Mars Incorporated v Cadbury (Swaziland) (Pty) Ltd. and Another (427/98) [2000] ZASCA 36; 2000 (4) SA 1010 (SCA) (8 September 2000)

Mars Incorporated v Cadbury (Swaziland) (Pty) Ltd. and Another (427/98) [2000] ZASCA 36; 2000 (4) SA 1010 (SCA) (8 September 2000)

The court held that s 42 of the Trade Marks Act 1963 applies to defensive trade marks and survives the repeal of the 1963 Act by virtue of s 70(1) of the 1993 Act. As more than seven years had elapsed since the original registration, the marks are presumed valid and immune from challenge on grounds relating to their original registration, except for fraud or statutory contravention, which were not alleged. The registrar's opinion regarding likelihood of confusion was the jurisdictional fact for registration, and Mars, having withdrawn its opposition and not appealed, could not indirectly attack that opinion. The appeal was dismissed as Mars was barred from seeking removal of Cadbury's...

Citation
[2000] ZASCA 36
Parties
Appellant: Mars Incorporated; Respondent: Cadbury (Swaziland) (Pty) Ltd.; Respondent: Registrar of Trade Marks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
8 September 2000
Case Number
427/98
Procedural Posture
Civil Appeal / Appeal From Dismissal of Application for Removal of Defensive Trade Marks
Outcome
Appeal dismissed with costs, including costs of two counsel.
Judges
Harms, Marais, Plewman, Melunsky, Mpati
Legal Topics
Defensive Trade Marks, Trade Marks Act 1963, Trade Marks Act 1993, Likelihood of Confusion, Statutory Passing Off
Intellectual Property Commercial and Corporate Defensive Trade Marks Trade Marks Act 1963 Trade Marks Act 1993 Likelihood of Confusion Statutory Passing Off

Case Brief

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Parties

Mars Incorporated

Appellant

Cadbury (Swaziland) (Pty) Ltd.

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Civil Appeal / Appeal From Dismissal of Application for Removal of Defensive Trade Marks

Legal Issues

  1. 1 Whether the original registration of Cadbury's defensive trade marks can be challenged after seven years under s 42 of the Trade Marks Act 1963.
  2. 2 Whether Mars is entitled to seek removal of Cadbury's defensive trade marks on grounds relating to their original registration.
  3. 3 Whether the registrar's opinion regarding likelihood of confusion is open to indirect attack absent an appeal.

Ratio Decidendi

The court held that s 42 of the Trade Marks Act 1963 applies to defensive trade marks and survives the repeal of the 1963 Act by virtue of s 70(1) of the 1993 Act. As more than seven years had elapsed since the original registration, the marks are presumed valid and immune from challenge on grounds relating to their original registration, except for fraud or statutory contravention, which were not alleged. The registrar's opinion regarding likelihood of confusion was the jurisdictional fact for registration, and Mars, having withdrawn its opposition and not appealed, could not indirectly attack that opinion. The appeal was dismissed as Mars was barred from seeking removal of Cadbury's...

Court Disposition

Appeal dismissed with costs, including costs of two counsel.

Orders

  • The appeal is dismissed with costs, including the costs of two counsel.