'SCURL' apart from the special representation as depicted in the mark". The counterapplication necessitated the
joinder of the Registrar of Trade Marks. The Registrar has, however, taken no part in the litigation and abides the
result. The matter was argued on the papers and without either party seeking a reference to evidence.
The Court a quo dealt first with the counterapplication (and I propose to do likewise). It held against the
respondent on expungement but ordered the entry of the disclaimer sought. It dismissed the main application.
What is before this Court is an appeal by the appellant against the dismissal of the main application and against
the grant of the alternative counterapplication that is the order directing the entry of the disclaimer. The
respondent, for its part, cross appeals against the refusal of the (main) counterapplication. Leave to appeal was
granted by the Court a quo in both cases.
It is necessary, in order that the contentions and countercontentions can be understood, that I describe the
mark and its effect and explain the manner in which the respondent has marketed its goods.
View Parallel Citation
First the mark. This was (as already stated) granted on 18 July 1984. It is depicted in the certificate of registration
in the following representation:
The registration is subject to the following disclaimer:
"Registration of this trade mark shall give no right to the exclusive use of the word 'CURL' and the alphabetical letter 'S'
separately from each other and apart from the special representation as depicted in the mark."
Class 3 (in which the registration falls) covers goods in the following categories:
"Soaps, perfumery and essential oils; cosmetics; hair lotions, hair care products, shampoos, conditioners, creams, creme
perm and styling lotions, hair pressing preparations, hair setting preparations, all the aforegoing including those for
professional use only."
Neither in counsels' written heads of argument nor in the judgment is there any discussion of the effect of the
grant. In my view a clear understanding of this is of fundamental importance.
In terms of the 1963 Act ("the Act" for the purposes of this judgment) a "trade mark"
"... means a mark used or proposed to be used in relation to goods or services for the purpose of
(a)
indicating a connection in the course of trade between the goods or services and some person having the right, either
as proprietor or as a registered user, to use the mark, whether with or without any indication of the identity of that
person; and
(b)
distinguishing the goods or services in relation to which the mark is used or proposed to be used, from the same kind
of goods or services connected in the course of trade with any other person."
Page 331 of [1997] 1 All SA 327 (A)
A registered mark must also satisfy the requirements of section 10 and section 12 of the Act and it is accordingly
also necessary to quote the relevant portions of section 10 and section 12. In terms of section 10, in order to be
registrable in part A of the register, a trade mark
"... shall contain or consist of a distinctive mark".
In terms of section 12(1) "distinctive" means
"adapted, in relation to the goods ... in respect of which a trade mark is registered ... , to distinguish goods ... with which the
proprietor of the trade mark is or may be connected in the course of trade from goods ... in the case of which no such
connection subsists, either generally or, where the trade mark is registered ... subject to limitations, in relation to use within
those limitations.
(2)
In determining whether a trade mark is distinctive as aforesaid regard may be had to the extent to which
a)
the trade mark is inherently adapted to distinguish; and
b)
by reason of the use of the trade mark or of any other circumstance the trade mark is or has become adapted
to distinguish."
The mark then is the mark as depicted that is the large or bold stylised
View Parallel Citation
alphabetical letter 'S' in combination with the word 'curl' in capital letters. It is a "goods mark". The mark must also
be accepted as meeting the requirements of section 10 and section 12 in particular as distinguishing the goods
upon which it is used from the goods of other persons and as indicating a connection in the course of trade with
appellant. It conferred on appellant the right to restrain infringement of the mark under the provisions of section
44(1)(a) and (b) of the Act (to which I will presently refer more fully).
The manner in which the respondent marketed its goods that is the use complained of is illustrated in the