Adcock Ingram Consumer Products Limited v Dhansooklal Jeenabhai Mody t/a Black Magic
[1997] 3 All SA 125 (T)
Division:
Transvaal Provincial Division
Date:
21 April 1997
Case No:
A1128/96
Before:
Daniels, Du Plessis and De Villiers JJ
Sourced by:
M Snyman and D Cloete
. Editor's Summary . Cases Referred to . Judgment .
Trade Marks Application to introduce amendments to trade marks so that they could be depicted with more clarity
Court finding that the arresting features as displayed in the original registration of the trade marks had been retained
Identity of the trade marks had not been substantially affected within the meaning of section 34 of the Trade Marks Act
62 of 1963.
Trade Marks Trade Marks Act 62 of 1963 Section 34 Application to add to or alter a trade mark "Arresting features
test" applicable in considering whether a trade mark was substantially affected by a proposed amendment, viz., whether,
after a physical inspection of the marks side by side it was clear that the mark used had retained the arresting features of
the mark registered.
Editor's Summary
The Appellant was the registered proprietor of two trade marks. In 1994, the Appellant applied, in terms of section
34 of the Trade Marks Act 62 of 1963 ("the Act"), to introduce amendments so that the trade marks could be
depicted with more clarity.
The Respondent opposed the application claiming that (i) the registration was invalid, (ii) the proposed
amendment substantially affected the identity of the trade marks and therefore contravened the provisions of
section 34 of the Act, as well as section 10(2). The Appellant denied the same and submitted that the amendment
sought was required to clarify the registration, did not conflict with other existing trade marks and also did not
broaden or extend its rights.
The Registrar of Trade Marks refused the application on the basis that the representation as sought to be
amended, introduced material alterations which substantially affected the identity of the trade mark. The Appellant
appealed against the decision.
Held The Court, in considering whether the trade marks had been substantially affected by the proposed
amendment, referred to the judgment of Bernstein
Page 126 of [1997] 3 All SA 125 (T)
Manufacturing Co Ltd v Shepherdson 1968 (4) SA 386 (T), in which Cillie J adopted the "arresting features test", viz.,
whether, after a physical inspection of the marks side by side it was clear that the mark used had retained the
arresting features of the mark registered. The Court was satisfied that this was the test to be applied in section 34
applications.
The Court held, after analysing drawings of the representation submitted by the Appellant, that the arresting
features as displayed in the original registration had been retained. In addition, the identity of the trade marks had
not been substantially affected within the meaning of section 34 of the Act.
The appeal was accordingly upheld.
Note
For Trade Marks, see LAWSA (Vol 29, paragraphs 1276)
Cases referred to in judgment
("C" means confirmed; "F" means followed and "R" means reversed.)
Bernstein Manufacturing Co (1961) (Pvt) Ltd v Shepherdson 1968 (4) SA 386 (T) F
Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A)
United Bank Ltd v Standard Bank of SA Ltd 1991 (4) SA 810 (T)
United Kingdom
Cluett Peabody & Company Inc v McIntyre Hogg Marsh & Co Ltd 1958 RPC
Judgment
DANIELS J