the fact that another noun for the product is not readily apparent is a fair indication that the term does not perform
any function.
[9] Beacon sought to meet these facts by pointing out that it is the only manufacturer and supplier of Liquorice
Allsorts in this country since about 1952. Its annual sales, for example during 1996, amounted to some R33 million.
It expends large amounts in advertising, about R1 million in 1996 alone. One knows that facts such as these are
often used to convince the Registrar or a court of the fact that a mark has become distinctive. But evidence of this
nature must be approached with some degree of circumspection. The sole producer or distributor of a product,
whether new or old, cannot by means of advertising and selling the product under its generic name, render that
name capable of distinguishing in terms of section 9.
Page 6 of [2000] 2 All SA 1 (A)
[10] The evidence is further that Beacon manufactures and packages Liquorice Allsorts for a number of large
supermarket chains in this country which sell, with Beacon's consent, Liquorice Allsorts under that name. For
example, Pick 'n Pay sells the same kind of sweets under its name and trade mark and the name Liquorice Allsorts
appears in a manner and script which bears no resemblance to the registered trade mark. It is also true of the rest
of the packaging:
View Parallel Citation
The same applies to Woolworths and to OK Bazaars.
[11] Beacon relied upon section 38 to justify its trading practice. This section deals with permitted use and
registered users of trade marks. The question of a registered user does not arise on the facts of this case. As far as
permitted use is concerned, subsection (1) and (2) have a bearing on the defence:
"(1)
Where a registered trade mark is used by a person other than the proprietor thereof with the licence of the
proprietor, such use shall be deemed to be permitted use for the purposes of subsection (2).
(2)
The permitted use of a trade mark referred to in subsection (1) shall be deemed to be use by the proprietor
and shall not be deemed to be use by a person other than the proprietor for the purposes of section 27 or for
any other purpose for which such use is material under this Act or at common law."
Unless the supermarkets have used the trade mark as registered with Beacon's consent, their use cannot be
permitted use within the meaning of these provisions. From the facts set out, it ought to be immediately apparent
that the use of the name Liquorice Allsorts was not use of the trade mark as registered, but only of "matter"
contained therein. This counsel had to concede. But it goes even further. A condition of registration of the trade
mark requires in essence that only a trade mark registered in the name of Beacon, or in respect of which it is
Page 7 of [2000] 2 All SA 1 (A)
a registered user, or a trade mark of its registered user may be used in the blank space on its trade mark. The
marks of the supermarkets do not fall in any of these categories and the breach of this condition cannot give
Beacon any rights or otherwise protect it. These considerations, in my view, are destructive of Beacon's defence.
[12] Having concluded that Beacon is not entitled to the exclusive use of Liquorice Allsorts because it is used by
Beacon and others in the trade to describe the product and not to distinguish Beacon's product from that of others,
the question of the exercise of the court's discretion arises. The court a quo purported to exercise its discretion
against Cadbury, but it appears to me that the court failed to distinguish between jurisdictional facts and its
discretion (especially at 68CD and 77DE) the latter could only have arisen once the jurisdictional facts were
found to be present. Since it found the jurisdictional facts lacking, the exercise of its discretion did not arise. There is
in any event authority to the effect that a court on appeal has an original discretion whether or not to require a