marks registered in terms of the Act and shall not be entitled to be removed from the register in terms of
section 27, within a period of 10 years from the date of the commencement of this Act (ie 1 May 2005).
[34] Contrary to he contention of Mr Wheeldon, for the applicant, section 70(2) does protect the respondent. At
the time of the institution of these proceedings (28 May 2004) the aforementioned trade mark registrations
were protected by section 70(2) of the Act. That the time period has now expired is irrelevant, as it is trite
that the proceedings are to be adjudicated upon the facts as at the date of the institution of the
proceedings. The defensive registrations can therefore not be attacked in terms of section 27(1)(b) of the
Act. In any case, extensive use has been made by the respondent of registration number 1942/00516/2 in
Class 12. The balance of the trade marks are afforded the protection of section 31 of the Act that provides
that use of a trade mark may be accepted as proof of use of trade marks that are associated with it.
Furthermore, even if nonuse has been proved, the court still has a discretion not to grant expungement.
This stems from the use of the word "may" in section 27(1) of the Act.13 By virtue of the interassociation of
the trade marks, I do not believe, in the exercise of my discretion, that expungement would be justified on
these grounds.
Page 272 of [2006] 2 All SA 260 (T)
Distinctiveness of the Shatterprufe trade marks
[35] There are a number of provisions of the Act that have a bearing upon the distinctiveness of trade mark
registrations.
Section 2(1) defines a trade mark as, inter alia:
". . . a mark used or proposed to be used by a person 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 9 provides as follows:
"9
(1)
In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a
person in respect of which it is registered or proposed to be registered from the goods or services
of another person either generally or, where the trade mark is registered or proposed to be
registered subject to limitations, in relation to use within those limitations.
(2)
A mark shall be considered to be capable of distinguishing within the meaning of subs (1) if, at the
date of application for registration, it is inherently capable of so distinguishing or it is capable of
distinguishing by reason of prior use thereof."
The relevant provisions of section 10 provide as follows:
"(10) The following marks shall not be registered as trade marks or, if registered, shall, .subject to the
provisions of sections 3 and 70, be liable to be removed from the register:
1
a mark which does not constitute a trade mark;
2
a mark which
(a)
is not capable of distinguishing within the meaning of section 9; or
(b)
consists exclusively of a sign or an indication which may serve, in trade, to designate the
kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of
the goods or services, or the mode or time of production of the goods or of rendering of the
services; or
(c)
consists exclusively of a sign or an indication which has become customary in the current
language or in the bona fide and established practices of the trade.
(12)
A mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be
contrary to law, be contra bonos mores, or be likely to give offence to any class of persons;
(13)
A mark which, as a result of the manner in which it has been used, would be likely to cause deception or
confusion."
Section 10 of the Act contains an important proviso:
"Provided that a trade mark shall not be refused registration by virtue of the provisions of paragraph [2] or, if
registered, shall not be liable to be removed from the register by virtue of the said provisions if at the date of the
application for registration or at the date of an application for removal from the register, as the case may be, it
has in fact become capable of distinguishing within the meaning of section 9 as a result of use made of the
mark."
The original entry
[36] The applicant does not attack the trade mark registrations of the respondent on the basis of their having
been "wrongly made" on the register as
Page 273 of [2006] 2 All SA 260 (T)
contemplated by section 24(1) of the Act. The applicant only attacks the trade marks of the respondent on
the basis of their "wrongly remaining on the register" as envisaged by section 24(1) of the Act.
[37] The applicant, in any case, has no basis for attacking the trade mark registrations on the grounds of their