Cochrane Steel Products (Pty) Ltd v M-Systems Group (1272/2016) [2017] ZASCA 189; 2017 BIP 134 (SCA) (13 December 2017)

Cochrane Steel Products (Pty) Ltd v M-Systems Group (1272/2016) [2017] ZASCA 189; 2017 BIP 134 (SCA) (13 December 2017)

The Supreme Court of Appeal held that neither Cochrane nor any other trader is entitled to exclusive rights over the ordinary English words 'clear' and 'view', which constitute the composite mark 'CLEARVU'. These words are commonly used descriptively in the fencing industry, and the registration of the mark should not inhibit their bona fide use by others. The court affirmed that the imposition of a disclaimer and admission, as ordered by the court below, was warranted to prevent unjustified monopolies and to ensure fair competition. The court amended paragraph 1.2 of the order by deleting the words 'The trade mark registrant admits that', but otherwise dismissed the appeal, confirming...

Citation
[2017] ZASCA 189
Parties
Appellant: Cochrane Steel Products (Pty) Ltd; Respondent: M-Systems Group
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
13 December 2017
Case Number
1272/2016
Procedural Posture
Civil Appeal / Appeal From Gauteng Division of the High Court, Pretoria
Outcome
Appeal dismissed, save for the amendment of paragraph 1.2 of the order below by deletion of the words 'The trade mark registrant admits that'.
Judges
Navsa, Ponnan, Bosielo, Tsoka, Schippers
Legal Topics
Trade Mark Registration, Disclaimer of Non Distinctive Elements, Distinctiveness of Marks, Exclusive Rights Limitation
Intellectual Property Commercial and Corporate Trade Mark Registration Disclaimer of Non Distinctive Elements Distinctiveness of Marks Exclusive Rights Limitation

Case Brief

Summary, issues, holding and outcome

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Parties

Cochrane Steel Products (Pty) Ltd

Appellant

M-Systems Group

Respondent

Procedural Posture

Civil Appeal / Appeal From Gauteng Division of the High Court, Pretoria

Legal Issues

  1. 1 Whether the registration of the trade mark 'CLEARVU' confers exclusive rights to the words 'clear' and 'view' separately and apart from the mark.
  2. 2 Whether an admission or disclaimer regarding the descriptive use of 'clear view' and 'view' by others is warranted under South African trade mark law.
  3. 3 Whether the composite mark 'CLEARVU' is sufficiently distinctive to justify registration without inhibiting legitimate competition.

Ratio Decidendi

The Supreme Court of Appeal held that neither Cochrane nor any other trader is entitled to exclusive rights over the ordinary English words 'clear' and 'view', which constitute the composite mark 'CLEARVU'. These words are commonly used descriptively in the fencing industry, and the registration of the mark should not inhibit their bona fide use by others. The court affirmed that the imposition of a disclaimer and admission, as ordered by the court below, was warranted to prevent unjustified monopolies and to ensure fair competition. The court amended paragraph 1.2 of the order by deleting the words 'The trade mark registrant admits that', but otherwise dismissed the appeal, confirming...

Court Disposition

Appeal dismissed, save for the amendment of paragraph 1.2 of the order below by deletion of the words 'The trade mark registrant admits that'.

Orders

  • Paragraph 1.2 of the order below is amended by deleting the words 'The trade mark registrant admits that'.
  • The appeal is otherwise dismissed.