Westminster Tobacco Co (Cape Town and London) (Pty) Ltd v Philip Morris Products SA and others
[2017] 2 All SA 389 (SCA)
Division:
SUPREME COURT OF APPEAL
Date:
16 MARCH 2017
Case No:
925/2015
Before:
LE LEACH, XM PETSE, MJD WALLIS, DH ZONDI JJA AND YT MBATHA
AJA
Sourced by:
Z KANKU
Summarised by:
DPC Harris
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property law Trade marks Appeal against granting of application for expungement Expungement
application based on nonuse Section 27(1)(b) of the Trade Marks Act 194 of 1993 Test for bona fide use of trade mark
Use must be in the course of trade and for the purpose of establishing, creating or promoting trade in the goods to
which the mark is attached, and the use does not have to be extensive, but it must be genuine.
Editor's Summary
The appellant ("Westminster") and the first respondent ("Philip Morris") were each major international
manufacturers and suppliers of cigarettes and tobacco related products. The dispute between the parties arose
because the group of companies ("PMI") to which Philip Morris belonged used the trade mark PARLIAMENT
internationally in respect of one of its premier brands of cigarettes, but was unable to do so in South Africa. When it
had applied in 2006, for registration of the trade mark PARLIAMENT, it could not obtain registration because
Westminster was registered as the proprietor of two marks in that regard. As a result, Philip Morris successfully
brought an application in terms of section 27(1)(b) of the Trade Marks Act 194 of 1993 (the "Act") for the
rectification of the register by the removal of Westminster's two marks on the grounds of nonuse. That led to the
present appeal.
Held In terms of section 27(1)(b), the marks were liable to be removed from the register if, for a continuous period
of five years prior to and expiring on 22 July 2008, there was no bona fide use thereof in relation to the goods or
services in respect of which they were registered. The onus of proof of bona fide use rested upon Westminster in
terms of section 27(3) of the Act.
The Court explained the concept of bona fide use of a trade mark. The use must be in relation to goods of the type
in respect of which the mark is registered. The use must be use as a trade mark, for the commercial purposes that
trade mark registration exists to protect. It must be use in the course of trade and for the purpose of establishing,
creating or promoting trade in the goods to which the mark is attached. The use does not have to be extensive, but
it must be genuine. Whether use of the mark is bona fide is a question to be determined on the facts of the
particular case. Having regard to the evidence adduced by Westminster, the Court rejected Philip Morris' contention
that the sole purpose of launching PARLIAMENT cigarettes was to protect the trade marks. Instead, the Court was
satisfied that the marks were being used by Westminster on a product that was to be placed in the market for a
very specific purpose, targeted at a very specific sector of the market and in a way that would not be detrimental to
their existing brands. It therefore could not be
Page 390 of [2017] 2 All SA 389 (SCA)
said that there was no genuine commercial purpose in launching the PARLIAMENT brand.
The finding that Westminster's use of the marks was bona fide, led to the upholding of the appeal, and the
dismissal of the expungement application.
Notes
For Trade Marks see:
· LAWSA Second Edition Replacement Volume 2015 Vol 29, paras 1308
· Burrell TD Burrells South African Patent and Design Law 4ed Durban LexisNexis 2016
Cases referred to in judgment
South Africa
AM Moolla Group Ltd and others v The Gap Inc and others [2005] 4 All SA
245 (2005 (6) SA 568) (SCA) Referred to
392
Arjo Wiggins Ltd v Idem (Pty) Ltd and another [2002] 2 All SA 147
(2002 (1) SA 591) (SCA) Referred to
392
Buthelezi and others v Eclipse Foundries (Pty) Ltd (1997) 18 ILJ 633 (A)
Referred to
403