Luster Products Inc v Magic Style Sales CC (232/1995) [1996] ZASCA 146 (29 November 1996)

2

PLEWMAN TA

This appeal concerns a trade mark. The appellant, Luster Products Incorporated, a corporation registered according to the laws of the State of Illinois in the United States of America, is the proprietor of South African Trade Mark 84/6404 registered in Part A of the register in respect of goods in Class 3. The respondent is a South African close corporation, Magic Style Sales CC, which has its registered office in Sandton, Gauteng. Appellant manufactures and distributes hair care products and cosmetics for use mainly by black persons. There is a large market for these products in America. Since 1980, appellant has distributed its products in South Africa through representatives in this country, and has used its trade mark (which then was registered in America but not in South Africa) on such goods. In July 1984 the appellant's mark was registered locally.

The respondent carries on business in the same field as the appellant. It

3

was incorporated in 1988. The dispute arose in December 1990. At that time the appellant became aware of the fact that respondent was marketing certain of its products using a mark thereon which appellant considered an infringement of its registered mark. It accordingly caused a letter of demand to be addressed to the respondent calling upon it to desist from using this mark. Correspondence passed between the parties. The details are not relevant. The upshot was a refusal by the respondent to comply with appellant's demands (though it did, it seems, slightly modify the mark it used on its goods; the details will be given later). As a result the appellant applied for an interdict restraining the respondent from infringing its mark. The notice of motion is dated 9 December 1992. The application was opposed. Respondent in addition launched a counter-application filed on 9 February 1993. An enthusiastic paper chase ensued. Initially relief was also sought on the ground of passing off. This has not been pressed on appeal. The papers rapidly became voluminous. The counter-

4

application (in so far as is now relevant) was a double-barrelled attack. Respondent sought the expungement of appellant's mark under the provision of s 16(1) read with s 33(1) of the Trade Marks Act 62 of 1963. This Act applies to the proceedings by reason of the provisions of s 3(2) of Trade Marks Act 194 of 1993 (which came into operation on 1 May 1995). S 3(2) provides that proceedings commenced under the 1963 Act are to be dealt with in accordance with that Act as if it had not been repealed. The respondent's second barrel was an application (made in the alternative) for an order directing the entry of a disclaimer, of "any right to the exclusive use of the term 'S-CURL' apart from the special representation as depicted in the mark". The counter-application necessitated the joinder of the Registrar of Trade Marks. The Registrar has, however, taken no part in the litigation and abides the result. The matter was argued on the papers and without either party seeking a reference to evidence. The Court a quo dealt first with the counter application (and I propose to

5

do likewise). It held against the respondent on expungement but ordered the entry of the disclaimer sought. It dismissed the main application. What is before this Court is an appeal by the appellant against the dismissal of the main application and against the grant of the alternative counter-application - that is the order directing the entry of the disclaimer. The respondent, for its part, cross appeals against the refusal of the (main) counter-application. Leave to appeal was granted by the Court a quo in both cases.

It is necessary, in order that the contentions and counter contentions can be understood, that I describe the mark and its effect and explain the manner in which the respondent has marketed its goods.

First the mark. This was (as already stated) granted on 18 July 1984. It is depicted in the certificate of registration in the following representation:

6

The registration is subject to the following disclaimer:

"Registration of this trade mark shall give no right to the exclusive use of the word 'CURL' and the alphabetical letter 'S' separately from each other and apart from the special representation as depicted in the mark."

Class 3 (in which the registration falls) covers goods in the following

categories:

"Soaps, perfumery and essential oils; cosmetics; hair lotions, hair care products, shampoos, conditioners, creams, creme perm and styling lotions, hair pressing preparations, hair setting preparations, all the aforegoing including those for professional use only."

Neither in counsels' written heads of argument nor in the judgment is there any discussion of the effect of the grant. In my view a clear understanding of this is of fundamental importance.

In terms of the 1963 Act ("the Act" for the purposes of this judgment) a "trade mark"

" means a mark used or proposed to be used in relation to goods

7

or services for the purpose of-

1. indicating a connection in the course of trade between the goods or services and some person having the right, either as proprietor or as a registered user, to use the mark, whether with or without any indication of the identity of that person; and

2. distinguishing the goods or services in relation to which the mark is used or proposed to be used, from the same kind of goods or services connected in the course of trade with any other person."

A registered mark must also satisfy the requirements of s 10 and s 12 of

the Act and it is accordingly also necessary to quote the relevant portions of s

10 and s 12. In terms of s 10, in order to be registerable in part A of the

register, a trade mark -

" shall contain or consist of a distinctive mark".

In terms of s 12(1) "distinctive" means

"adapted, in relation to the goods ... in respect of which a trade mark is registered ..., to distinguish goods ... with which the proprietor of the trade mark is or may be connected in the course of trade from goods ... in the case of which no such connection

8

subsists, either generally or, where the trade mark is registered ... subject to limitations, in relation to use within those limitations. (2) In determining whether a trade mark is distinctive as aforesaid regard may be had to the extent to which -

3. the trade mark is inherently adapted to distinguish; and

4. by reason of the use of the trade mark or of any other circumstance the trade mark is or has become adapted to distinguish."

The mark then is the mark as depicted - that is the large or bold stylized alphabetical letter S in combination with the word curl in capital letters. It is a "goods mark". The mark must also be accepted as meeting the requirements of s 10 and s 12 - in particular as distinguishing the goods upon which it is used from the goods of other persons and as indicating a connection in the course of trade with appellant. It conferred on appellant the right to restrain infringement of the mark under the provisions of s 44(1) (a) and (b) of the Act (to which I will presently refer more fully).

The manner in which the respondent marketed its goods - that is the use

9

complained of - is illustrated in the document I annex hereto. What is of course significant is the bold S, in each case, combined with the word curl.

It is convenient here to discuss also the use of the term s curl by other persons - which is what respondent largely relied upon for its attack on the mark. The respondent's contention was that the term s-curl had come to denote a particular hair style and that various manufacturers of hair products intended for use by black persons had used the term descriptively on containers of their products and in advertisements. These are the propositions from which the learned judge's reasoning proceeded. The evidentiary foundation for both, as I shall presently show, is questionable but for reasons which I later give this is not of great importance. Du Plessis J in his judgment cites exhibits RW 17 to RW 20 as the evidential basis for his finding. In these exhibits what is significant is the depictions of the reverse face of the containers consisting, for the most part, of directions for the use the contents.

10

Annexure RW 17 may be taken as an example. The directions for use commence with the words "DO NOT WASH THE HAIR - USE ON DRY UNWASHED HAIR. Apply SOF 'N EASY HAIR BALM to the hair line covering ears and neck. Apply 'S' CURL RELAXER CREAM starting at the back of the head ..." The directions continue in like vein referring also to " 'S' CURL RELAXER CREAM, 'S' CURL NEUTRALIZING SHAMPOO, 'S' CURL DEEP CONDITIONER, 'S' CURL GEL AND 'S' CURL MOISTURISING."

Du Plessis J did not refer in the judgment to the appellant's answering affidavit in which it is said of annexure RW 17 that it was a product of American Hair Products (Pty) Ltd and American Hair Care CC. Letters of demand had been sent in 1991 to both with the result that the product was removed from the market. Broadly similar answers were given in respect of the other exhibits referred to by Du Plessis J. His acceptance of the respondent's evidence in this respect no doubt flowed from his incorrect appreciation of the

11

operation of the Plascon-Evans rule, a matter to which I presently refer. However little of this matters because there is other evidence of various concerns having used the term "S curl" in advertisements. A good deal of this evidence consists of photographs of bill-boards used by "informal hairdressers" on which various cuts or styling for hair are advertised. An example is exhibit RW 6 on which, in the left hand comer photograph, nineteen cuts or styles (somewhat crudely written) are advertised. Those most relevant read BLOW R15, CUT R15, S CURL R45, PRINCIPAL RELAX R35. This is typical of many such boards. The use of S curl in exhibit RW 6 seems to be as a description of a service and not goods. But there are other exhibits which would suggest that the term is being used descriptively or at least adjectivally in relation to certain products. Much of the evidence was in fact of no great relevance. Where the term is used as indicating a service to be provided this use can have no bearing on the fate of a goods mark. Some of the evidence furthermore related only to

12

use which was permissible in terms of the (original) disclaimer. However, since

Mr Puckin, who appeared for the appellant, was, subject to an important

qualification, prepared to accept that the term S-curl had been used in a

descriptive sense on a significant scale it is unnecessary to elaborate on the

exhibits or to analyse the precise usage demonstrated thereby. Mr Punckri's

qualification related to the time when such use was made of the term S-curl.

The facts in this regard are not discussed in the judgment of the Court below.

Mr Puckin's qualification was that all this was to be read with the respondent's

statement (in the affidavit of its principal deponent Willison) to the following

effect, namely:

"It has been the respondent's contention that S-curl became generic towards approximately the end of 1989 or the beginning of 1990."

It is thus clear that the respondent's case is based on what may be called

"post registration facts". What the consequence of this is I will discuss later.

13

While the matter can then be considered on the basis of Mr Puckrin's

concession it is, I think necessary to refer to the Court below's approach. The

learned judge, in considering the evidence, applied (as he put it) the guide-lines

laid down in Plascon-Evans Paints Ltd v Van Riebeek Paints(Pty) Ltd 1984 (3)

SA 623 (A) as explained in Ngqumba/Damons NO/Jooste en Andere v

Staatspresident en Andere 1988 (4) SA 224 (A) at 259C-263C. In so doing

however the learned judge accepted or assumed (as counsel also seem to have

done) that he was dealing with a single comprehensive application. He thus

accepted the dictum of Corbett JA at p 634-5 in the Plascon- Evans case, as

operating against the appellant and that it was the respondent's version (subject

to the recognised qualifications) which had to be accepted. In this he erred. The

present proceedings consist of separate applications, having a certain overlap and

being argued at a combined hearing, but separate and independent applications

nonetheless. The proper approach in these circumstances is that while the

14

respondent's version must be looked to in so far as the main application is concerned, the reverse is the case with the counter-application. For reasons which follow this too plays no great part in the resolution of the dispute.

With that preamble I turn to the counter-application.

S 16(1) provides:

"It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would be likely to deceive or cause confusion ... or would otherwise be disentitled to protection in a court of law."

S 33(1) provides:

"Any person aggrieved by the non-insertion in or omission from the register of any entry or by any entry made in the register without sufficient cause or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply to the court ... for the desired relief and thereupon the court ... may make such order for making, expunging or varying the entry ..."

It will be seen that s 33(1) is in very wide terms. In the present case

however it must be read with s 42 which provides:

15

"In all legal proceedings relating to a trade mark registered in part A of the register (including applications under section thirty-three), the original registration of the trade mark in part A of the register shall, after the expiration of seven years from the date of that registration, be taken to be valid in all respects, unless -

5. that registration was obtained by fraud; or

6. the trade mark offends against the provisions of either section sixteen or section forty one."

S 42 applies in all proceedings and, in consequence, only the exceptions

therein provided, namely fraud (which was not contended for) or s 41 (which

had been expressly abandoned) or s 16, could be raised. What then arises is

whether respondent made out a case on the basis of an objection framed in terms

of s 16 of a likelihood of deception or confusion. Mr Bowman's contention on

behalf of the respondent (as I understood it) was that because the term S-curl

had acquired a descriptive connotation, albeit some time after the original

registration, the continued registration of the mark and its use as such would be

likely to cause deception or confusion.

16

On the facts of this case it is somewhat difficult to appreciate why the acts of others which would cause confusion in relation to their products should render the mark confusing. This aspect need not be pursued. The first question is whether in the light of the decision in Adocock-Ingram Laboratories Ltd vs SA Druggists Ltd and Another 1983 (2) SA 350 (T) the post registration evidence can be relied upon. (See the judgment of Nicholas J at p 354 G and H and 355A.) The authorities I discuss presently hold that equivalent sections in the English and Australian Acts have a secondary application after the initial registration and that these sections refer not only to the act of making an entry on the register but also to permitting the continuance of the entry on the register. The same applies in my view to s 16(1). I can see no justification for the total exclusion of evidence merely because it relates to subsequent events. Such a reading would, so it seems to me, write a limitation into s 33(1) which is contrary to the entire tenor of the section. To the extent to which it was held

17

in the Adcock-Ingram case that post registration facts cannot be relied upon the decision is in my view wrong and must be overruled. Of course, there are then other difficulties, which must now be considered. What the debate really raises is the question whether a mark is rendered confusing because other persons have, perhaps assiduously, used it in a manner which is contrary to the interests of the trade mark proprietor. This is a problem which has been directly addressed in other jurisdictions but which has not been dealt with in our courts. The leading authority on the question has, for many years, been the decision of the House of Lords in the GE Trade Mark case [1973] RPC 297. The matter is dealt with in the speech of Lord Diplock. The case concerned a mark consisting of the letters GE in script enclosed in a circle (referred to as the Rondel mark) registered in 1907. There was nothing wrong with the original registration. The question was whether the mark (which was not, for the purposes of s 32(1) of the 1938 English Trade Marks Act, an "entry made in the register, without sufficient

18

cause") had, as a result of events which occurred after 1907, become an entry "wrongly remaining on the register", within the meaning of that section, in 1967 when proceedings to expunge it from the register had been commenced. The similarity between the English section and our s 33(1) and of the factual situation is apparent. Lord Diplock proceeded from the point of view that the section clearly contemplated that an entry, which was lawful at the time it was originally made, may, as a result of subsequent events, become one which "wrongly remains" on the register. He then examined other sections of the English Act which are closely paralleled in our legislation namely s 11 and s 13. S 11 is in all material respects our s 16 and s 13, similarly, our s 42.

The two questions which arose were first as to the time to which the prohibition expressed in the words "It shall not be lawful to register ..." relates and the second, whether a limitation upon the prohibition of the registration of a potentially deceptive or confusing trade mark is imposed by the requirement

19

that its use "would ... be disentitled to protection in a court of justice". He held

that the words of the proviso in s 13 (that is words which are the equivalent of

the exceptions in our s 42) were of assistance in answering the first question as

to the construction of s 11 but threw no light on the second. Neither question,

it was said, could be answered by linguistic analysis alone. I would quote the

following from p 324 from Lord Diplock's speech:

"The first depends upon whether, in the context of section 11, the verb 'to register' refers only to the act of making an entry on the register or whether it refers also to the retention of an entry on the register after it has been made. As a matter of ordinary useage of the English language either is a permissible meaning.

With regard to the second question, as a matter of syntax the dominant phrase in the relevant description of the disqualified matter is:- matter 'the use of which would be disentitled to protection in a court of justice'. The words 'by reason of its being likely to deceive or cause confusion or otherwise' constitute a subordinate clause of which the syntactic function is to restrict the amplitude of the disqualified matter. This it does by reference to the reasons for the disqualified matter's being disentitled to protection in a court of justice. But the inclusion in the subordinate

20

clause of the words 'or otherwise', if they are to be given a literal interpretation, has the consequence that the clause is wide enough to embrace any reason for the matter being disentitled to protection in a court of justice, and the clause thus becomes devoid of any restrictive effect and therefore performs no function at all. Furthermore, the use of the subjunctive mood in the dominant phrase gives rise to ambiguity as to the time to which the test of disentitlement to protect relates. Is the critical time at which the use of the mark would be disentitled to protection before it is entered on the register or after it has been entered on the register? Finally, whichever is the time to which the test relates, what meaning is to be ascribed to the words 'disentitled to protection in a court of justice'?

My Lords, the meaning of particular sections in the Act of 1938 can, in my view, only be ascertained by applying a purposive construction to the Act as a whole, and construing the actual words used in particular sections (unless it is linguistically impossible), so as to achieve and not so as to thwart the underlying policy to which the Act was intended to give effect."

Lord Diplock then proceeded to a review of the legislative history of the

English trade mark legislation (which I do not quote but which I would adopt).

Given the close parallel between our trade mark legislation and that of England

21

and recognising the degree to which our legislation has followed English trade mark legislation this history is, in a direct sense, also the history of the South African legislation. In so far as the remarks made (at p 326) in the speech (which I also do not quote) concerning the rights of the proprietor of a trade mark and the allowance made for those who can show honest concurrent use are concerned, these are considerations which apply with equal force to the South African legislation.

Lord Diplock's conclusion, in relation to the situation which obtained under the 1938 English Act, is summarised in the speech (at 334) as follows:

"(1) The fact that the mark is entered upon the register is prima facie evidence of the validity of the original registration and of the right of the registered proprietor to the exclusive use of the mark, subject however to the rights of concurrent user by any registered proprietor of an identical mark or one nearly resembling it.

(2) If the mark was likely to cause confusion at the time when it was first registered it may be expunged from the register as 'entry made in the register without sufficient cause' unless the

22

proprietor of the mark at that time would have been entitled to have it entered on the register by reason of his honest concurrent use of the mark as a trade mark before the original registration of the mark.

7. If the likelihood of causing confusion did not exist at the time when the mark was first registered, but was the result of events occurring between that date and the date of application to expunge it, the mark may not be expunged from the register as an entry wrongly remaining on the register, unless the likelihood of causing deception resulted from some blameworthy act of the registered proprietor of the mark or of a predecessor in title of his as registered proprietor.

8. Where a mark is liable to be expunged under (2) or (3) the Court has a discretion whether or not to expunge it and as to any conditions or limitations to be imposed in the event of its being permitted to remain on the register."

An equally persuasive judgment is to be found in the Australian case of

New South Wales Dairy Corporation v Murray Goulburn Co-operative Company

Limited in 18 Intellectual Property Reports 385. It will suffice to quote from the

judgment of Mason CJ at p 400. For the purposes of this quotation it should be

noted that s 28 of the Australian Act is for all practical purposes the same as our

23

s 16 - the separate requirements of our section have been enacted as the sub­paragraphs (a), (b), (c) and (d). Mason CJ said:

"As I have already noted, in 'GE' Trade Mark Lord Diplock (with the concurrence of Lord Simon of Glaisdale and Lord Kilbrandon) concluded that a lawfully registered trade mark is only liable to be expunged under s 11 of the Trade Marks Act 1938 (UK) by reason of supervening likelihood of deception or confusion if that likelihood is the result of some blameworthy conduct on the part of the registered proprietor. In reaching that conclusion his Lordship regarded the counterpart of our s 28(a) as being governed by the equivalent of our s 28(d) so that an applicant seeking removal of a mark on the ground that it infringed s 28(a) would be required to show not only likelihood of deception or confusion but also that the mark was disentitled to protection in a court of justice. That interpretation of s 11 depended very largely on the legislative history of the statutory provisions as outlined by Lord Diplock in his speech, a legislative history which has its counterpart in Australia. But the interpretation also depended on the presence of the provisions permitting identical or similar marks to remain in the register. The presence of those provisions is inconsistent with the existence of a statutory intention that likelihood of deception or confusion ipso facto leads to disentitlement to protection in a court of justice or to liability to expungement. To my mind, those provisions, particularly ss 34 and 58(3), justify an implication that s 28(a) looks to supervening likelihood of deception or confusion

24

only if that likelihood is the result of blameworthy conduct on the part of the registered proprietor. Moreover, as Bowen CJ pointed out in Riv-Oland Marble (at FCR 573-4), echoing the words of Windeyer J in Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Ltd's Application (1968) 118 CLR 128 at 133 (at first instance - reversed on appeal (1973) 129 CLR 353; 1 ALR 443), it is legitimate to lean against the literal construction of s 28(a) on the ground that it would not protect the registered proprietor from 'the assiduous efforts of a misappropriating user'. That consideration, taken in conjunction with the presence of the provisions permitting identical or similar marks to be entered and to remain in the register, supports the adoption of the interpretation of s 28(a) favoured by the Full Court of the Federal Court in Riv-Oland 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

25

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 mark. One aspect of the appellant's submission on this point is that, by reason of non-use, 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 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

26

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 self-defeating 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.

27

On the facts of the case then s 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 allowed by Du Plessis J to which I have already referred. S 18(b) provides that if a trade mark contains "matter common to the trade or otherwise of a non-distinctive 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 counter-application. The notice bears him out in this regard. Furthermore no notice of amendment of the counter-application was ever moved.

28

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 s 16 read with s 33(1) and the abandoned application under s 41(1). Mr Punckrin'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 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 s 42, can a case be made out under s 18(b)? In the Court below reliance was placed on the decision in Federation Internationale De Football and Others v Barlett and Others 1994 (4) SA 722 (T) where Joffe J held (at p 743 A) that s 42 was not a bar to relief in terms of s 18. The learned judge seems to have relied for this view in an extract from Lord Diplock's speech in the GE case. (The quotation at p 742 I-J seems to relate to reasoning which underlies the third

29

conclusion quoted by me above.) It is, with great respect to the learned judge, difficult to understand how the quote assists. The terms of s 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 s 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 s 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 s 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 s 44.

30

"44. (1) Subject to the provisions of subsections (2) and (3) of this section and of sections 45 and 46, the rights acquired by registration of a trade mark shall be deemed to be infringed by -

9. 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

10. 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 upper-case 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

31

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 s 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 S-curl 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 to bring the respondent's use wholly within the terms of s 44(l)(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"

32

and therefore an infringement in terms of s 44(l)(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 s 44(l)(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

33

likelihood of injury or prejudice was established.

Mr Bowman also argued that the container depicted on the right hand side in the annexure hereto had been replaced in 1992 by the container on the left hand 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 s 46(b) infringement, has been proved.

S 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

34

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 respondent imitates the representation or depiction of the mark, it

cannot be heard to say that its use is bona fide. The evidence established that

other substantial companies had not found it necessary to use the mark and this

leads to the conclusion that the respondent's use was a device to take advantage

of appellant's goodwill. That, in my view, disposes of the argument based on

s 46.

35

In the result the main appeal must be upheld both in relation to infringement and in relation to the order directing a disclaimer. So too the cross-appeal must be dismissed.

The order which I make is:

11. The appeal is upheld and the cross-appeal dismissed.

12. The Court a quo's order is set aside and there is substituted therefore the

following:

"a) The respondent is interdicted from infringing applicant's registered trade mark 84/6404

13. The respondent's counter-application for expungement of the mark and for the entry of a disclaimer in relation thereto is dismissed.

14. The respondent is ordered to pay the costs of the application and counter-application including the costs of two counsel."

3) The respondent is ordered to pay the costs of the appeal including the
costs of two counsel.

C PLEWMAN JA

36

CONCUR:

CORBETT CJ) NESTADT JA) HARMS JA) SCHUTZ JA)

3 7

ANNEXURE

SEE ORIGINAL JUDGMENT PICTURE