Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another (573/97) [2000] ZASCA 2; 2000 (2) SA 771 (SCA); [2000] 2 All SA 1 (A) (16 March 2000)

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another (573/97) [2000] ZASCA 2; 2000 (2) SA 771 (SCA); [2000] 2 All SA 1 (A) (16 March 2000)

The Supreme Court of Appeal held that the term 'Liquorice Allsorts' is generic and descriptive of a type of confectionery and is used by Beacon and other traders to describe the product, not to distinguish Beacon's goods from those of others. The court found that section 15 of the Trade Marks Act empowers it to require a disclaimer for any matter in a registered mark that is not capable of distinguishing, and this assessment is made at the time of the rectification application. The court rejected Beacon's arguments that the relevant date is the date of registration and that section 15 only applies when the court is asked to decide whether the mark should remain on the register. The court...

Citation
[2000] ZASCA 2
Parties
Appellant: Cadbury (Pty) Limited; Respondent: Beacon Sweets & Chocolates (Pty) Limited; Respondent: Registrar of Trade Marks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
16 March 2000
Case Number
573/97
Procedural Posture
Civil Appeal / Appeal From High Court Judgment Refusing Rectification of Trade Mark Register
Outcome
Appeal upheld; order of the court below set aside and replaced with an order rectifying the trade mark registration by inserting a disclaimer.
Judges
Vivier, Harms, Marais, Streicher, Farlam
Legal Topics
Trade Mark Rectification, Disclaimer of Non Distinctive Elements, Capability of Distinguishing, Generic Terms in Trade Marks
Intellectual Property Commercial and Corporate Trade Mark Rectification Disclaimer of Non Distinctive Elements Capability of Distinguishing Generic Terms in Trade Marks

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 9 Party arguments 2 Amounts and remedies 2
Sign in to unlock

Parties

Cadbury (Pty) Limited

Appellant

Beacon Sweets & Chocolates (Pty) Limited

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Civil Appeal / Appeal From High Court Judgment Refusing Rectification of Trade Mark Register

Legal Issues

  1. 1 Whether the term 'Liquorice Allsorts' in Beacon's trade mark is capable of distinguishing Beacon's goods from those of others within the meaning of section 9 of the Trade Marks Act.
  2. 2 Whether the court may order a disclaimer against the exclusive use of 'Liquorice Allsorts' under section 15 of the Trade Marks Act in a post-registration rectification application.
  3. 3 Whether Beacon's use and licensing practices affect the distinctiveness of 'Liquorice Allsorts'.

Ratio Decidendi

The Supreme Court of Appeal held that the term 'Liquorice Allsorts' is generic and descriptive of a type of confectionery and is used by Beacon and other traders to describe the product, not to distinguish Beacon's goods from those of others. The court found that section 15 of the Trade Marks Act empowers it to require a disclaimer for any matter in a registered mark that is not capable of distinguishing, and this assessment is made at the time of the rectification application. The court rejected Beacon's arguments that the relevant date is the date of registration and that section 15 only applies when the court is asked to decide whether the mark should remain on the register. The court...

Court Disposition

Appeal upheld; order of the court below set aside and replaced with an order rectifying the trade mark registration by inserting a disclaimer.

Orders

  • The appeal is upheld with costs, including the costs of two counsel.
  • The registration of trade mark 86/3570 is rectified by the insertion of the following additional disclaimer: 'The registration of this mark shall also give no right to the exclusive use of the name Liquorice Allsorts, separately and apart from the mark.'