View Parallel Citation
any entry or by any entry made in the register without sufficient cause or by any entry wrongly remaining on the register or
by any error or defect in any entry in the register, may apply to the court . . . for the desired relief and thereupon the court
... may make such order for making, expunging or varying the entry ..."
It will be seen that section 33(1) is in very wide terms. In the present case however it must be read with section
42 which provides:
"In all legal proceedings relating to a trade mark registered in part A of the register (including applications under section
thirtythree), the original registration of the trade mark in part A of the register shall, after the expiration of seven years
from the date of that registration, be taken to be valid in all respects, unless
(a)
that registration was obtained by fraud; or
(b)
the trade mark offends against the provisions of either section sixteen or section forty one."
Section 42 applies in all proceedings and, in consequence, only the exceptions therein provided, namely fraud
(which was not contended for) or section 41 (which had been expressly abandoned) or section 16, could be raised.
What then arises is whether respondent made out a case on the basis of an objection framed in terms of section
16 of a likelihood of deception or confusion. Mr Bowman's contention on behalf of the respondent (as I understood
it) was that because the term Scurl had acquired a descriptive connotation, albeit some time after the original
registration, the continued registration of the mark and its use as such would be likely to cause deception or
confusion.
On the facts of this case it is somewhat difficult to appreciate why the acts of others which would cause
confusion in relation to their products should render the mark confusing. This aspect need not be pursued. The first
question is whether in the light of the decision in AdcockIngram Laboratories Ltd v SA Druggists Ltd and another
1983 (2) SA 350 (T) the post registration evidence can be relied upon. (See the judgment of Nicholas J at 354G and
H and 355A.) The authorities I discuss presently hold that equivalent sections in the English and Australian Acts
have a secondary application after the initial registration and that these sections refer not only to the act of making
an entry on the register but also to permitting the continuance of the entry on the register. The same applies in my
view to section 16(1). I can see no justification for the total exclusion of evidence merely because it relates to
subsequent events. Such a reading would, so it seems to me, write a limitation into section 33(1) which is contrary
to the entire tenor of the section. To the extent to which it was held in the AdcockIngram case that post
registration facts cannot be relied upon the decision is in my view wrong and must be overruled. Of course, there
are then other difficulties,
Page 334 of [1997] 1 All SA 327 (A)
which must now be considered. What the debate really raises is the question whether a mark is rendered confusing
because other persons have, perhaps assiduously, used it in a manner which is contrary to the interests of the
trade mark proprietor. This is a problem which has been directly addressed in other jurisdictions but which has not
been dealt with in our courts. The leading authority on the question has, for many years, been the decision of the
View Parallel Citation
House of Lords in the GE Trade Mark case [1973] RPC 297. The matter is dealt with in the speech of Lord Diplock.
The case concerned a mark consisting of the letters GE in script enclosed in a circle (referred to as the Rondel mark)
registered in 1907. There was nothing wrong with the original registration. The question was whether the mark
(which was not, for the purposes of section 32(1) of the 1938 English Trade Marks Act, an "entry made in the
register, without sufficient cause") had, as a result of events which occurred after 1907, become an entry "wrongly
remaining on the register", within the meaning of that section, in 1967 when proceedings to expunge it from the
register had been commenced. The similarity between the English section and our section 33(1) and of the factual
situation is apparent. Lord Diplock proceeded from the point of view that the section clearly contemplated that an
entry, which was lawful at the time it was originally made, may, as a result of subsequent events, become one
which "wrongly remains" on the register. He then examined other sections of the English Act which are closely
paralleled in our legislation, namely section 11 and section 13. Section 11 is in all material respects our section 16
and section 13, similarly, our section 42.
The two questions which arose were first as to the time to which the prohibition expressed in the words "It shall
not be lawful to register ..." relates and the second, whether a limitation upon the prohibition of the registration of
a potentially deceptive or confusing trade mark is imposed by the requirement that its use "would ... be disentitled
to protection in a court of justice". He held that the words of the proviso in section 13 (that is words which are the
equivalent of the exceptions in our section 42) were of assistance in answering the first question as to the
construction of section 11 but threw no light on the second. Neither question, it was said, could be answered by
linguistic analysis alone. I would quote the following from 324 from Lord Diplock's speech:
"The first depends upon whether, in the context of section 11, the verb 'to register' refers only to the act of making an entry
on the register or whether it refers also to the retention of an entry on the register after it has been made. As a matter of
ordinary usage of the English language either is a permissible meaning.
With regard to the second question, as a matter of syntax the dominant phrase in the relevant description of the disqualified
matter is: matter 'the use of which would be disentitled to protection in a court of justice'. The words 'by reason of its being
likely to deceive or cause confusion or otherwise' constitute a subordinate clause of which the syntactic function is to restrict
the amplitude of the disqualified matter. This it does by reference to the reasons for the disqualified matter's being