(Maritz AJ) refused the application for a number of reasons but granted the necessary leave to appeal to this Court.
Its judgment was reported: 1998 (1) SA 59 (T).
[2] Both Cadbury and Beacon are manufacturers and distributors of sweets and confectionery. The present dispute
relates to trade mark 86/3570, registered in class 30 in respect of confectionery, sweets, chocolates, candy,
sweetmeats, ices and icecream. The mark is a composite mark. It was amended and in its present form consists in
the main of a plate of sweets of the kind that have been marketed extensively by Beacon since 1952 under the
name Liquorice Allsorts, a little man made of these sweets, a blank space and a prominent display of the name
Liquorice Allsorts:
The mark is registered subject to the following disclaimer:
"Registration of this trade mark shall give no right to the exclusive use of the
View Parallel Citation
sweet device [the plate], separately and apart from the mark.
The applicant undertakes that, in use, the blank space shall be occupied only by matter of a wholly descriptive or
nondistinctive character, or by a trade mark registered in the name of the applicant in respect of the same goods,
or by a trade mark of which the applicant is a registered user in respect of the same goods, or by a trade mark of
a registered user with the consent of the proprietor of such a mark or the blank space will be left vacant.
Page 3 of [2000] 2 All SA 1 (A)
The applicant undertakes that in use the trade mark will only be used in respect of goods containing or including
liquorice or liquorice flavour."
[3] Contending that the name Liquorice Allsorts is descriptive of the product and therefore not capable of
distinguishing in the trade mark law sense, Cadbury applied, without attacking the validity of the original
registration of the trade mark, for an additional disclaimer, namely that the registration "shall also give no right to
the exclusive use of the name Liquorice Allsorts, separately and apart from the mark." (The relief sought in the
notice of motion was arguably more extensive, but nothing turns on it.) For this Cadbury relied upon section 15 of
the Trade Marks Act 194 of 1993 which, simply put for present purposes, provides that if a trade mark contains
matter which is not capable of distinguishing within the meaning of section 9, a court may require that the
proprietor disclaim any right to the exclusive use of such matter.1
[4] Section 15 is not concerned with the question whether a trade mark itself is incapable of distinguishing, but
whether matter contained in a trade mark lacks this capability. This is illustrated by the existing disclaimer
concerning the sweets device which was entered under a somewhat similar provision in the repealed Trade Marks
Act 62 of 1963 (section 18). That the term Liquorice Allsorts is "matter" within the meaning of that word in section
15 of the current Act, is not an issue. The issue is rather whether or not it is capable of distinguishing within the
meaning of section 9. Section 9 provides:
"(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.
View Parallel Citation
(2)
A mark shall be considered to be capable of distinguishing within the meaning of subsection (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."
[5] Since section 9(2) refers to the date of application for registration (in this case, 1986) Beacon argues that a
court, after registration, may only rectify the registration by means of a disclaimer under section 15 if, at the date of
application for registration, Liquorice Allsorts was not capable of distinguishing. Beacon points out that the original