regard:
"Without the endorsement that the mark is a 'shape mark', the mark is simply a logo mark and would not prohibit a
person from using the shape in a threedimensional form. At worst for the respondents (Iffco) it could be interpreted
as either one or the other (although the respondents contend there is only the interpretation). For that reason, too, it
is nondistinctive." (My emphasis.)
[17] The effect of the endorsements lies at the heart of the additional ground advanced by Iffco for the review of
the Registrar's decision. The submission was that the Registrar is not entitled in terms of section 16(5) of the
Act, to permit amendments to an application that would substantially affect the identity of the trade mark.
Iffco conceded, however, that section 16(5) of the Act on the face of it, provides for an unlimited discretion on
the part of the Registrar to make amendments to pending
Page 499 of [2015] 1 All SA 492 (SCA)
applications. Iffco submitted that the Registrar's discretion must be exercised in a judicious and responsible
manner, bearing in mind the purpose and spirit of the Act and its provisions as a whole, including the
provisions of section 29(1) which deal with the withdrawal by the Registrar of an application for registration
accepted in error. The practice of the Registrar and practitioners, according to Iffco, has been to regard
section 25, which deals with the alteration of registered trade marks, as the standard for making or allowing
amendments to trade mark applications. The present enquiry is concerned with the power of the Registrar in
terms of section 16(5) of the Act to permit an applicant for registration of a trade mark, whether before or
after acceptance by the Registrar, to amend the application. This is to be contrasted with the power of the
Registrar in terms of section 25 of the Act to amend a registered trade mark.
[18] The relevant parts of section 16 of the Act provide:
"(1)
An application for registration of a trade mark shall be made to the registrar in the prescribed manner.
. . .
(5)
The registrar or the court, as the case may be, may at any time, whether before or after acceptance of the
application, correct any error in or in connection with the application, or may permit the applicant to amend his
application upon such conditions as the registrar or the court, as the case may be, may think fit."
[19] Webster et al 4 state that an amendment of an application in terms of section 16(5) would appear to relate to
matters of substance concerning an application contained in the form TM1 such as the identity of the
applicant, the form of the mark or the specification of goods or services.
[20] Section 25(1) of the Act, dealing with the alteration of registered trade marks provides that:
"(1)
The registered proprietor of a trade mark may apply in the prescribed manner to the registrar for leave to add
to or alter the trade mark in any manner not substantially affecting the identity thereof, and the registrar may
refuse leave or may grant it on such terms and subject to such limitations as he may think fit."
Whether the alteration sought substantially affects the identity of the mark is determined by the application of
the socalled "arresting features test."5 The registered mark and the mark containing the alteration or
addition, are physically inspected sidebyside and the question to be asked and answered is whether the
mark retains its arresting features. If they are then the identity of the mark is not substantially altered.
[21] Iffco, citing the Registrar's practice directives6 dealing with "amendment of marks", submitted that they
indicate that the provisions of section 25 should be applicable in the exercise of the Registrar's discretion
when
Page 500 of [2015] 1 All SA 492 (SCA)
allowing the amendments of the mark, which is the subject of the pending application. Substantial changes
affecting the identity of the mark in the application accordingly cannot be made and the applicant is bound by
the identity and nature of the mark as contained in the initial application. The principles contained in
section 25 of the Act according to the original submissions by Iffco when applied to pending applications
meant, in reality that only minor errors, such as clerical errors and the like should be permitted to be amended
in pending applications. Counsel for Iffco, however, in argument, disavowed reliance upon such a limited
interpretation being placed upon the Registrar's discretion.
[22] The Registrar's practice directive as well as the views of certain practitioners of the relevance of the provisions
of section 25 to applications brought in terms of section 16 of the Act are irrelevant to an interpretation of its
provisions. As pointed out, section 25 deals with the entirely different scenario of amendments to be made to
registered marks. The Registrar's discretion is quite clearly not limited to correcting minor errors such as
clerical errors and the provisions of section 46(1) of the Act provide for this eventuality. This section empowers
the Registrar:
". . . [A]t any time before the registration of a trade mark permit the amendment of any document relating to any
application or proceedings before him on such terms as to costs or otherwise as he may think just."
Webster et al 7 state that this section deals with nonessential elements of an application, such as the
amendment of the form TM1 or any other document forming part of the application, as opposed to
amendments of substance which are dealt with in terms of section 16(5).
[23] Iffco also submitted that section 29(1) of the Act, which provides that amendments to pending applications
have retrospective effect to the date of the trade mark application should be understood as a "deeming
provision" in the interpretation of section 16(5). The argument is that the date of the application is important
because it in due course becomes the effective date of the registered trade mark and the date and period