having been "wrongly made" on the register. The trade marks of the respondent registered during 1942 in
terms of Act 9 of 1916 complied with section 99 of that Act. By virtue of section 122(2) of the 1916 Act, they
are deemed to have been validly registered by virtue of the fact that they have been registered for a period
of 7 years or longer.
[38] Similarly, those trade marks registered in terms of the repealed Act are, by virtue of section 42 o f t h e
repealed Act deemed to have been validly registered. None of the exceptions in section 42 of the repealed
Act is relied upon.14 As such, the trade mark registrations of the respondent complied with all of the
registrability requirements (ie distinctiveness) in terms of which they were registered. In Luster Products Inc
v Magic Style Sales CC15 it was held that a trade mark deemed to have been properly registered can only, in
law, lose its distinctiveness if, after its original registration, there is some blameworthy conduct on the part
of the proprietor. This principle remains good law, despite the 1995 Act. In the present matter it has,
correctly, been contended that no such blameworthy conduct on the part of the respondent exists. I do not
agree that the Advertising Standards Authority's decision against the respondent is evidence of
blameworthy conduct. The Authority reached its decision by way of the application of an objective standard
(whether the advertisement was "misleading") and did not conduct an inquiry into "blameworthy conduct".
An isolated incident such as a contravention of the ASA Code would, in any case, hardly be sufficient to
constitute blameworthy conduct. In so far as the use of a trust might be relevant in this regard, that
argument has been dealt with earlier and found to be without merit.
[39] M r Wheeldon c o n t e n d e d t h a t b e c a u s e o f t h e a l l e g e d w i d e s p r e a d a n d d e s c r i p t i v e u s e o f t h e t e r m
"shatterproof", it is a term that could never be capable of distinguishing the shatterproof products of one
manufacturer from the shatterproof products of another. Accordingly, the mark Shatterprufe is nothing more
than a misspelling of this word (ie shatterproof), and is phonetically identical to it. It, likewise, is wholly un
registrable and, accordingly, in conflict with sections 9, 10(1) and 10(2) of the Act.
[40] The trade mark Shatterprufe is clearly not in conflict with section 10(1) of the Act in that it is a mark that
does not constitute a trade mark or in that it is a mark that is not capable of distinguishing the goods of the
respondent from the goods of another. It is a mark capable of being used in the manner provided for in the
Act and is quite obviously capable of being represented graphically. The core of the distinctiveness lies in its
spelling and it would indeed be necessary that when the product is advertised only orally the spelling should
always be given. There is also an originality in the "prufe" which is striking and contributes to its distinctive
character.
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Use of the Shatterprufe trade marks
[41] The use that the respondent has made of its Shatterprufe trade marks over the years, and in the recent
past, is wide ranging. Most of the major motor manufacturers in South Africa make use of the respondent's
Shatterprufe laminated automotive safety glass. This is the socalled original equipment market. From
January 1997 to 30 September 2004, 2,303,700 units totalling R714 million were sold to the aforementioned
motor manufactures and motor assembly plants. This equates to the fact that 80% of all new vehicles sold in
South Africa from the 1 January 1997 to September 2004 were fitted with the respondent's Shatterprufe
windscreens. The trade mark Shatterprufe appears prominently on each windscreen, which is guaranteed for
a twoyear period. In the ARG market, the respondent's Shatterprufe laminated automotive safety glass is
sold in 120 PG Glass outlets and in more than 100 Glasfit outlets countrywide. In addition, the Shatterprufe
products are sold in over 300 independent outlets in South Africa.
Since January 1997 to September 2004, 2,404,000 units to the value of R994 million have been sold in the
ARG market. The Shatterprufe trade mark has been advertised extensively in newspapers and magazines
and in excess of R1.5 million has been spent on such advertising during the past four years. In addition, the
trade mark has been extensively advertised on television and between 2002 and September 2004, more
than R8 million has been spent on such television advertising. The Shatterprufe trade mark has been
extensively advertised on radio and between the years 2000 and September 2004 approximately R7,5
million has been spent on radio advertisements. Between 2000 and September 2004, more than R9 million
has been spent on advertising Shatterprufe products via billboards, point of sale material and the like. In
addition, the Shatterprufe trade marks appear prominently on delivery and other vehicles.
[42] By virtue of the foregoing extensive use of advertising of the Shatterprufe products, it is safe to accept a
substantial reputation and goodwill in the Shatterprufe trade mark.16 The evidence of the respondents,
however, goes further than mere sales and advertising figures. Even from the earliest times, the respondent
(or its predecessorsintitle) used the name Shatterprufe in a trade mark sense. The 1942 trade mark
registrations were accepted by the Registrar of Trade Marks after accepting the affidavit by Mr Brodie of the
distinctive nature of the Shatterprufe trade mark.
[43] The respondents have caused a market survey to be conducted in order to establish the notoriety of the
Shatterprufe registrations. A proper market survey is, of course, admissible evidence.17 The applicant does
not contest the admissibility of the market survey but, rather, contends that the results favour it. The results
show that a large number of motorists understood the word Shatterprufe to be a "brand/make of glass or
windscreen". The facts, to my mind, on a balance of probabilities, in any case favour the
Page 275 of [2006] 2 All SA 260 (T)
respondent that the trade mark Shatterprufe is, in fact, capable of distinguishing within the meanings of
section 9 of the Act, at least by virtue of the extensive use that has been made of this trade mark. As such,
it is not necessary to venture into the debate as to whether or not the Shatterprufe registrations are