271 of [2006] 2 All SA 260 (T)
The other trade marks
[33] The trade marks in the footnote12 were all registered as "defensive" trade marks in terms of section 53 of
the repealed Act. In terms of section 70(2) of the Act, such defensive trade marks will be deemed to be trade