disentitled to protection in a court of justice. But the inclusion in the subordinate clause of the words 'or otherwise', if they
are to be given a literal interpretation, has the consequence that the clause is wide enough to embrace any reason for the
matter being disentitled to protection in a court of justice, and the clause thus becomes devoid of any restrictive effect and
therefore performs no function at all. Furthermore, the use of the subjunctive mood in the dominant phrase gives rise to
ambiguity as
Page 335 of [1997] 1 All SA 327 (A)
to the time to which the test of disentitlement to protect relates. Is the critical time at which the use of the mark would be
disentitled to protection before it is entered on the register or after it
View Parallel Citation
has been entered on the register? Finally, whichever is the time to which the test relates, what meaning is to be ascribed to
the words 'disentitled to protection in a court of justice'?
My Lords, the meaning of particular sections in the Act of 1938 can, in my view, only be ascertained by applying a purposive
construction to the Act as a whole, and construing the actual words used in particular sections (unless it is linguistically
impossible), so as to achieve and not so as to thwart the underlying policy to which the Act was intended to give effect."
Lord Diplock then proceeded to a review of the legislative history of the English trade mark legislation (which I do
not quote but which I would adopt). Given the close parallel between our trade mark legislation and that of England
and recognising the degree to which our legislation has followed English trade mark legislation this history is, in a
direct sense, also the history of the South African legislation. In so far as the remarks made (at 326) in the speech
(which I also do not quote) concerning the rights of the proprietor of a trade mark and the allowance made for
those who can show honest concurrent use are concerned, these are considerations which apply with equal force
to the South African legislation.
Lord Diplock's conclusion, in relation to the situation which obtained under the 1938 English Act, is summarised in
the speech (at 334) as follows:
"(1)
The fact that the mark is entered upon the register is prima facie evidence of the validity of the original registration
and of the right of the registered proprietor to the exclusive use of the mark, subject however to the rights of
concurrent user by any registered proprietor of an identical mark or one nearly resembling it.
(2)
If the mark was likely to cause confusion at the time when it was first registered it may be expunged from the
register as 'entry made in the register without sufficient cause' unless the proprietor of the mark at that time would
have been entitled to have it entered on the register by reason of his honest concurrent use of the mark as a trade
mark before the original registration of the mark.
(3)
If the likelihood of causing confusion did not exist at the time when the mark was first registered, but was the result of
events occurring between that date and the date of application to expunge it, the mark may not be expunged from
the register as an entry wrongly remaining on the register, unless the likelihood of causing deception resulted from
some blameworthy act of the registered proprietor of the mark or of a predecessor in title of his as registered
proprietor.
(4)
Where a mark is liable to be expunged under (2) or (3) the Court has a discretion whether or not to expunge it and as
to any conditions or limitations to be imposed in the event of its being permitted to remain on the register."
An equally persuasive judgment is to be found in the Australian case of New South Wales Dairy Corporation v Murray
Goulburn Cooperative Company Limited in 18 Intellectual Property Reports 385. It will suffice to quote from the
judgment of Mason CJ at 400. For the purposes of this quotation it should be noted that section 28 o f t h e
Australian Act is for all practical purposes the same as our section 16 the separate requirements of our section
have been enacted as the subparagraphs (a), (b), (c) and (d ). Mason CJ said:
Page 336 of [1997] 1 All SA 327 (A)
"As I have already noted, in 'GE' Trade Mark Lord Diplock (with the
View Parallel Citation
concurrence of Lord Simon of Glaisdale and Lord Kilbrandon) concluded that a lawfully registered trade mark is only liable to
be expunged under s 11 of the Trade Marks Act 1938 (UK) by reason of supervening likelihood of deception or confusion if
that likelihood is the result of some blameworthy conduct on the part of the registered proprietor. In reaching that conclusion
his Lordship regarded the counterpart of our s28(a) as being governed by the equivalent of our s 28(d) so that an applicant
seeking removal of a mark on the ground that it infringed s 28(a) would be required to show not only likelihood of deception
or confusion but also that the mark was disentitled to protection in a court of justice. That interpretation of s 11 depended
very largely on the legislative history of the statutory provisions as outlined by Lord Diplock in his speech, a legislative
history which has its counterpart in Australia. But the interpretation also depended on the presence of the provisions
permitting identical or similar marks to remain in the register. The presence of those provisions is inconsistent with the
existence of a statutory intention that likelihood of deception or confusion ipso facto leads to disentitlement to protection in a
court of justice or to liability to expungement. To my mind, those provisions, particularly ss 34 a n d 58(3), justify an
implication that s 28(a) looks to supervening likelihood of deception or confusion only if that likelihood is the result of
blameworthy conduct on the part of the registered proprietor. Moreover, as Bowen CJ pointed out in RivOland Marble (at
FCR 573574), echoing the words of Windeyer J in Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Ltd's
Application (1968) 118 CLR 128 at 133 (at first instance reversed on appeal (1973) 129 CLR 353; 1 ALR 443), it is
legitimate to lean against the literal construction of s 28(a) on the ground that it would not protect the registered proprietor
from 'the assiduous efforts of a misappropriating user'. That consideration, taken in conjunction with the presence of the
provisions permitting identical or similar marks to be entered and to remain in the register, supports the adoption of the