Arjo Wiggins Ltd v Idem (Pty) Ltd and Another (69/2000) [2001] ZASCA 109; [2002] 2 All SA 147 (A); 2002 (1) SA 591 (SCA) (28 September 2001)

Arjo Wiggins Ltd v Idem (Pty) Ltd and Another (69/2000) [2001] ZASCA 109; [2002] 2 All SA 147 (A); 2002 (1) SA 591 (SCA) (28 September 2001)

The Supreme Court of Appeal held that promotional use of a trade mark on goods not themselves the object of trade does not constitute bona fide use for the purposes of section 27 of the Trade Marks Act. Bona fide use requires actual commercial trade in the goods for which the mark is registered. However, where the proprietor has proven use of the mark on a subset of goods within a broader category (here, carbonless copying paper within 'paper'), and there is no evidence that the subset is commercially distinct from the broader category, it is commercially sensible to maintain registration for the broader category. The respondent failed to establish that further limitation of the...

Citation
[2001] ZASCA 109
Parties
Appellant: Arjo Wiggins Ltd; Respondent: Idem (Pty) Ltd; Respondent: Registrar of Trade Marks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
28 September 2001
Case Number
69/2000
Procedural Posture
Civil Appeal / Appeal From High Court Judgment on Expungement of Trade Mark Registration
Outcome
Appeal upheld; registration rectified to cover 'paper and paper articles'; costs awarded to appellant on appeal.
Judges
Nienaber, Harms, Cameron, Navsa, Froneman
Legal Topics
Trade Mark Expungement, Bona Fide Use, Trade Marks Act, Specification Limitation
Intellectual Property Trade Mark Expungement Bona Fide Use Trade Marks Act Specification Limitation

Case Brief

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Parties

Arjo Wiggins Ltd

Appellant

Idem (Pty) Ltd

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Civil Appeal / Appeal From High Court Judgment on Expungement of Trade Mark Registration

Legal Issues

  1. 1 Does promotional use of a trade mark on goods not themselves the object of trade constitute bona fide use under section 27 of the Trade Marks Act?
  2. 2 If bona fide use is established only for a subset of goods, should the registration be limited to that subset or a broader commercially coherent category?
  3. 3 Is the applicant entitled to expungement of the trade mark registration beyond the goods for which bona fide use was proven?

Ratio Decidendi

The Supreme Court of Appeal held that promotional use of a trade mark on goods not themselves the object of trade does not constitute bona fide use for the purposes of section 27 of the Trade Marks Act. Bona fide use requires actual commercial trade in the goods for which the mark is registered. However, where the proprietor has proven use of the mark on a subset of goods within a broader category (here, carbonless copying paper within 'paper'), and there is no evidence that the subset is commercially distinct from the broader category, it is commercially sensible to maintain registration for the broader category. The respondent failed to establish that further limitation of the...

Court Disposition

Appeal upheld; registration rectified to cover 'paper and paper articles'; costs awarded to appellant on appeal.

Orders

  • The appeal succeeds with costs, including the costs of two counsel.
  • Paragraph 1 of the order of the Court below is substituted with: (a) The trade mark registration no 72/0463 Idem in class 16 in the name of Arjo Wiggins Ltd is rectified in terms of section 27 of the Act by the deletion of all goods and the specification covered by the registration other than paper and paper...