---

/SG

IN THE HIGH COURT OF SOUTH AFRICA

(TRANSVAAL PROVINCIAL DIVISION)

DATE: 17/03/2006

CASE NO: 5889/2005

UNREPORTABLE

In the matter between:

BAYERISCHE MOTOREN WERKE

AKTIENGESELLSCHAFT APPLICANT

And

COMMERCIAL AUTO GLASS (PTY) LTD RESPONDENT

JUDGMENT

PRINSLOO, J

[1] The applicant is the developer and, by itself and through licensees, the manufacturer and distributor of BMW vehicles, their parts, components and accessories and related products throughout many countries of the world, including South Africa.

[2] The applicant is the proprietor of the registered trade marks BMW, BM and 3-SERIES (“the applicant’s trade marks”).

[3] The applicant also claims rights in the unregistered trade marks E30, E36 and E46.

[4] The respondent’s business includes the distribution and sale of windscreens for motor vehicles, including those to fit BMW vehicles. The respondent is also involved in the supply and fitment of all accessories and spare parts for all types of motor vehicles, including the various models of BMW motor vehicles manufactured by the applicant.

[5] In conducting its business, as described, the respondent, in its advertising, and in relation to the goods sold by it, makes use of the registered and unregistered trade marks of the applicant.

[6] Believing that the aforementioned conduct of the respondent is unlawful, the applicant instituted these proceedings.

[7] The application is based on respondent’s alleged infringement of the applicant’s well-known registered and/ or unregistered trade marks, including the trade marks BMW, BM, 3-SERIES, E30, E36 and E46 in terms of the Trade Marks Act 194 of 1993 (“the act”) and passing off.

[8] Before me Mr Michau appeared for the applicant and Mr Wheeldon appeared for the respondent.

[9] In its notice of motion the applicant seeks an order restraining the respondent from infringing the rights of the applicant in any of its trade mark registration numbers 1979/06501 BMW in class 12, 1998/17028 BM in class 12 and/or 1984/01620 3-SERIES in class 12 in terms of the provisions of section 34(1)(a) and/or 34(1)(b) of the act, by making unauthorised use in the course of trade of any of the aforementioned trade marks, or of any confusingly or deceptively similar trade marks, in any of the manners referred to in the founding affidavit, or otherwise in relation to windscreens and/or windows and/or other parts and/or accessories for motor vehicles.

[10] Moreover, the applicant seeks an order restraining the respondent from infringing the rights of the applicant in terms of section 35 of the act in relation to any of its well-known (unregistered) trade marks BMW, BM, 3-SERIES, E30, E36 and/or E46 by making unauthorised use of any reproductions, limitations or translations of any of the aforesaid trade marks in relation to any of the manners referred to in the founding affidavit, or otherwise in relation to windscreens and/or windows and/or other parts and/or accessories for motor vehicles.

[11] There is a further prayer for relief based on passing-off which will only come into play if the applicant is unsuccessful in its bid for the relief based on sections 34 and 35 of the act.

[12] Lastly the applicant seeks an order directing the respondent to remove from all its advertisements, promotional material, invoices, labelling, websites, data bases, records or any other printed or visual matter all unauthorised reference to any of the aforesaid trade marks, or any trade marks confusingly or deceptively similar thereto.

[13] Initially, the applicant, in its notice of motion, limited the relief claimed to the respondent’s alleged infringing conduct “in relation to windscreens or windows for motor vehicles”. The applicant’s case in the founding affidavit is limited to alleged infringement in respect of these accessories, ie windscreens and windows.

As a result of a remark made in the opposing affidavit, the applicant, at a late stage, amended the notice of motion to add to the windscreens and windows the phrase, “and/or other parts and/or accessories for motors”.

No alleged use or infringement in relation to the latter category is pleaded by the applicant and none is illustrated in any attachment, nor admitted by the respondent in real terms. The amended claim for additional relief extending to such last-mentioned goods is therefore unsupported by evidence and, in my view, it cannot be entertained, because no case in support thereof is made out in the founding papers.

[14] As to the defences offered by the respondent, it deserves mentioning that the respondent does not deny the existence of the applicant’s registered trade mark rights, supra and the respondent also agrees that the applicant’s (unregistered) trade marks E30, E36 and E46 are used in the relevant trade for purposes of identifying and distinguishing between the various types of BMW motor vehicles and the spare parts and accessories required for each, as well as for purposes of avoiding confusion in the market place between the different models and ensuring that the correct spare parts for a specific model is supplied and fitted.

[15] However, the respondent denies that the applicant’s unregistered trade marks can constitute trade marks.

[16] In addition, the respondent relies on the defence set out in section 34(2)(c) of the act and claims that the use of these models, codes and trade marks is the only practical and effective manner of referring to and distinguishing between the various BMW motor vehicles (models) for purposes of replacing the various parts of the models.

[17] The relevant portions of section 34(1) of the act read as follows:

“34(1) The rights acquired by registration of a trade mark shall be infringed by –

(a) the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;

(b) the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion.”

[18] Section 34(2) of the act reads as follows:

“Section 34(2): Defences to trade mark infringement:

(2) A registered trade mark is not infringed by –

...

(c) the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories, and such services;

...

Provided further that the use contemplated in paragraph (a), (b) or (c) is consistent with fair practice.”

[19] Section 35 of the act deals with protection for well-known trade marks under the Paris Convention although such marks may not be registered in a country where protection is claimed. Section 35(3) reads as follows:

“(3) The proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark is entitled to restrain the use in the Republic of a trade mark which constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of the well-known trade mark in relation to goods or services which are identical or similar to the goods or services in respect of which the trade mark is well-known and where the use is likely to cause deception or confusion.”

[20] All the aforesaid registered trade marks of the applicant are registered, in general, in class 12, in relation to motor vehicles and parts and/or accessories and/or fittings therefore. The applicant relies on the fact that its registered trade marks have become well-known for purposes of the relief sought in terms of the act, and, in addition, the applicant relies on the fact that it has acquired a goodwill and reputation in its registered trade marks for purposes of the relief sought in terms of the common law for passing-off.

[21] As to the well-known trade marks (section 35 protection) the applicant is also the proprietor of the trade marks E30, E36 and E46, which are used as model designations in buying and selling BMW cars and components. These marks are hereinafter collectively referred to as “the applicant’s unregistered trade marks” or “E-marks”.

[22] It is not in dispute that the applicant has made extensive use of its trade marks, both registered and unregistered, in South Africa in relation to the motor vehicles manufactured by it, as well as parts and accessories therefore. It is generally recognised, and has been accepted in this court in respect of other similar matters, that these trade marks have become well-known for purposes of this type of relief sought.

[23] The relief sought by the applicant in terms of section 35 of the act relates to its registered and unregistered trade marks. The applicant has undeniably made extensive use of its registered and unregistered trade marks in South Africa. The sales are enormous, the applicant has expended a great deal of time and money towards promoting the trade marks and the sales and advertising figures are not in dispute. There is undisputed proof that the applicant’s unregistered trade marks are widely recognised and exclusively connected with the applicant. The substantial reputation and goodwill acquired by the applicant in its trade marks (registered and unregistered) is beyond question. Ample support for all these observations which I have made is to be found in supporting affidavits and other annexures forming part of the founding papers.

[24] It has to be accepted, in my view, that the applicant’s trade marks have become well-known in South Africa, as contemplated in section 35(1A) of the act. Against this background, I must first consider the contention of the respondent that the applicant’s unregistered trade marks cannot constitute trade marks and are not capable of distinguishing and functioning as trade marks.

The respondent admits that the applicant’s unregistered trade marks are understood in the trade to indicate and differentiate between the different models of the applicant’s BMW 3 SERIES motor vehicles. Moreover, the respondent admits that the applicant’s unregistered trade marks are widely used by all sectors of the relevant trade to identify and refer to the specific models of BMW motor vehicles and the particular spare parts and accessories used in relation to these motor vehicles.

It appears that the main thrust of the respondent’s contention is that the unregistered trade marks (the E-marks) cannot serve the purpose of a trade mark. The reasons advanced by the respondent for this contention are that the E-marks are never actually placed on the applicant’s BMW motor vehicles and are always used in combination with the applicant’s trade mark BMW. Consequently, so it is argued, the E-marks, if used independently without reference to the BMW trade mark, would not be capable of distinguishing the applicant’s motor vehicles from those of others in the relevant trade.

Section 2 of the act dictates that in order for a mark to qualify as a trade mark, it must be capable to distinguish the goods of one party from that of another.

In this instance, there is clear evidence that the E marks are widely accepted and recognised as distinguishing between the different models of BMW motor vehicles. In my view, it also distinguishes the vehicles from vehicles of other manufacturers. The evidence clearly suggests that the E marks serve a distinguishing purpose. The evidence filed by the applicant indicates that the E marks (on their own) are recognised by members of the relevant sector of the public as indicative of the various models of the BMW vehicles.

In the result, I have come to the conclusion that the respondent's argument in this regard must fail. In fact, if the E marks did not serve the purpose of distinguishing, there would be no reason for the respondent to make use of these marks, as will be illustrated hereunder.

[25] Before turning to the remaining defence, namely that dealing with section 34(2) of the act, I pause to mention what turned out to be no more than a superficial dispute and something which did not receive a great deal of attention during the hearing. It deals with the question whether the goods offered for sale and sold by the respondent fall within the scope of the trade mark registrations of the applicant. In the founding affidavit the following allegation is made:

"I am advised that windscreens or windshields for vehicles are classified within class 12 of the International Classification of Goods and Services (Nice Classification) which is relevant for purposes of regulation 4 of the Trade Mark Regulations. In other words, the aforementioned goods being offered for sale and sold by the respondent fall within the scope of the trade mark registrations of the applicant set out above and in relation to which these trade marks are well-known."

This allegation was not denied in the answering affidavit, neither was it seriously attacked during argument before me. It also appears to me that the goods fall inside the ambit of the classification. I consequently hold this to be the case for present purposes.

[26] The question whether the rights of the applicant have been infringed by the respondent either in terms of section 34 or section 35 of the act, ought to be considered against the background of the conduct of the respondent which triggered this application in the first place.

[27] The respondent's business is the distribution and sale of windscreens for motor vehicles as well as the supply and fitment of windscreens and automotive glass and other spare parts for all types of motor vehicles, including the various models of BMW motor vehicles.

[28] In its advertisements, promotional material, invoices and product labelling in the conduct of its trade, the respondent is making use of and reference to the trade marks BMW, BM, 3-SERIES, E30, E36 and E46 in relation to the windscreens and/or automotive glass sold by it.

[29] Clear examples of the advertisements, promotional material, invoices and product labelling employed by the respondent are to be found as annexures to the founding papers. An example of an advertisement under “car windscreens” reads as follows:

“BMW

BMW E30 3-SERIES 83-92 R355

BMW E36 3-SERIES 91-97 R460

BMW E46 3-SERIES 98 on R490”

There is a tax invoice inscribed “BMW E36 2DR 92-97 WS”

There is a windscreen labelled “BM-E36 C” and a quotation for a “BMW E36 front screen”. These are some of the examples. The fact that this material is generated by the respondent is not disputed in any way.

[30] The conduct complained of by the applicant is described in para 10 of the founding affidavit and I deem it convenient to quote three extracts:

“10.7 The windscreen purchased (which is tendered for inspection to the respondent or its attorneys ... by arrangement during normal business hours) is not made by or with the authority or licence of the applicant or BMW SA. In this regard I refer to the accompanying affidavit of Mr Salomon Maritz, a Parts expert in the employ of BMW SA.

10.8 Accordingly, I am advised that the conduct of the respondent in this regard amounts to an infringement of the rights of the applicant in terms of sections 34(1)(a) and/or (b) and section 35 of the Trade Marks Act.

10.9 Furthermore, given the reputation and goodwill which the applicant enjoys in its aforementioned trade marks in South Africa, the use by the respondent of these trade marks in relation to unauthorised windscreens to fit BMW vehicles is likely to give the impression to a substantial number of potential customers, that the windscreens being offered for sale by the respondent emanate from or are in some way connected with or associated with the applicant and/or BMW South Africa. In other words, the impression is created that these are genuine BMW windscreens by virtue of the use of the applicant’s trade marks by the respondent in an unauthorised manner.”

These allegations are not denied in the answering affidavit. The only denial to be founds reads as follows:

“For the reasons set out above, it is denied that reference by the respondent to the registered trade marks BMW, BM and 3 SERIES and the model codes E30, E36 and E46 in the manner complained of is, in any way, unlawful.”

TRADE MARK INFRINGEMENT IN TERMS OF SECTION 34(1)(a) AND/OR (b)

[31] As to the alleged trade mark infringement in terms of section 34(1)(a) and/or (b) counsel for the applicant submitted that in order to succeed with a claim for trade mark infringement in terms of section 34(1)(a) of the act, the applicant bears the onus of proving the following:

Use of the registered trade mark or of a trade mark so nearly resembling it as to be likely to deceive or cause confusion; that the use is in relation to the goods or services in respect of which the trade marks are registered; that the use is in the course of trade; and that the use is unauthorised. For support of this submission counsel relied on Webster and Page, South African Law of Trade Marks, 4ed, par 12.7, pg 12-11.”

[32] It appears from the papers that the respondent does not deny the existence of the trade marks registrations, neither is the validity thereof attacked. The respondent does not deny that the trade marks used by it as illustrated are anything else but virtually identical to the registered trade marks of the applicant. The respondent does not deny that the use of the marks is in the course of trade or that the goods in relation to which it is using these trade marks are covered by the scope of the various registrations as already mentioned.

As I already pointed out, it is also not in dispute that the windscreens and automotive glass sold and distributed by the respondent are not made by or with the authority or licence of the applicant or BMW South Africa.

[33] Against this background, the applicant submitted that a proper case had been made out for infringement in terms of section 34(1)(a) of the act. With this submission I agree. The only issue to be examined is whether or not the conduct of the respondent falls within the ambit of section 34(2) of the act.

DEFENCE TO TRADE MARK INFRINGEMENT AS INTENDED BY SECTION 34(2)(c) OF THE ACT

[34] As appears from the quoted wording of this section, the use of the trade marks must be bona fide and consistent with fair practice.

[35] The main thrust of the respondent’s case in this regard is that it is using the applicant’s trade marks in order adequately and accurately to describe the intended purposes of its goods and to ensure that the correct spare part or accessory for a specific make or model of goods is supplied and fitted. The respondent argues that the use of the applicant’s trade marks is inevitably required to identify the correct spare part or accessory suitable to fit, for instance, BMW motor vehicles, and that the respondent’s manner of use of the applicant’s trade marks is the only practical and effective manner of referring to and distinguishing between the various models of BMW motor vehicles.

[36] In Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd [1984] ZASCA 51; 1984 3 SA 623 (A) the court, when dealing with a similar dispute falling under the previous Trade Marks Act, said the following at 645F:

“The use of the words must not be a mere device to secure some ulterior object, as for example where the words are used in order to take advantage of the goodwill attaching to the registered trade mark of another.”

[37] In Webster and Page, op cit, at pg 12-74, the learned authors state, with specific reference to spare parts and the defence provided for in section 34(2)(c), the following:

“It is submitted that this section is subject to the same qualification as section 34(2)(b) to the effect that it does not exempt use as a trade mark. Accordingly, a phrase such as ‘XYZ Spare Parts’ would not be protected by this section while ‘Spare Parts for XYZ Goods’ would clearly fall within the provisions of section 34(2)(c).”

[38] In Bayerische Motoren Werke AG v Autostyle Retail (TPD case no 5887/2005 handed down on 3 November 2005) this court, per DU PLESSIS J, said the following when also dealing with the situation where a dealer in accessories for BMW motor vehicles made use of various of the applicant’s trade marks in advertising its goods:

“Use will not be bona fide, however, if the user does not unequivocally make it clear that his goods are not connected in the course of trade with the proprietor of the trade mark. It follows that bona fide use in section 34(2)(c) means honest use of a trade mark, without the intention to deceive anybody and while unequivocally making it clear that the goods are not connected in the course of trade with the proprietor of the trade mark.”

The court then held, with regard to the use of the phrase “BMW E36 LED Light-Up Dial Kits” that:

“A description will not be bona fide in terms of section 34(2)(b) if it does not make clear that the goods are not connected in the course of trade with the proprietor of the trade mark and therefore is likely to deceive or cause confusion.

...

In my view the words complained of do not in themselves or in their full context make it clear that they do not refer to a BMW part or accessory. My reasons for this conclusion are as follows:

.... In the context the reference to ‘BMW E36 LED Light-Up Dial Kits’ does not make it clear that the item is not a BMW part or accessory and not connected with the applicant in the course of trade. On the contrary, the single use of the BMW trade mark tends to indicate that, as with the other items referring to trade marks, one is dealing with a genuine BMW accessory, obviously suitable for a BMW. I conclude that this use of the applicant’s BMW trade mark infringes the applicant’s rights.”

[39] Against this background I have difficulty in accepting the following submission made by the respondent’s counsel in his heads of argument:

“The applicant notes that the references to its trade marks are not qualified with an explanatory preamble such as ‘Auto glass windscreens for fitment to BMW E46 cars’, and suggests that some such may satisfy section 34(2)(c). So a short sentence will nullify the need for an interdict, avoid passing-off and prevent the damage the applicant claims to have suffered. This is simply illogical. An explanatory statement, it is trite, does not avoid infringement, once it is established.”

In my view, an appropriate “explanatory statement” is exactly what the authorities to which I have referred would require to bring about bona fide use and consistency with fair practice as intended by section 34(2).

[40] As to the “fair practice” requirement, the applicant’s counsel argued that the respondent must ensure and prove that its use is consistent with fair practice. This would include ensuring that no confusion exists with a member of the public as to the origin of the part in question. No such evidence was offered by the respondent. The respondent, in the course of distributing these products, does nothing to indicate that the parts sold by it are not authorised by the applicant, but are merely replacement parts for the applicant’s BMW motor vehicles. The applicant argues that the respondent’s suggestion that it is only making use of the applicant’s trade marks for purposes of identifying the applicant’s goods, is untrue, as the respondent is, in fact, using the applicant’s trade marks in relation to parts which have not been manufactured by or with the authorisation of the applicant.

The respondent also uses the BMW and E-marks without any indication that the parts in respect of which these marks are being used are not authorised, genuine BMW parts.

[41] On the same question and requirement that use of the trade mark by a third party must be in accordance with honest practices, both counsel referred me to the foreign judgment of The Gillette Company Gillette Group Finland Oy v LA-Laboratories Limited Oy (judgment of the European Court of Justice dated 17 March 2005, case C-228/03).

In para 54 of the judgment this court, inter alia, comes to the following conclusion:

“The condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104, constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.

The use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example:

-

it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner.”

[42] In my view all these authorities support the applicant’s case that it has not been shown that the respondent’s use of the applicant’s trade marks in relation to its goods is bona fide and consistent with fair practice. Consequently, I have come to the conclusion that the defence to trade mark infringement as provided by section 34(2)(c) is not open to the respondent in this particular case.

TRADE MARK INFRINGEMENT IN TERMS OF SECTION 35

[43] On the authority of Webster and Page op cit, para 12.35, pg 12-62 to 12-63 counsel for the applicant pointed out that the section 34(2) statutory defences are not available to a respondent facing an application in terms of section 35.

[44] It was submitted that in order to succeed with an application based on the provisions of section 35, the applicant must show that its trade marks are well-known in the Republic, that it is a national of or domiciled or established in a convention country, a reproduction, imitation or translation (by the respondent) of its well known trade marks, use in relation to goods or services which are identical or similar to its goods or services in respect of which it is well-known and use likely to cause deception or confusion. Again, I was referred to Webster and Page, para 12.31, p 12-57.

[45] It has already been illustrated that most of these requirements have been met by the applicant.

[46] Use by the respondent of the trade marks BMW, BM, 3-SERIES, E30, E36 and E46 constitutes a reproduction and/or imitation of the applicant’s well-known trade marks as required by section 35(3).

The respondent is making unauthorised use of the applicant’s registered and unregistered trade marks in relation to those goods or services to which they have become well-known. Reasons for this have been illustrated.

[47] The use made by the respondent will also lead to deception or confusion amongst members of the public, as there is no indication that the goods sold by it and in relation to which it is making unauthorised use of the applicant’s trade marks are not original products, authorised by the applicant. The respondent sells them as original products emanating from the applicant.

[48] In view of the aforegoing, I have come to the conclusion that the applicant has made out a proper case for the relief sought based on trade mark infringement in terms of section 35.

FURTHER REMARKS AND CONCLUSIONS

[49] I have dealt with some of the submissions made by Mr Wheeldon on behalf of the respondent, and I now turn to what I considered to be his main argument, namely strong reliance on the contention that the respondent has a constitutional right to freedom of expression in terms of section 16(1) of the Constitution of South Africa, Act 108 of 1996 and, while that right is not absolute, it is not lightly to be limited.

[50] In support of his argument, Mr Wheeldon relied on the recent Constitutional Court judgment of Laugh It Off Promotions CC v SAB International (Finance) BV t/a Sabmark International (Freedom of Expression Institute as amicus curiae) 2006 1 SA 144 (CC).

[51] In that case the respondent had initially approached the High Court for an interdict based on section 34(1)(c) of the act restraining the appellant close corporation from marketing T-shirts which, according to the respondents, infringed some of their trade marks. The case deals with the well-known “Carling Black Label” beer brand, and the T-shirt carries an imitation of the well-known “Black Label” logo with the words “Black Labour” and “White Guilt”.

[52] Section 34(1)(c) reads as follows:

“The rights acquired by registration of a trade mark shall be infringed by –

(c) The unauthorised use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well known in the republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception: provided that the provisions of this paragraph shall not apply to a trade mark referred to in section 70(2).”

[53] Neither counsel suggested that the provisions of section 70 of the act (a transitional provision dealing with trade marks validly registered in terms of the repealed act) come into play for purposes of this debate.

[54] Mr Michau, for the applicant, countered the argument by pointing out that the applicant did not rely on the protection of section 34(1)(c) of the act. It is clear that the attack of the applicant is aimed at unauthorised use of its trade marks in relation to goods or services in respect of which the marks are registered or goods or services which are similar to the goods or services in respect of which the trade marks are registered. This is a far cry from the protection offered by section 34(1)(c) dealing with any goods as illustrated in the Laugh It Off case where the subjects under debate were beer on the one hand and T-shirts on the other hand.

In my view the argument of the applicant ought to be upheld, and I fail to see how the argument based on freedom of expression can find application in a pure trade mark protection suit involving the unauthorised use in the course of trade in relation to the very goods or services protected by the registered trade mark or similar goods or services.

If the section 16 fundamental right protecting freedom of expression can be employed to attack the protection offered in terms of section 34(1)(a) and (b) to the holders of valid trade marks, then, in my view, the very essence of trade mark law, going back more than a century, may be under threat and may have to be reconsidered altogether. In my view such a result could not have been contemplated by the legislature.

[55] Even if I am wrong in coming to this conclusion, it should be borne in mind that the Constitutional Court, in any event, held that the court is constitutionally obliged to balance out the interests of the respondent as owner of the marks against the claim of free expression for the very purpose of determining what was unfair and materially harmful to the marks – Laugh It Off Promotions CC at 164F-165D.

If this approach were to be applied to the present case, I am of the view that the rights of the applicant ought to prevail.

[56] For all these reasons I have come to the conclusion that the argument of the respondent based on the protection of freedom of expression cannot be upheld in the present case.

[57] It remains for me to remark that, in my view, the applicant has also made out a proper case, in the founding papers, to meet the additional requirements for interdictory relief namely that the conduct of the respondent is causing or may potentially cause damage or harm to the applicant and, finally, that the application for an interdict is the only suitable and appropriate remedy in all the circumstances.

[58] I am accordingly of the view that the application must succeed.

[59] In the result I make the following order:

1. The respondent is restrained from infringing the rights of the applicant in any of its trade mark registrations numbers 1979/06501 BMW in class 12, 1998/17028 BM in class 12 and/or 1984/01620 3-SERIES BMW in class 12 in terms of the provisions of sections 34(1)(a) and/or 34(1)(b) of the Trade Marks Act, 1993, by making unauthorised use in the course of trade of any of the aforementioned trade marks, or of any confusingly or deceptively similar trade marks, in any of the manners referred to in paras 10.2, 10.3 and/or 10.4 of the founding affidavit, or otherwise in relation to windscreens and/or windows for motor vehicles.

2. The respondent is restrained from infringing the rights of the applicant in terms of section 35 of the Trade Marks Act, 1993, in relation to any of its well-known trade marks BMW, BM, 3-SERIES, E30, E36 and/or E46 by making unauthorised use of any reproductions, imitations or translations of any of the aforesaid trade marks in relation to any of the manners referred to in paras 10.2, 10.3 and/or 10.4 of the founding affidavit, or otherwise in relation to windscreens and/or windows for motor vehicles.

3. The respondent is restrained from passing-off any of its windscreens or windows to fit motor vehicles as being those of the applicant, or associated or connected with the applicant, by making unauthorised use in relation to any such goods of any of the trade marks BMW, BM, 3 SERIES, E30, E36 and/or E46 in any of the manners referred to in paras 10.2, 10.3 and/or 10.4 of the founding affidavit, or otherwise in relation to such goods.

4. The respondent is directed to remove from all its advertisements, promotional material, invoices, labelling, websites, data bases, records or any other printed or visual matter, all unauthorised reference to any of the aforementioned trade marks, or any trade marks confusingly or deceptively similar thereto.

5. The respondent is directed to pay the costs of the application, such costs to include the costs of two counsel.

W R C PRINSLOO

JUDGE OF THE HIGH COURT

5889/2005

HEARD ON: 08/02/2006

FOR THE APPLICANT: ADV R MICHAU & ADV I JOUBERT

INSTRUCTED BY: MESSRS ADAMS & ADAMS,

PRETORIA

FOR THE RESPONDENT: MR R B WHEELDON

INSTRUCTED BY: RON WHEELDON ATTORNEYS,

JOHANNESBURG

DATE OF JUDGMENT: 17/03/2006

---