registration is not under attack and that, although
Page 4 of [2000] 2 All SA 1 (A)
some reference to dictionaries predating that year was made, there is no evidence concerning the position in 1986.
Cadbury, on the other hand, submits that the reference to section 9 does not include a reference to the date of
application for registration; the court should be concerned with the capability of the matter to distinguish at the
date of Cadbury's application for rectification, namely 1997.
[6] Although superficially attractive, Beacon's argument does not bear scrutiny. The object of section 9 i s t o
provide a test for the registrability of a trade mark upon application. For that reason the date upon which the
question has to be determined was set as the application date. Section 15 is concerned with two situations. The
one is where the Registrar or the court has to determine whether the trade mark shall be registered with or
without a disclaimer. In this event they will likewise be concerned with the date of application for registration. But if
the question is (as in this case) whether the trade mark should remain registered in its present form, the date of
registration can no longer be relevant. This is apparent from the wording of section 15 itself. It is phrased in the
present tense and concerns itself with matter which is not capable of distinguishing at the time when the court has
to decide in what form the mark shall be entered or remain on the register. A restricted reading of the phrase
"within the meaning of section 9" is also not compatible with the proviso to section 102 where the same phrase is
used and where it is quite clear that it does not have the alleged time related limitation. A further consideration is
this. Under the repealed Act, the fact that a trade mark may have lost its ability to distinguish was subject to a
qualification which is not apposite to the present case a ground for removing the mark from the register (Luster
Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A)). Section 10(2)(a) of the new Act deals with the removal of a
trade mark which "is not capable of distinguishing within the meaning of section 9". If Beacon's argument were
correct and by parity of reasoning, the law as laid down in Luster would no longer apply. There is no reason why
the position should have changed. It cannot be in the public interest to have trade marks on the register that
cannot perform the basic trade mark
View Parallel Citation
function of distinguishing as set out in section 9(1). A similar argument should be valid for section 15. Kerly's Law of
Trade Marks and Trade Names 12 ed paragraph 902 in the context of section 14 of the Trade Marks Act 1938 (1 & 2
Geo 6, c 22), stated that the section gives the power "to give weight to circumstances which may have arisen since
the date of the original registration." The same would have been true of section 18 of the repealed 1963 Act and
although differently worded, a change of legislative intent in this regard is difficult to discern.
[7] Another ground advanced by Beacon why section 15 does not apply to the facts in the present instance is the
submission that in a postregistration situation the section is restricted to a case where the court is called upon to
decide whether the trade mark "shall remain on the register". Since the court below
Page 5 of [2000] 2 All SA 1 (A)
was not called upon to decide whether the trade mark should remain on the register, but only whether or not to
enter a disclaimer, it had no jurisdiction to consider Cadbury's application. In other words, if an applicant has no
objection to the trade mark as a whole but only to matter therein contained, the applicant would be obliged to
launch an attack against the whole of the trade mark in order to obtain relief under section 15. A similar, but not
identical, argument was rejected in the court below because of the perceived absurdity of the result (at 68AC).
One would expect some or other motivation for such a purely procedural limitation to be apparent. None springs to
mind. The phrase "in deciding whether the trade mark ... shall remain on the register" has a venerable ancestry,
going back to at least section 15 of the Trade Marks Act 1905 (5 Edw 7, c 15). We have not been referred to any
authority which has interpreted the phrase in the manner submitted. It seems to me that it is a necessary
implication that the provision is not only concerned with the question whether the trade mark should remain at all
on the register but also whether it should remain in its present form.
[8] Having cleared the undergrowth, I can turn to the last jurisdictional requirement for the exercise of the
discretion to enter a disclaimer in terms of section 15. It is whether the term Liquorice Allsorts is incapable of
distinguishing the liquorice confectionery of Beacon from the same product of any other person. One can simplify the
inquiry for present purposes by posing the question whether Liquorice Allsorts is the name of the product (a type of
confectionery) or whether it is the name of Beacon's product. The relevant facts are refreshingly simple and not
really in dispute. The term is given in some dictionaries as the name of a product. For instance, the Oxford English
Dictionary 2 ed 1989 sv "all" defines the word "allsorts" as a species
"of confectionery (in full liquorice allsorts), a mixture of blackandwhite or brightly coloured sweets containing
liquorice."
Contrary to the apparent view of the court below (at 71DF), the hyphen neither adds to nor subtracts from
anything, especially since the use of hyphens is usually optional and they are not pronounced. Confectionery
manufacturing books give methods and recipes for the manufacture of liquorice allsorts or allsort liquorice and, says
Cadbury, Liquorice Allsorts is a well established and recognised product type, manufactured and produced in a
substantially uniform configuration,
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notwithstanding many individual variations. During argument, counsel were unable to suggest an alternative name
for the product. If one considers that a trade mark performs an adjectival function in relation to goods or services,