The learned judge seems to have relied for this view on an extract from Lord Diplock's speech in the GE case. (The
quotation at 742IJ seems to relate to reasoning which underlies the third conclusion quoted by me above.) It is,
with great respect to the learned judge, difficult to understand how the quote assists. The terms of section 42 are
clear. Save in the three exceptions already discussed a mark in part A is, after seven years, to be taken as valid in
all respects. That must mean that it cannot be cut down or, in effect, amended by the entry of any (further)
disclaimer. It would indeed be surprising if a section permitting, as an exception, an objection in terms of section 41
which lays down a concept which is extremely rigid in its form, would, without express mention, nevertheless allow
an objection with the much less stringent test under section 18 to be invoked. I am of the view that Joffe J was
wrong and to that extent his judgment is overruled. This of course also disposes of the respondent's case on
section 18(b) and the order made in terms thereof in the Court below cannot stand.
What then remains is the main appeal that is the question of infringement. It is appropriate then to quote the
relevant provisions of section 44.
"44.(1) Subject to the provisions of subsections (2) and (3) of this section and of section 45 and 46, the rights acquired by
registration of a trade mark shall be deemed to be infringed by
(a)
unauthorized use as a trade mark in relation to goods ... , in respect of which the trade mark is registered, of a mark
so nearly resembling it as to be likely to deceive or cause confusion; or
(b)
unauthorized use in the course of trade, otherwise than as a trade mark, of a mark so nearly resembling it as to be
likely to deceive or cause confusion, if such use is in relation to or in connection with goods ... for which the trade
mark is registered and is likely to cause injury or prejudice to the proprietor of the trade mark."
I have illustrated the manner in which the respondent has applied its mark to its goods above. What can be seen is
that in all three examples the letter S is not a simple uppercase letter but a large or bold S and in a stylised form. It
is followed by the word 'curl' in two instances in capital letters and in the other only with a capital C. That this use in
all three cases is use of a mark so nearly resembling the registered mark as to be likely to deceive or cause
confusion seems to me to be incontestable. Respondent uses the same combination of the letter S and the word
curl in the same relationship as to position and size as one finds in the registered mark. Mr Bowman's only argument
(subject to a defence based on section 46(b)) was that this was not use as a mark. As I understood him this
submission rested on the statement that in all cases the containers also bore the words Magic Style. This, he said,
was a trade mark and it followed that Scurl was not being used as a trade mark. I find this difficult to follow. I know
of no principle that says that the use of one mark on a product excludes the possibility that any other mark thereon
can be a trade mark. The simple fact is that the respondent's S curl mark is being used upon the goods and in
relation to the goods in respect of which the trade mark is registered. That would seem to me
Page 339 of [1997] 1 All SA 327 (A)
to bring the
View Parallel Citation
respondent's use wholly within the terms of section 44(1)(a), it also being common cause that it was unauthorised
use. But again this is indeed not a critical finding. If the respondent's use of its mark is not "use as a mark" it
unquestionably must be "use in the course of trade otherwise than as a mark" and therefore an infringement in
terms of section 44(1)(b). In this case too it is common cause that the use was not authorised. It is also clear that it
is used in relation to or in connection with goods for which the mark is registered. In this case Mr Bowman argued
that appellant had not shown that the respondent's use was likely to cause injury or prejudice to the appellant (a
requirement for the application of section 44(1)(b)). The issue is addressed in the founding papers but (as Mr
Bowman contends) what is said amounts to little more than an assertion that this consequence will follow. Given
that what is being sought is an interdict it is very hard to know what more the appellant could do but to establish
the nature of the infringing use and to contend that it is likely in the nature of things that prejudice will arise. The
present case differs from other forms of use "otherwise than as a mark", say a comparative use. It is to my mind
use which must inevitably result in injury or prejudice either by loss of sales or even, simply, by the dilution of the
registered mark. In my view therefore the likelihood of injury or prejudice was established.
Mr Bowman also argued that the container depicted on the righthand side in the annexure hereto [omitted] had
been replaced in 1992 by the container on the lefthand side. I cannot see that this has any bearing on the matter.
All that that would show is that respondent was at that time infringing while the later products show that it still is
doing so. What appellant seeks is an interdict in general terms. The consequence is, subject only to section 46(b)
infringement, has been proved.
Section 46(b) provides:
"46.
No registration of a trade mark shall interfere with
(a)
...
(b)
the use by any person of any bona fide description of the character or quality of his goods ..."
If I am correct in holding that respondent's use of its mark was use "as a trade mark" this defence cannot avail the
respondent's. A registered mark is by definition something which distinguishes the goods of the proprietor,
connected with him in the course of trade, from goods with which no such connection in the course of trade exists.
Use as a trade mark is therefore not readily seen as descriptive use. Standard Bank of South Africa Ltd v United Bank
Ltd and another 1991 (4) SA 780 (T) at 808G. This would underline that the respondent is not using its mark as a
description of the character or quality of his goods. To say that S curl spray describes the spray as having a
particular quality or character (as opposed to use) is, I think, fallacious. But quite apart from this, once the