Beecham Group Plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd. and Another (48/91) [1992] ZASCA 207; 1993 (1) SA 546 (AD); (25 November 1992)

Beecham Group Plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd. and Another (48/91) [1992] ZASCA 207; 1993 (1) SA 546 (AD); (25 November 1992)

The court held that the respondent's use of the appellant's registered trade marks in its computerized pharmacy system did not constitute infringement under section 44(1)(b) of the Trade Marks Act. The phrase 'use in the course of trade' must be understood as referring to trade in goods for which the trade mark is registered or goods closely associated therewith, enabling the alleged infringer to prey upon or take advantage of the proprietor's reputation and goodwill. The parties in this case were not in competition, and the respondent's use of the trade marks was solely to provide pharmacists with information for dispensing medicines, not to exploit the appellant's goodwill. Accepting...

Citation
[1992] ZASCA 207
Parties
Appellant: Beecham Group PLC; Respondent: Southern Transvaal Pharmaceutical Pricing Bureau (Proprietary) Limited; Respondent: Super Scripts (Proprietary) Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
25 November 1992
Case Number
48/91
Procedural Posture
Civil Appeal / Appeal From Dismissal of Application for Interdict in the Witwatersrand Local Division
Outcome
Appeal dismissed with costs, including costs of two counsel.
Judges
Corbett, E M Grosskopf, Goldstone, Nicholas, Kriegler
Legal Topics
Trade Mark Infringement, Use in the Course of Trade, Generic Substitution, Statutory Interpretation
Intellectual Property Trade Mark Infringement Use in the Course of Trade Generic Substitution Statutory Interpretation

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 12 Party arguments 2
Sign in to unlock

Parties

Beecham Group PLC

Appellant

Southern Transvaal Pharmaceutical Pricing Bureau (Proprietary) Limited

Respondent

Super Scripts (Proprietary) Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From Dismissal of Application for Interdict in the Witwatersrand Local Division

Legal Issues

  1. 1 Whether the respondent's use of the appellant's registered trade marks in its computerized pharmacy system constitutes infringement under section 44(1)(b) of the Trade Marks Act 62 of 1963.
  2. 2 Whether 'use in the course of trade' under section 44(1)(b) includes use by a party not trading in the goods for which the trade mark is registered.
  3. 3 Whether the display of trade marks for the purpose of comparing products and indicating generic alternatives amounts to statutory infringement.

Ratio Decidendi

The court held that the respondent's use of the appellant's registered trade marks in its computerized pharmacy system did not constitute infringement under section 44(1)(b) of the Trade Marks Act. The phrase 'use in the course of trade' must be understood as referring to trade in goods for which the trade mark is registered or goods closely associated therewith, enabling the alleged infringer to prey upon or take advantage of the proprietor's reputation and goodwill. The parties in this case were not in competition, and the respondent's use of the trade marks was solely to provide pharmacists with information for dispensing medicines, not to exploit the appellant's goodwill. Accepting...

Court Disposition

Appeal dismissed with costs, including costs of two counsel.

Orders

  • Condonation for late filing of the appeal record is granted, with costs payable by the appellant.
  • The appeal is dismissed with costs, including the costs of two counsel.