Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk
1963 (2) SA 10 (T) Referred to
392
Oude Meester Groep Bpk and another v SA Breweries Ltd; SA Breweries
Ltd and another v Distillers Corporation (SA) Ltd and another [1973] 4 All
SA 241 (1973 (4) SA 145) (W) Referred to
393
Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation
1963 (3) SA 341 (A) Referred to
393
The Gap Inc v Salt of the Earth Creations (Pty) Ltd and others [2012] JOL
29296 (2012 (5) SA 259) (SCA) Referred to
392
United Kingdom
Ansul BV v Ajax Brandbeveiliging BV 2003 (RPC) C40/01 Referred to
392
Electrolux Ltd v Electrix Ltd (1954) 71 (2) RPC 23 Referred to
393
La Mer Technology Inc v Laboratoires Goemar SA [2004] FSR 38
Referred to
393
Laboratoires Goëmar SA v La Mer Technology Inc [2005] EWCA Civ 978;
[2005] All ER 473 (D) Referred to
393
Judgment
WALLIS JA:
Introduction
[1] The only issue in this appeal is whether the appellant, Westminster Tobacco Company (Cape Town and
London) (Pty) Ltd ("Westminster"), proved that, during the period of five years prior to and expiring on 22 July
2008, it made bona fide use of the trade mark PARLIAMENT on cigarettes. If it did not do so, the two registered
trade marks it held for that mark, being trade mark registration number 1952/00688 PARLIAMENT and trade
mark registration 1997/17613 PARLIAMENT (label), were liable to expungement in terms of section 27(1)(b) of
the Trade Marks Act 194 of 1993 (the "Act"). The
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challenge to the continued registration of the marks came from the first respondent, Philip Morris Products SA
("Philip Morris"). It successfully claimed in the High Court1 (Louw J) that Westminster had not made bona fide
use of the marks and obtained an order for their removal from the trade marks register. The appeal is with
the leave of the High Court.
[2] Westminster is a wholly owned subsidiary of British American Tobacco South Africa (Pty) Ltd ("BATSA"), which
in turn is a wholly owned subsidiary of British American Tobacco Holdings South Africa (Pty) Ltd. All three are
companies in the British American Tobacco group of companies (the "BAT group"), one of the largest suppliers
of cigarette and tobacco related products in the world. The group's trading activities in South Africa are
conducted through BATSA and, in dealing with the alleged use of the marks, I will refer to BATSA on the
footing that the use it made of the marks was authorised use. Philip Morris is a company in the Philip Morris
International group of companies (the "PMI group") that, like the BAT group, is a major international
manufacturer and supplier of cigarettes and tobacco related products.
[3] The conflict between these two multinational groups arises because the PMI group uses the trade mark
PARLIAMENT internationally in respect of one of its premier brands of cigarettes, but is unable to do so in
South Africa. In 2006, a company in the PMI group, Philip Morris Brands SÀRL, applied for a trade mark
registration under application number 2006/02685 for the mark PARLIAMENT. It could not obtain registration
because Westminster was registered as the proprietor of the two marks in issue. Both registrations were in
class 34 in respect of cigarettes and other tobacco related products. On the basis of its application for
registration, Philip Morris Brands SÀRL sought and obtained leave to intervene in the appeal as a third
respondent, although its intervention did not affect the conduct of the appeal. The Registrar, who was cited
as the second respondent, played no part in the proceedings below or in this Court.
[4] On 22 October 2008, Philip Morris brought its application in terms of section 27(1)(b) of the Act for the
rectification of the register by the removal of Westminster's two marks on the grounds of nonuse. Under the
section 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.2 The onus of proof of bona fide use rested upon Westminster in terms
of section 27(3) of the Act.
Page 392 of [2017] 2 All SA 389 (SCA)
The law
[5] The concept of bona fide use of a mark has received the attention of our courts on various occasions. There is
no need to rehearse the jurisprudence in this regard. It suffices to cite the following passage from the