Notes
For Trade Marks, see LAWSA (Vol 29, paragraphs 1266)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed.)
South Africa
Atlas Organic Fertilisers v Pikkewyn Ghwano (Pty) Ltd and others 1981 (2) SA 173 (T) F
LS Boshoff Investments (Pty) Ltd v Cape Town Municipality 1969 (2) SA 256 (C) F
Page 504 of [1999] 1 All SA 502 (C)
Protective Mining and Industrial Equipment Systems (Pty) Ltd v Audiolens (Cape) Pty Ltd 1987 (2) SA 961 (A) D
Schultz v Butt 1986 (3) SA 667 (A) F
United Kingdom
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
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Judgment
CLEAVER J
The first applicant is the proprietor, in the Republic of South Africa, of two trade marks that are registered in terms
of the provisions of the Trade Marks Act 194 of 1993 ("Act 194 of 1993"). Details of the trade marks are as follows:
The trade mark PROMALIN is registered under registration number 79/3377 in class 1 in respect of:
"Agricultural chemicals included in this class."
The trade mark ABBOTT is registered under registration number 1267/39/1 in class 1 in respect of:
"Chemical products used in agriculture, horticulture and forestry, manures (natural and artificial)."
The first applicant distributes its agricultural chemical products internationally. The second applicant is a wholly
owned subsidiary of the first applicant and is the first applicant's exclusive licensee in South Africa. The second
applicant is the only registered user of the trade mark PROMALIN in South Africa.
The second respondent, being a British producer of agrochemicals is a competitor of the first applicant. It is the
proprietor of the trade mark PERLAN in the United Kingdom and PERLAN and its PERLAN products are distributed in
South Africa by inter alia the first and third respondents. The second respondent is the applicant in the Republic of
South Africa for registration of the mark PERLAN as a trade mark under trade mark application number 97/128 in
class 1 in respect of:
"Chemical products for use in agriculture and horticulture; fertilisers, surfactant chemicals for herbicides; preparations for
regulating the growth of plants."
"PROMALIN" and "PERLAN" are products which are used in South Africa almost exclusively during October of each
year in the apple farming sector for the purposes of improving certain aspects of fruit quality. In October of 1997 the
first applicant, contending that the first respondent
View Parallel Citation
had infringed its trade mark rights in respect of PROMALIN, applied to this court for an interdict against the first
respondent (and not against the second or third respondents). By agreement between the parties an order was
granted against the first respondent on 24 November 1997 the relevant portion of which reads:
"1.1
Respondent is restrained from infringing the rights of First Applicant in its trade mark registration no. 79/3377
PROMALIN in class 1 by using, in relation to the goods in respect of which it is registered, the mark PROMALIN, in
terms of section 34(1)(a) of the Trade Marks Act, No. 194 of 1993;
.
1.4
Respondent is restrained from comparing, in any way, its product PERLAN to the product PROMALIN of Applicants, by
use of First Applicant's registered trade mark no. 79/337 PROMALIN:..."
Page 505 of [1999] 1 All SA 502 (C)
The events which gave rise to this application are not in dispute. Shortly stated they are the following:
1.
The second respondent produced an A4sized colour brochure running to some 20 pages in which the first applicant
contends that: