a trade mark' in s 44(1)(a) of the Act should be interpreted to exclude use in respect of socalled genuine goods. This means
that in a case like the present, the seller of the goods is not infringing the manufacturer's trade mark for the simple reason
that the seller's conduct is not covered by s 44(1)(a). The lawfulness of the seller's conduct consequently does not depend
on any implied authority by the trade mark proprietor as was argued on behalf of the appellant." (See page 992 of the
judgment at B.)
Incidentally, in the course of his summary of the legal position prior to the enactment of the 1963 Act, the learned
Judge said at 984F of the judgment "at common law, both here and in England, a trade mark serves to indicate the
origin of goods in the proprietor of the trade mark, and infringement occurred when the trade mark was used in
respect of goods which were not those of the proprietor of the trade mark".
The facts of this case are clearly different from the facts in the Protective Mining case and it must also be borne in
mind that this case is being considered under a new section in the 1993 Act which differs, as has already been
pointed out, from the similar sections in the 1963 Act.
In deciding this issue, it is important to bear in mind the change brought about to the definition of a trade mark
in the 1993 Act. The "badge of origin" element of the trade mark is no longer to the forefront and has been replaced
by the distinguishing capability of the mark. It would seem that in seeking to persuade me that the respondents
have not infringed the applicants' marks, Mr Louw has in effect highlighted the "origin" element of the mark which is
clearly acknowledged in the brochures, but has overlooked the distinguishing element of the marks.
Page 512 of [1999] 1 All SA 502 (C)
Mr Louw also relied on the English case of British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 and in
particular on the following passage of the judgment of Jacob J at 298 beginning at line 35:
"Second I think one must distinguish between a use of the mark by way of an honest comparison and other uses. I see no
reason why the provision does not permit a fair comparison between a trade mark owner's goods and those of the
defendant. The comparison would have to be honest, but provided it was and was part of a genuine indication of, for
instance, quality or price, I think it would be within the provision. Such honest comparative use might well upset the mark's
proprietor (proprietors particularly do not like price comparisons, even if they are true) but would in no way affect his mark
as an indication of trade origin. Indeed the defendant would be using the proprietor's mark precisely for its proper purpose,
namely to refer to his goods. I can see nothing stated in the purpose of the Directive indicating that trade mark monopoly
should extend to the point of enabling a proprietor to suppress competition by use of his trade mark in this way."
The Directive referred to by the learned Judge is the First Council Directive of 21 December 1988 to Approximate the
Laws of the Member States Relating to Trade Marks (89/104/EEC), published in the Official Journal of the European
Communities No. L 40/1 (11 February 1989).
I was urged to follow this line of reasoning because
View Parallel Citation
a)
the provisions of section 34(1)(a), (b) and (c) are more or less identical to section 10(1), (2) and (3) of the United
Kingdom Trade Marks Act, 1994; and
b)
the provisions of section 34(2) are more or less identical to the provisions of section 11(2) of the United Kingdom Act.
However, as Jacob J pointed out at 298 (line 5) in his judgment, the language of section 11(2) is virtually the same
as that of article 6 of the EC Directive and that the Directive notes that the function of a trade mark is:
"In particular to guarantee the trade mark as an indication of origin."
He accordingly had regard to this purpose when construing section 11(2) and that is no doubt why he said that
honest comparative use "would in no way affect his mark as an indication of trade mark origin". As I have already
pointed out, there has been a shift in our legislation to elevating the distinguishing feature of a trade mark as its
main purpose. The point of departure for interpreting the South African Act is accordingly not the same as that for
interpreting the United Kingdom Act.
It is significant that the United Kingdom Act contains a specific provision which sets out the requirements for
acceptable comparative advertising. These provisions are, however, more onerous than the provisions of section
11(2). Section 10(6) reads:
"nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by
any person for the purpose of identifying goods or services as those of the proprietor of a licensee.
But any such otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as
infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the
distinctive character or repute of the trade mark."
Page 513 of [1999] 1 All SA 502 (C)
Section 11(2) of the United Kingdom Act reads:
"A registered trade mark is not infringed by
(a)
The use by a person of his own name or address,
(b)
The use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services, or other characteristics of such goods or services, or