Coachworks Ltd v Birkin Cars (Pty) Ltd [1998] ZASCA 44; 1998 (3) SA 938 (SCA) para 11: Webster & Page para 5.3. If the name or mark becomes distinctive of the business, its merchandise or services the proprietor may institute passing-off
proceedings against any other person who by using that name or mark, or one that is deceptively similar thereto, represents that
his business or merchandise or services are those of the former. Passing-off is unlawful not because it violates a proprietary right
in respect of the name or trade mark. It is unlawful because it interferes with a person's right to carry on business freely, in
competition with his rivals, without unlawful interference. The unlawfulness arises because the use of the name or mark results,
or is calculated to result, in the improper filching of another's trade and or improper infringement of his goodwill and/or because
it may cause injury to that other's trade reputation. The wrong of passing-off is a species of the wider wrong of wrongful competition. See Matthews and 0thers v Young 1922 AD 492 at 507; Geary & Son (Pty) Ltd v Gove 1964 (1) SA 434 (A) at 440-441; Brian Boswell Circus (Pty) Ltd and Another v Boswell-Wilkie Circus (Pty) Ltd 1985 (4) SA 466 (A) at 478F-J; Schultz v Butt 1986 (3) SA 667 (A) at 678F-J; Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd supra paras 15 and 16 and Star Industrial Co Ltd v Yap Kwee Kor (t/a New Star Industrial Co) [1976] FSR 256 (PC) at 269.
[11] It is well-settled that goodwill or reputation cannot exist by itself. In Caterham Car Sales & Coachworks v Birkin Cars (Pty) Ltd supra at para 11 the court referred with approval to the following statement from
11
Star Industrial Co Ltd v Yap Kwee Kor (tla New Star Industrial Co) supra -
'A passing-off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in
the business or goodwill likely to be injured by the misrepresentation made by passing-off one person's goods as the goods of another.
Goodwill, as the subject of proprietary rights, is incapable of subsisting by itself. It has no independent existence apart from
the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries
a separate goodwill attaches to it in each.'
[12]
Consequently, it has long been accepted that an unregistered
trade
mark is not capable of being transferred separately from the business
or goodwill to which is attached - see Pinto v Badman [1891] RPC
181 (CA) 193Iine28-195Iine15: GE Trade Mark [1973] RPC 297 (HL)
325Iine33-326Iine11; Star Industrial Co Ltd v Yap Kwee Kor (tla
New Star Industrial Co) supra at 270 and 272; AL ASSAM Trade
Mark [1995] RPC 511 (CA) 552Iine8-27. This is a vital distinguishing
feature of a registered trade mark. Both the Act (section 39(1)) and the
old Act (section 49(1)) pertinently provide that a registered trade mark
is assignable or transmissible either in connection with or without the
goodwill of the business concerned in the goods or services for which it
has been registered.
[13] The learned authors of Webster & Page suggest that the sale of an
unregistered trade mark without goodwill of the business concerned
and goods entitles the purchaser against the seller to establish its own
goodwill through the trading use of the mark and the reputation that
12
attaches to it. The seller is no longer entitled to make use of the reputation which formerly attached to the mark in the course
of his continuing business and is required to establish fresh indicae of the goodwill attached to such business (para 11.22). The learned authors do not explain how this view can be reconciled with the
juridical nature of an unregistered name or trade mark (ie it is simply a mark used to identify a business and/or its merchandise
and/or its services) and the remedy of passing-off and what the remedy is designed to protect. If it is not capable of being the
object of proprietary rights (as a registered trade mark clearly is) it is not clear how 'rights' in respect of an unregistered trade
mark may be transferred separately from the business with which it is associated. It may be that the agreement must be construed
as a licence to use the name or mark but this may be contrary to public policy relating to trade marks if the use of the name or
mark or deceptively similar names or marks by different .traders would give rise to deception or confusion. Clearly this would be
contrary to the public interest. The first respondent made no submissions in this regard. I therefore find that the rights in respect
of the unregistered trade mark JACOBSEN'S are not capable of being transferred without the business or goodwill to which it attaches.
[14] While not questioning the correctness of the principle that an unregistered trade mark cannot be transferred separately from
the underlying business or goodwill with which it is associated, the first respondent's counsel submitted that the first respondent's
affidavit
13
should not be narrowly construed. He argued that whatever the first respondent's deponent, King, called the transaction it amounted
to an unequivocal consent to King and his companies to use the trade mark and this consent could not be withdrawn. He also submitted
that if the court found that Jacobsen's Publishers (Pty) Ltd had given its consent to the use of the trade mark and that such consent
could not be withdrawn the applicant would not be entitled to relief. Such consent would represent an obstacle under subsections
10(3), 10(7) and 10(12) of the Act. This argument is clearly not based on the facts alleged by the first respondent and requires
no further consideration.
[15] To evaluate the attack on the defences raised it is essential to consider them in the light of the undisputed facts.
[16] The applicant alleges that it acquired the rights to the unregistered trade mark JACOBSEN'S pursuant to a written Sale of Business
Agreement which it entered into with Jacobsen's Publishers and Neil Jacobsen on 22 October 1998. In terms of this agreement -
(1)
the applicant purchased from Jacobsen's Publishers
the
publishing business conducted by Jacobsen's Publishers as a going concern under the name and style of 'Jacobsen's Publishing' which
business comprised -
(a)
the fixed assets;
14
(b)
the goodwill attaching to the business;
(c)
the contractual rights;
(d)
the right to use the name 'Jacobsen's Publishers';
(e)
the intellectual property; and
(f)
the stock.
(2)
the intellectual property consisted of-
(a)
all copyright and all other similar rights and interests
of
Jacobsen's Publishers in and to the publications -
(i)
Jacobsen's Harmonised Customs and Excise
Tariff Book;
(ii)
Customs and Excise Rules; and
(iii)
Prohibited Goods Index,
15
and any other publication as published by Jacobsen's Publishers as at the effective date or the copyright to any such publication
which is owned by Jacobsen's Publishers;
(3)
the fixed assets consisted of the fixed assets, furniture,
fixtures,
fittings and equipment of the business listed in Appendix 3 of the agreement;
(4)
the purchase consideration payable by the applicant
to
Jacobsen's Publishers for the business was R4.4 million, apportioned as follows - an amount equal to the net book value of the fixed
assets as reflected in the books of Jacobsen's Publishers as at the effective date for the fixed assets and the balance for the intellectual
property;
(5)
Jacobsen's Publishers undertook to deliver to the applicant on
the effective date duly signed company forms as required in terms of the Companies Act, 61 of 1973, reflecting the special resolution/s
passed by the shareholders of Jacobsen's Computer Freight Systems (Pty) Ltd changing the name of JCFS to such other name, not including
the word 'Jacobsens' as they deem fit, so as to enable the purchaser to exercise its entitlement in relation to the name 'Jacobsen's
Publishers' forming part of the business;
16
(6)
Jacobsen's Publishers and Neil Jacobsen agreed that
all
copyright and other similar rights and interest in and to the publications would vest in and be the property of the applicant as
from the effective date and to that end Jacobsen's Publishers and Neil Jacobsen ceded, assigned and transferred to the applicant
all their right, title and interest in and to the publications with effect from the effective date;
(7)
ownership of the business and assets forming part thereof
were
passed to the applicant on the effective date;
(8)
Jacobsen's Publishers and Neil Jacobsen expressly warranted
to the applicant -
(a)
that Jacobsen's Publishers had good and valid title
to the
business and all its assets and was entitled to sell same to the purchaser;
(b)
that neither Jacobsen's Publishers nor Neil Jacobsen
had
granted any business or any other (right) in respect of the assets of the business to any third party; and
(c)
that there were 3 590 existing subscribers to the
publications collectively and that there were 3 000 subscribers to Jacobsen's Harmonised Customs and
17
Excise Tariff Book and 590 subscribers for Customs and Excise Rules and Regulations and Prohibited Goods Index.
The first respondent does not dispute the terms of the agreement. It simply argues that the applicant did not acquire any rights in
terms of the trade mark JACOBSEN'S pursuant to the terms of this agreement. This argument is without merit and requires no further
consideration.
[17]
In about 1942, Beant Jacobsen, Neil Jacobsen's grandfather,
commenced publishing an index detailing 'Price Control' and in 1955 Kenneth Jacobsen, Neil Jacobsen's father, commenced publishing
a customs tariff book called 'Jacobsen's Customs Tariff Index'.
[18]
In 1966 Kenneth Jacobsen registered Jacobsen's Publishers
and
commenced publishing the following works -
Jacobsen's Harmonised Customs and Excise Tariff Book;
Jacobsen's Customs & Excise Rules and Prohibited Goods Index;
Jacobsen's Guide to Classification.
At all times Jacobsen's Publishers distributed these works under the mark JACOBSEN'S.
18
[19] These works became standard publications in the field of customs and excise particularly for people engaged in importing and
exporting goods. They were published as hard copy loose-leaf publications and widely distributed to government departments, freight
forwarders, importers and exporters. The works were regularly updated and in the case of Jacobsen's Harmonised Customs & Excise Tariff Book updated on a weekly basis.
[20] Neil Jacobsen entered the employment of Jacobsen's Publishers in 1970 and by 1989 was the managing director of the company.
[21] In about 1989 King approached Neil Jacobsen with a view to publishing a computer program incorporating an electronic version
of Jacobsen's Harmonised Customs & Excise Tariff Book. King and Neil Jacobsen orally agreed that they would register a new company and that each would be a director
and hold 50 % of the shares. The main object of the company would be to provide an efficient and easy searchable computer program for the use of
clearing agents, importers and exporters to calculate tariffs imposed by Customs and Excise and documentation thereto. They also
agreed that the new company would be called Jacobsen's Computer Freight Systems (Pty) Ltd (ie JCFS) and Jacobsen's Publishers and
Neil Jacobsen permitted JCFS to use the trade mark JACOBSEN'S in relation to the company's computer program.
19
[22] Neil Jacobsen and Jacobsen's Publishers provided JCFS with R51 000 as working capital. However the company's business was not
successful. In about the mid-nineteen nineties Neil Jacobsen and Jacobsen's Publishers were no longer prepared to provide working
capital for JCFS. At that stage Neil Jacobsen relinquished his position as director. However he retained his shareholding.
[23] On 22 March 1994 King registered Cargo Card Holdings CC (ie the first respondent) and on 24 March 1994 King registered Cargo
Card (Pty) Ltd. The main business of this company was financial intermediation, insurance, real estate and business services. On
1 May 1995 Neil .Jacobsen was appointed a director of the company but he later resigned the position.
[24] In September 1998 the applicant approached Neil Jacobsen with a view to acquiring the business of Jacobsen's Publishers. The
applicant and Neil Jacobsen commenced negotiations. When the negotiations had reached an advanced stage the applicant raised the
issue of the use of JACOBSEN'S by JCFS. Neil Jacobsen undertook to ensure that JCFS ceased using the name JACOBSEN'S and changed
its name to exclude the name JACOBSEN'S. At a meeting with King he told King that he wished to sell the business of JP and that to
enable him to do this JCFS would have to cease using the word JACOBSEN'S in its name. King agreed to do this. Neil Jacobsen and Jacobsen's
20
Publishers then concluded the agreement with the applicant. As already mentioned Jacobsen's Publishers was required to deliver duly
signed company forms reflecting the change of JCFS's name to exclude the name JACOBSEN'S. JCFS duly delivered these documents to
Neil Jacobsen who delivered them to the applicant.
[25] On 14 October 1998 the first respondent, which was still Cargo Card Holdings CC, lodged applications for the registration of
the trade marks. According to King this was done because during October 1998 he had learned more about trade marks and their commercial
value and he realised the importance of securing registration.
[26] The disputed facts
(1)
According to the applicant, Jacobsen's Publishers and
JCFS
used the name JACOBSEN'S continuously and without interruption until 1998 when Jacobsen's Publishers sold its business together with
the mark to the applicant. It is accordingly alleged by the applicant that the applicant is entitled to use the trade mark.
The first respondent alleges that King and Neil Jacobsen entered into an oral agreement in terms of which the newly registered Cargo
Card (Pty) Ltd would acquire all right, title and interest in respect of the JACOBSEN'S trade mark in return for
21
the issue to Neil Jacobsen of 10 % of the shares in Cargo Card (Pty) Ltd. King alleges that later, on 22 March 1994, when the first respondent was registered, the first respondent became the proprietor
of all right, title and interest in respect of the trade mark JACOBSEN'S. Accordingly, says King, the first respondent lodged its
applications for the trade marks on 14 October 1998. King also alleges that once the first respondent became the proprietor of the
trade mark JACOBSEN'S (clearly prior to registration) the first respondent permitted JCFS to use the trade mark under licence.
(2)
The applicant's case is that in September 1998 when the applicant was negotiating with Neil Jacobsen
for the purchase of Jacobsen's Publishers' business Neil Jacobsen agreed with King on behalf of JCFS that JCFS would cease to use
the name JACOBSEN'S.
As against that the first respondent alleges that when Neil Jacobsen approached King in September 1998 to arrange for the name JACOBSEN'S
to be removed from JCFS's name he, King, had immediately pointed out to Neil Jacobsen that the first respondent would still have
all the rights in respect of the trade mark JACOBSEN'S. According to King, Neil Jacobsen had replied that this was in order as the
purchaser only wished to have the name JACOBSEN'S removed from the name of the
22
company. Neil Jacobsen also had no objection to JCFS continuing to trade under the name JACOBSEN'S COMPUTER FREIGHT SYSTEMS as all
that he had to do was to ensure that the name JACOBSEN'S was deleted from the name of the company.
It is these allegations that the applicant contends are so far-fetched and clearly untenable that they can be rejected on the papers
and that they can be rejected because they are demonstrably false. They are also denied by Neil Jacobsen who states that he did not
know about the first respondent's existence in September 1998 and that he had pertinently stated that JCFS would not be entitled
to use the name JACOBSEN'S.
[27] In dealing with these disputes it must be borne in mind that on the papers it has been shown that King, who acted on behalf
of the first respondent and JCFS at all times, and is the deponent to the answering affidavit, is unreliable in at least the following
three respects:
(1)
He contradicted himself about what was discussed when
Neil
Jacobsen approached him in September 1998 with the request that JCFS not use the name JACOBSEN'S. He first testified that they discussed
the use of the mark - he had pointed out to Neil Jacobsen that the first respondent would still have all the rights in relation to
the mark JACOBSEN'S and that Neil
23
Jacobsen had no objection to this - and that he informed Neil Jacobsen that JCFS would not continue to trade as JACOBSEN'S COMPUTER
FREIGHT SYSTEMS - and that Neil Jacobsen had said that all he needed to do was delete the name JACOBSEN'S from the company (paras
3.8 and 2.9). Later he testified that there were no discussions with regard to the use of the mark JACOBSEN'S. In his mind and the
mind of Neil Jacobsen the first respondent was the owner of the mark JACOBSEN'S (para 15.3);
(2)
He testified that when Neil Jacobsen informed him that
JCFS
must stop using the name JACOBSEN'S they agreed that JCFS would repay the loan of R51 000 and acquire his shareholding and that this
was done. This evidence is contradicted by the reliable objective evidence of Mr Fahy who was the auditor of Jacobsen's Publishers
and JCFS in 1998. Mr Fahy confirms that he was instructed to write off this loan by the directors of Jacobsen's Publishers and that
he duly did so;
(3)
He testified that he first entered into an oral agreement
with Neil
Jacobsen in terms of which Cargo Card (Pty) Ltd acquired all the right, title and interest in relation to the mark JACOBSEN'S and
that later, when the first respondent was incorporated on 22 March 1994, the first respondent became the proprietor of all the right,
title and interest in relation to the mark JACOBSEN'S
24
(para 3.6). This simply cannot be true. The first respondent was incorporated on 22 March 1994 and Cargo Card (Pty) Ltd was registered
on 24 March 1994.
[28] The two factual disputes will be considered in turn: first the dispute relating to the first respondent's acquisition of the
mark JACOBSEN'S: second the dispute relating to what was agreed about use of the mark JACOBSEN'S in September 1998.
[29] Acquisition of the mark JACOBSEN'S by the first respondent
King alleges that he first entered into an oral agreement with Neil Jacobsen that a new entity, Cargo Card (Pty) Ltd, would acquire
all right, title and interest in relation to the JACOBSEN'S trade mark in return for Neil Jacobsen acquiring 10 percent of the shares
in that company. He then alleges that a new entity called Cargo Card Holdings CC (ie the first respondent) which was formed to hold
various assets, investments, including, but not limited to trade marks, became the proprietor on the date of its incorporation of
all right, title and interest in the mark JACOBSEN'S. He concludes by alleging that once the first respondent became the proprietor
of the mark JACOBSEN'S it allowed JCFS to use the trade mark under licence.
On this version, King has known since 1994 how the first respondent acquired the mark. He also knew that Jacobsen's Publishers
25
continued to conduct its business and publish its works under the name JACOBSEN'S.
[30] I agree with the applicant's counsel that these allegations are so farfetched and clearly untenable that they should be rejected
on the papers. My reasons are as follows -
(1)
The allegations do not provide a coherent explanation
for the
disposal by Jacobsen's Publishers of what was clearly a valuable asset or the acquisition of the mark by the first respondent. Jacobsen's
Publishers had used the mark from 1966, when it was registered. The allegations as to its disposal and acquisition are in all the
circumstances 'needlessly bald, vague and sketchy' - compare Breitenbach v Fiat SA (Edms) Bpk 1976 (2) SA 226 (T) at 228C-F. With regard to the acquisition by Cargo Card (Pty) Ltd it is not alleged when and where the oral agreement was entered
into and who was present. No commercial or logical reason for the disposal by Jacobsen's Publishers of the name is furnished. According
to King, Jacobsen's Publishers was not a party to the agreement and would not receive any consideration for the mark even though
it would have had to assign the mark to Cargo Card (Pty) Ltd. Then there is no attempt to support the allegations with documentary
evidence. There is no document to record the agreement and the issue of ten percent of the shares to Neil
26
Jacobsen is not established with reference to the company's share register or share certificates. There is also no resolution of the
board of directors to record the issue of the shares. The acquisition of the mark by the first respondent is dealt with in similar
bald terms. It is simply alleged that on the date of its incorporation the first respondent became the proprietor of all the right,
title and interest in relation to the mark JACOBSEN'S. It is not explained how this occurred or what the commercial or logical purpose
of the acquisition was. Once again there is no documentary evidence of the transaction. It is striking that in respect of both transactions
there is not one company document to support it, ie to show that it in fact occurred. It is alleged that once the first respondent
became proprietor of the mark JACOBSEN'S it allowed JCFS to use the mark under licence. Once again there is no documentary evidence
to support this allegation. It is not stated that the licence was oral or written and when, where and by whom the licence agreement
was entered into. Finally there is no mention of what happened to Jacobsen's Publishers. The company clearly intended to continue
to do business using the name JACOBSEN'S but there is no allegation that it was permitted to do so in terms of a licence or that
it was threatened with legal proceedings if it continued to use the name JACOBSEN'S without a licence;
27
(2)
On the face of it it is highly improbable that Jacobsen's
Publishers would dispose of this mark, which was clearly a valuable asset, for no consideration in terms of an oral agreement;
(3)
It is highly improbable that Jacobsen's Publishers
would dispose
of the mark which it had used since 1966 and clearly intended to continue using;
(4)
It is highly improbable that Cargo Card (Pty) Ltd would
dispose
of the mark to the first respondent without consideration - yet none is alleged;
(5)
It is highly improbable that Cargo Card (Pty) Ltd would
wish to
acquire the mark - the acquisition of trade marks was not part of its business and the company never conducted any business;
(6)
The sequence of acquisitions, first by Cargo Card (Pty)
Ltd and
then by the first respondent, is highly improbable if not impossible. The first respondent was registered two days before Cargo Card
(Pty) Ltd. There was therefore no need to assign the mark to Cargo Card (Pty) Ltd and then to the first respondent;
28
(7)
It is highly improbable that the first respondent would
wait four
years before seeking to register the mark if it had had commercial reasons for acquiring it. This delay is not explained;
(8)
If the first respondent had acquired the right, title
and interest in
relation to the mark JACOBSEN'S in 1994 in the manner in which King alleged, it is highly improbable that King, who represented the
two companies at all relevant times, would fail to mention this when it was appropriate to do so. Yet-
(i)
on 5 February 2001 when King replied on behalf of
JCFS to a letter of demand received from Werksmans Attorneys on behalf of the applicant, alleging infringement and passing-off by
use of the mark JACOBSEN'S, King failed to mention that JCFS was using the mark under licence from the first respondent and that
the first respondent had acquired the mark from Cargo Card (Pty) Ltd on 22 March 1994. Instead King simply alleged that JCFS had
traded under its name since 1989 and had developed a trading identity entirely distinct from that of Jacobsen's Publishers. King
also referred to the applicant's rights in respect of the mark and gave an undertaking on behalf of JCFS, both of which are inconsistent
with the first
29
respondent's allegation that it has all the right, title and interest in relation to the mark; and
(ii)
in the plea dated 17 January 2003 filed on behalf
of JCFS in the passing-off action instituted against it by the applicant, JCFS did not allege how the first respondent had acquired
the right, title and interest to the name JACOBSEN'S. It is simply alleged that it made use of the mark JACOBSEN'S with the permission
of the first respondent. The substantive allegations raised by the first respondent in the present case are not set out.
[31] The aqreement with JCFS in September 1998
King alleges that when approached by Neil Jacobsen in September 1998 to stop using the name JACOBSEN'S the request and the agreement
related only to the deletion of the name JACOBSEN'S from the company's name and that Neil Jacobsen had no objection to the company
continuing to do business under the name Jacobsen's Computer Freight Systems. He also alleges that he pointed out that the first
respondent still had all the rights to the mark JACOBSEN'S.
30
[32] I agree with the applicant's counsel that these allegations are so farfetched and clearly untenable that they should be rejected
on the papers. My reasons are as follows -
(1)
It is common cause that Neil Jacobsen requested King
to have
the name JACOBSEN'S removed form JCFS' registered company name and that King agreed to do this and that the name was changed with
effect from 17 November 1998;
(2)
In view of the reason for approaching King on behalf
of JCFS it
is highly improbable that Neil Jacobsen would insist on the company deleting the name JACOBSEN'S from its company name but agree
to its trading under the name Jacobsen's Computer Freight Systems. This would have defeated the object of the change of the company's
name;
(3)
In view of the warranties given by Neil Jacobsen to
the applicant
pertaining to the existence of the intellectual property rights and the rights of other persons in respect of the intellectual property
it is highly improbable that he would have placed himself and the whole transaction at risk by agreeing to allow the use of the mark
JACOBSEN'S in the business name of JCFS or at all;
(4)
King is demonstrably unreliable on the question of
what was
discussed about the rights to the mark;
31
(5)
King is demonstrably unreliable about the ancillary
question of
whether JCFS repaid Neil Jacobsen's loan or not.
[33]
There was therefore neither a legal nor a factual basis for
the alleged
disposition of the mark JACOBSEN'S by Jacobsen's Publishers to
Cargo Card (Pty) Ltd and by Cargo Card (Pty) Ltd to the first
respondent.
[34]
Expunqement in terms of section 10(3)
Section 10(3) provides for the removal from the register of a mark in
relation to which the applicant for registration has no bona fide claim to
proprietorship. The criteria for deciding whether a claim is bona fide
are the same under the Act and the old Act. These criteria were
summarised by the Honourable W.J. Trollip in his determination dated
~.
31 May 1986 in Moorgate Tobacco Co Ltd v Philip Morris Inc at 58-
60 as follows (his further observations are not relevant):
'The true meaning of section 20(1) has caused our courts some difficulty. See Broadway Pen Corporation v Wechsler & Co (Pty) Ltd 1963 (4) SA 434 (T) at 444; Oils International (Pty) Ltd v Wm Penn Oils Ltd 1965 (3) SA 64 (T) at p70-1, and on appeal, 1966 (1) SA 311 (A) at p317F-G; P Lorillard Co v Rembrandt Tobacco (Co) (Overseas) Ltd 1967 (4) SA 353 (T) at p356D-F. The effect of the relevant dicta in those decisions can be summarised thus. An applicant can rightly claim to be the common law proprietor of the trade mark if he
has originated, acquired or adopted it and has used it to the extent that it has gained the reputation as indicating that the goods
in relation to which it is used are his. (See Chowles and Webster, South African Law of Trade Marks, 2 ed at p61). He can then claim to be registered as the statutory proprietor of the trade
32
mark with all the benefits and rights conferred by our Act. But section 20(1) is not confined to that kind of applicant. It also applies to one that has originated, acquired or adopted
the trade mark, but has heeded to not use it all, or to the requisite extent, provided he proposes to use it.'
See Victoria's Secret Inc v Edgars Stores Ltd [1994] ZASCA 43; 1994 (3) SA 739 (A)
at 744A-745B; Tie Rack PIc v Tie Rack Stores (Pty) Ltd 1989 (4) SA
427 (T) at 446E-I: Webster & Page para 3.52.
[35]
In Victoria's Secret Inc v Edgars Stores Ltd supra at 744D-745B the
court considered the meaning of the words 'claiming to be the
proprietor of a trade mark' in section 20 of the old Act and concluded
that -
(1)
the words mean 'asserting a claim to be the proprietor
of a trade
mark';
(2)
the word 'proprietor' is not used in the section in
relation to a
common-law right of property and that it does not import
ownership of the mark as such;
(3)
in section 20 the word 'proprietor' means 'one who has
the
exclusive right and title to the use ... of a thing';
(4)
in terms of section 20 one can claim to be the proprietor
of a
trade mark if one has appropriated (in the sense of 'to take for
one's own') a mark for use in relation to goods or services for
33
the purpose stated in the definition of 'trade mark', and so used
it; and
(5)
section 20 applies not only to a person claiming to
be the
proprietor of a trade mark used by him but also to a person
claiming to be the proprietor of a trade mark proposed to be
used by him.
[36] To have a bona fide claim to proprietorship an applicant for registration
of a mark in use must claim, in good faith, to be entitled to be
registered as proprietor of the mark, and if the mark is not in use, the
applicant can make such a claim if he has a sufficiently present and
unconditional intention to use the mark - see P Lorillaird Co \l
Rembrandt Tobacco Co Ltd 1967 (4) SA 353 (T) at 356F-G.
The same considerations apply under the Act. In terms of regulation
11 an application for registration must be made on form TM1 which
contains the following certificate to be signed by the applicant -
'The applicant claims to be the proprietor of the accompanying trade mark which is proposed to be used or is being used in respect
of the aforementioned specification of goods/services'.
[37] The first respondent does not claim to have originated or appropriated
the mark JACOBSEN'S. The first respondent claims to have acquired
it. To have a bona fide claim to proprietorship of the mark when it
34
applied to register the trade mark in 1998, the first respondent would have had to establish that it had acquired the exclusive right
or title to the use of the mark in relation to the goods or services in respect of which it sought registration and that it had so
used it to the extent that the mark had gained a reputation as indicating that the goods or services in relation to which the mark
was used were those of the first respondent. The first respondent has failed to establish these facts. On the contrary, it is clear
that at all material times after the incorporation of Jacobsen's Publishers in 1966, Jacobsen's Publishers used the mark in relation
its business and its publications and that the applicant continued to do this after it acquired the business in October 1998. King,
who represented the first respondent at all times, obviously knew this to be the position. The first respondent therefore could not
claim in good faith to be registered as proprietor of the mark.
[37] The applicant has therefore established that the first respondent had no bona fide claim to proprietorship for the marks when it applied for registration and the applicant is entitled to an order for the expungement
of the marks. This conclusion makes it unnecessary to consider the other grounds for expungement save to say that in my view both
have merit.
