Mars Incorporated v Candy World (Pty) Ltd. (265/89) [1990] ZASCA 149; 1991 (1) SA 567 (AD); [1991] 2 All SA 25 (A) (28 November 1990)

Mars Incorporated v Candy World (Pty) Ltd. (265/89) [1990] ZASCA 149; 1991 (1) SA 567 (AD); [1991] 2 All SA 25 (A) (28 November 1990)

The Supreme Court of Appeal held that Chapelat (now Candy World) qualifies as a 'person aggrieved' under section 36(1)(b) of the Trade Marks Act because its application for defensive registration of 'Chappies' in class 31 was blocked by Mars's unused 'Chappie' mark. The court found that Chapelat did not need to prove the merits of its defensive registration application at this stage; the fact that its application was obstructed established a legitimate interest and grievance. The onus was on Mars to rebut the inference of bona fide interest, but Mars failed to do so. The appeal was dismissed, and the order for expungement of Mars's mark was confirmed.

Citation
[1990] ZASCA 149
Parties
Appellant: Mars Incorporated; Respondent: Candy World (Proprietary) Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
28 November 1990
Case Number
265/89
Procedural Posture
Civil Appeal / Final Appellate Decision
Outcome
Appeal dismissed with costs, including the fees of two counsel.
Judges
Botha, Nestadt, Kumleben, Goldstone, Nicholas
Legal Topics
Trade Mark Expungement, Defensive Registration, Locus Standi, Non Use of Trade Mark
Intellectual Property Commercial and Corporate Trade Mark Expungement Defensive Registration Locus Standi Non Use of Trade Mark

Case Brief

Summary, issues, holding and outcome

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Parties

Mars Incorporated

Appellant

Candy World (Proprietary) Limited

Respondent

Procedural Posture

Civil Appeal / Final Appellate Decision

Legal Issues

  1. 1 Whether Chapelat (now Candy World) qualifies as a 'person aggrieved' under section 36(1)(b) of the Trade Marks Act 62 of 1963.
  2. 2 Whether the presence of Mars's unused trade mark on the register constitutes an obstacle to Chapelat's defensive registration application.
  3. 3 Whether Chapelat's application for expungement should succeed despite Mars's opposition.

Ratio Decidendi

The Supreme Court of Appeal held that Chapelat (now Candy World) qualifies as a 'person aggrieved' under section 36(1)(b) of the Trade Marks Act because its application for defensive registration of 'Chappies' in class 31 was blocked by Mars's unused 'Chappie' mark. The court found that Chapelat did not need to prove the merits of its defensive registration application at this stage; the fact that its application was obstructed established a legitimate interest and grievance. The onus was on Mars to rebut the inference of bona fide interest, but Mars failed to do so. The appeal was dismissed, and the order for expungement of Mars's mark was confirmed.

Court Disposition

Appeal dismissed with costs, including the fees of two counsel.

Orders

  • The appeal is dismissed with costs, including the fees of two counsel.
  • The order for expungement of Mars's trade mark 'Chappie' from the register is confirmed.