interpretation of s 28(a) favoured by the Full Court of the Federal Court in RivOland Marble and in this case. But I should
say that it may not be necessary to read s 28(a) as though it were governed by s 28(d). So to read s 28(a) is a difficult
exercise as a matter of construction. It may be sufficient to say that in the context of the entire statutory scheme a trade
mark is only liable to be expunged under s 28(a) if the use of it becomes likely to deceive or cause confusion and that
likelihood is due to the fault or blameworthy conduct of the registered proprietor. However, for the purpose of this appeal, I
am content to accept that the fault or blameworthy conduct must be such as to disentitle the mark to protection in a court of
justice.
This conclusion is sufficient to dispose of the appellant's main argument. Before passing from it, I should point out that the
argument excites some unresolved questions. On a literal construction of s 28(a) what happens in the case of two marks
the use of each of which gives rise to the likelihood of deception or confusion? If one only is to be removed, how is the
choice to be made? Is it to be made against that mark which is the later registration? Or are the two marks liable to be
expunged?
These questions, in the context of the interpretation of s 28(a) which I favour, are relevant to the appellant's final
submission that the Full Court of the Federal Court misdirected itself in holding that there was an absence of blameworthy
conduct on the part of the registered proprietors of the MOO
Page 337 of [1997] 1 All SA 327 (A)
mark. One aspect of the appellant's submission on this point is that, by reason of nonuse, the respondent's mark has lost its
distinctiveness. True it is that there is an element of overlapping in the concept of loss of distinctiveness and the likelihood of
deception or confusion. As Kitto J pointed out in Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft (1965) 120
CLR 285 at 303, 'the questions of distinctiveness and absence of a likelihood of deception tend to run into one another'.
However, the Full Court of the Federal Court was correct in concluding that loss of distinctiveness as such does not fall within
s 28
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so that the fact that the MOO trade mark had ceased to be distinctive of the goods of the registered proprietor did not
provide a ground for rectification of the register under s 22. On the other hand, if a mark's loss of distinctiveness leads to
the use of the mark becoming deceptive or a cause of confusion due to the blameworthy conduct of the registered
proprietor, then the mark falls within s 28(a) and is liable to expungement."
I do not think an independent analysis of the South African Act and its predecessors is called for.
The situation described in the GE case and the New South Wales Dairy case obtains under our legislation and I
am disposed, by parity of reasoning, to draw the same conclusion, namely that in the absence of blameworthiness
on the part of the proprietor no case can be made out for expungement in the circumstances under consideration.
In my view Lord Diplock's conclusion may be adopted by this Court. If it were otherwise, the Act, by a selfdefeating
procedure, would (in circumstances such as the present) nullify, in the hands of a wholly blameless proprietor, the
very protection which it seeks to offer.
In so far as the question of what would constitute blameworthiness is concerned I would only say that where no
attempt has been made to show blameworthiness in any respect prudence suggests that no attempt be made to
define the precise limits of the concept. I therefore express no view on what conduct will be held to be
blameworthy.
On the facts of the case then section 16 does not provide the respondent with a cause of action entitling it to
claim expungement of the mark. That leaves the question of the alternative claim, the one that [was] allowed by Du
Plessis J to which I have already referred. Section 18(b) provides that if a trade mark contains "matter common to
the trade or otherwise of a nondistinctive character" the Court may require, as a condition of it remaining on the
register, the entry of a disclaimer.
It is, with respect to the learned judge, difficult to discern precisely what the suggested disclaimer means or,
given a proper understanding of the scope of the registered mark, what the purpose thereof would be. There are
however other difficulties to be considered. Mr Puckrin demonstrated from the papers that, despite the fact that his
predecessor in the case apparently allowed the application for this disclaimer to be argued, no such issue was
raised in the notice of counterapplication. The notice bears him out in this regard. Furthermore no notice of
amendment of the counterapplication was ever moved. In addition, it seems clear, that in the appellant's
answering affidavits the matter was dealt with on a basis that directed attention only to the expungement
application under section 16 read with section 33(1) and the abandoned application under section 41(1). Mr
Puckrin's objection would provide adequate grounds for holding that the order made was incompetent. However
since that matter was argued in the Court below and seemingly without objection a preferable course would seem
Page 338 of [1997] 1 All SA 327 (A)
to be to enquire whether, in any event, the order should have been granted. On the facts of this case this is a
simple question of law. Given the applicability of section 42, can a case be made out under section 18(b)? In the
Court below reliance was placed on the decision in Fédération Internationale de Football and others v Bartlett and
others 1994 (4) SA 722 (T) where Joffe J held (at 743A) that section 42 was
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not a bar to relief in terms of section 18.