contrary to section 10(2) of the Act. Nevertheless, I shall consider this aspect as well.
[44] In support of its argument on the basis of section 10(2) of the Act, the applicant refers to evidence where
the word "shatterproof" appears to be used in a descriptive manner. Because of this, so the argument ran,
the trade mark Shatterprufe falls foul of section 10(2) of the Act. Section 10(2)(b) provides that a mark that
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 shall not be registered or be removed from the register, if it has already
been registered. The evidence of the respondent, supported by Mr Lubner, the CEO of Belron SA (the world's
largest vehicle glass repair and replacement company), is that the term "shatterproof" is not used in the
trade as a generic or descriptive term for laminated safety glass. The common descriptive terms used
internationally in the trade are "laminated", "safety glass", "laminated safety glass", "safety float" and
"laminated safety float". In addition, the major manufacturers, internationally, do not use the term
"shatterproof'. The South African Bureau of Standards also does not refer to "shatterproof' glass but to "high
penetrationresistant laminated safety glass". I do not regard the official use of the terms "laminated glass"
et cetera to be decisive of this matter. The word "shatterproof" is a wellknown descriptive word in the
public's vocabulary and cannot be disregarded simply because the trade uses the term "laminated glass" or
a similar term. Nevertheless, the very spelling of the word Shatterprufe establishes it both as a mark and as
a description; this negates the section 10(2) requirement that it must be "exclusively" descriptive.
[45] The applicant relies on a number of grounds as to why the trade mark registrations of the respondent are
contrary to section 10(12) and 10(13) of the Act. First, it contends that the use by the third respondent of
the Shatterprufe trade mark is "uncontrolled" and apparently unauthorised. This question is unsupported by
any evidence and is refuted by Mr Jennings' evidence that the "Trust" controls the licensed use of the
Shatterprufe mark through its trustees. I have already held that the mere fact that a trust is denoted as the
proprietor of the trade mark does not imply that there is no control. It is clearly not a case where the
respondent has permitted third parties hither and thither to use the Shatterprufe trade marks in a manner
that would be likely to deceive and/or cause confusion as to the origin of the products. There is no evidence
to support such an assertion.18 The onus of proving that the use of the respondents' mark would lead to
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deception or confusion for the purposes of sections 10(12) and 10(13) falls squarely on the applicant and
the applicant has failed to discharge that onus. The applicant contends that the public has already been
confused and/or deceived into believing that the trade mark Shatterprufe is the equivalent or is merely a
misspelling of the generic term "shatterproof". I am not convinced on the evidence before me that such
confusion has taken place or is likely to take place. The allegation that the third respondent has used the
trade mark Shatterprufe in its advertising in a misleading manner is also without merit, as already held
above. The attacks on the basis of sections 10(12) and (13) must also therefore fail.
Endorsement in the nature of a disclaimer
[46] In the alternative the applicant seeks for the reasons advanced for the expungement of the trade marks, an
endorsement in the following terms:
"The applicant admits that registration of this mark will not debar others from use of the term 'shatterproof'
(whether as one word or two) other than as a trade mark."
Endorsing a trade mark that enjoys the benefit of section 42 of the repealed Act is impermissible.19
Plewman JA says the following in the Luster Products case (supra) at 2627:
"However, since that matter (of disclaimer) was argued in the Court below and seemingly without objection, a
preferable course would seem to be to enquire whether, in any event, the order should have been granted. On
the facts of this case this is a simple question of law. Given the applicability of s 42, can a case be made out
under s 18(b)? In the Court below reliance was placed on the decision in Federation Internationale de Football
and others v Bartlett and others 1994 (4) SA 722 (T) where Joffe J held (at 743A) that section 42 was not a bar
to relief in terms of section 18. The learned Judge seems to have relied for this view on an extract from Lord
Diplock's speech in the GE case. (The quotation at 742IJ seems to relate to reasoning which underlies the third
conclusion quoted by me above.) It is, with great respect to the learned Judge, difficult to understand how the
quote assists. The terms of section 42 are clear. Save in the three exceptions already discussed a mark in part
A is, after seven years, to be taken as valid in all respects. That must mean that it cannot be cut down or, in
effect, amended by the entry of any (further) disclaimer. It would indeed be surprising if a section permitting, as
an exception, an objection in terms of section 41 which lays down a concept which is extremely rigid in its form,
would, without express mention, nevertheless allow an objection with the much less stringent test under section
18 to be invoked. I am of the view that Joffe J was wrong and to that extent his judgment is overruled. This of
course also disposes of the respondent's case on section 18(b) and the order made in terms thereof in the court
below cannot stand (the references were to sections in the repealed Act)."
[47] I believe that it would, in any case, be more appropriate to deal with the dispute by way of a declaratory
order as to the use of the word "shatterproof". The Act grants an exception to bona fide description and it
would seem out of place to add such a disclaimer. Although it is true that there is evidence that the word
"shatterproof" is not used in the trade, seen from
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the public's perspective the word "shatterproof" is indeed descriptive of laminated glass. It is important that