Impala Platinum Holdings Limited v Impala Warehousing And Logistics Africa (Proprietary) Limited and Another (2013/22608) [2014] ZAGPJHC 410 (11 December 2014)

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[2014] ZAGPJHC 410
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Impala Platinum Holdings Limited v Impala Warehousing And Logistics Africa (Proprietary) Limited and Another (2013/22608) [2014] ZAGPJHC 410; 2014 BIP 349 (GJ) (11 December 2014)

IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
LOCAL DIVISION, JOHANNESBURG
CASE
NO: 2013/22608
DATE:
11 DECEMBER 2014
In
the matter between:
IMPALA
PLATINUM HOLDINGS
LIMITED
.....................................................................
Applicant
…
.........................................................................................
(First
Respondent in
Counter-application)
And
IMPALA
WAREHOUSING AND LOGISTICS
AFRICA
(PROPRIETARY)
LIMITED
......................................................................
First
Respondent
…
................................................................................................
(Applicant
in the Counter-application)
IMPALA
WAREHOUSING AND
LOGISTICS
....................................................
Second
Respondent
THE
COMPANIES AND INTELLECTUAL PROPERTY COMMISSION
…
.................................................................................
(Second
Respondent in the counter application)
Coram:
L J VAN TONDER A J
Heard:
9 to 11 September 2014
Delivered:
11 December 2014
Summary:
Trade
marks –
Trade Marks Act 194 of 1993 (“the Act”)
- principles applicable to infringement and counter-application for
expungement.
Applicable
test - whether goods and services are so similar to those for which
the trade marks had been registered, that it gives
rise to a
“likelihood of deception or confusion”.
Goods
compared to services – similarity - relevance of the
distinction between goods and services in the 45 classes in Schedule

3 to the Act – different classes indication of no similarity.
Schedule
3 classification – starting point and important in determining
similarity of goods and services – goods different
to services.
Practice
– motion proceedings – founding affidavit should include
explanation of matters contained and relied upon in
attachments.
JUDGMENT
L
J VAN TONDER A J:
A:
GENERAL INTRODUCTION
[1]
Impala Platinum Holdings Limited (“Implats”) applied in
June 2013 in reliance on section 34 of the Trade Marks Act
194 of
1993 (“the Act”) and passing-off principles for
interdictory and ancillary relief against Impala Warehousing
and
Logistics Africa (Proprietory) Limited (“IW”).  Implats
thus sought to bring an end to the alleged trespassing
on its
commercial domain by the infringing use by IW of the trade marks
(“IMPALA” and “IMPALA PLATINUM”).
[2]
In the current offensive Implats operates, in broad terms, in the
field of mining, processing and marketing of platinum and
related
goods (essentially trading in goods). IW, in broad terms, operates in
warehousing, transport and related logistics (essentially
providing
services).
[3]
At the heart of both trenches chosen by Implats lies the contention
that the respective goods and services of the enterprises
are so
similar to those for which the trade marks had been registered by
Implats, that the use by IW gives rise to “a likelihood
of
deception or confusion”, constituting trade mark infringement
in addition to passing-off. In broad terms Implats had to
establish
“a likelihood of deception or confusion” to succeed in
terms of section 34(1)(b) and, in similar terms, as
one of the facta
probanda for relief based on passing-off.
[1]
[4]
In retaliation IW counter-applied in terms of section 24 and 27 of
the Act to expunge or restrict the registered trade marks
of Implats
in order to redefine the trade mark boundaries contended for by
Implats. The essential basis for the counter-application
is that the
absence of bona fide intended or actual use by Implats of the trade
marks justifies an expungement or limitation of
the ambit of the
registered trade marks.
[5]
The battle lines on these issues were drawn in the course of some
1000 pages of opposed motion, with reference to various provisions
of
the Act and the legal principles applicable to unlawful competition
(passing-off in particular). On that platform, expert senior
counsel
in the field (each assisted by an able junior) argued for almost
three days on various legal and factual disputes crystallised
in the
papers. Argument included scrimmages over admissibility of evidence,
strikeouts and procedural issues in relation to disputes
of fact on
affidavit.  Broadly, however, the main substantive issues argued
were:
(i)
whether the admitted use of the Implats’
“IMPALA/Impala” trade mark related to similar goods or
services;
(ii)
if so, whether in such use the likelihood
of deception or confusion existed;
(iii)
whether IW’s conduct constituted
passing-off; and
(iv)
whether Implats’ actual or intended
use of the trade mark justified expungement or amendment of the
registered trade marks.
[6]
This campaign over disputed trade territory has to be resolved
through enforcement of the registration and limitation or
de-registration
(expungement) of the impugned trade marks and as
possible ally the common law principles applicable to passing-off.
[7]
As already alluded to, trade mark battles resemble territorial
strife. Typically the parties compete for commercial dominium
in
relation to their trade activities, involving in particular the
origin of specific goods and sometimes services, marketed and

supplied under a particular proprietary banner.
[8]
Once a trade mark owner, like Implats, perceives such competing use
of similar or identical trade marks to create a “likelihood
of
deception or confusion” to the actual or prospective users of
the products or services, legal forces are normally deployed,

exemplified in this matter.
[9]
As a prologue to the campaign to determine the “likelihood of
deception or confusion” it would assist to summarise
the broad
legal matrix relevant to the opposing contentions:
(i)
According to well-established principles, a
trademark serves as a badge of origin, in the sense that it
identifies and guarantees
the trade origin of the goods/services to
which it applies (see, for example, Verimark (Pty) Ltd v BMW AG; BMW
AG v Verimark (Pty)
Ltd
2007 (6) SA 263
(SCA) paras 4 – 5).
(ii)
The underlying legal principles applicable
to this type of commercial conflict seek to strike a balance between
two extremes: (i)
sanctity of the registered boundaries of the trade
origin of goods/services (as a valuable means of trade success) as an
instigator
for economic enterprise and entrepreneurship versus (ii)
unjustified monopoly over goods/services in the form of
anti-competitive
preclusion through trade mark registration which
stifles commercial endeavour. (See below references to
Foschini
Retail Group (Pty) Ltd v Coetzee, par [24] of the unreported
judgment)
(iii)
Those who wish to compete in commerce are
entitled to challenge the mere annexation or the passive occupation
of idle commercial
territory under the banner of trade mark
registration.
(iv)
If a trade mark is registered in a
particular class of goods or services, but not used or intended to be
used, such a squatter may
be evicted through the mechanisms of the
Act for the benefit of actual use by others, alternatively the
claimed territory may be
reduced to depict actual use – so as
not to preclude justified use by others.
(v)
The
legitimate purpose of a trade mark
[2]
is to be used bona fide in the course of trade
[3]
as symbol and sign of trade origin
[4]
(in relation to
[5]
and to
distinguish goods or services from “similar”
[6]
goods or services used by others)
[7]
,
but not to prevent or inhibit competition.
[8]
(vi)
Statute
(on Provincial level since 1877 and National level since 1916) and
common law, through the principles of Roman-Dutch law
on passing-off
and unlawful competition govern this field.
[9]
(vii)
Statute
facilitates the registration and enforcement of existing rights in a
unique manner, which expanded common law principles
substantially.
The Act is largely based on United Kingdom and European Community
legislation
[10]
subject to
relevant constitutional context.
[11]
(viii)
In essence the legislation aims to
administer trade mark registration to facilitate inexpensive prima
facie proof of use and reputation
acquired through such use. Without
registration, no infringement proceeding can be brought.
(ix)
Section
11(1) provides that trade mark registration has to happen with
reference to the 45 classes of goods and services defined
in Schedule
3 to the Trade Mark Act  (also known as the Nice
Classification
[12]
).
(x)
Since
1971 trade marks can, in addition to goods, also be registered in
respect of services. A cyber search on relevant jurisprudence

indicate that even with the facility of a legislative
straight-jacket, trade mark disputes continue to thrive in a world of
its
own.
[13]
(xi)
There
must be a connection in the course of trade between the goods and
services and the registered proprietor of the mark, i.e.
only goods
and services in the course of trade, not philanthropic, charitable or
non-commercial purposes.
[14]
In the same context, in determining “genuine use” it
cannot be “just internal use by the undertaking concerned”
[15]
.
(xii)
Counsel for both parties were asked during
argument to consider the relevance of the as yet unreported judgement
in Foschini Retail
Group (Pty) Ltd v Coetzee (A1/11) [2013] NGHC (18
January 2013), paragraphs [21] – [27]. The judgment emphasised
direction
towards limiting the specification of goods or services in
relation to actual use based on a “marked trend to limit
anti-competitive
practices”; the effect of electing not to
register in a particular class; the importance of classification
system as the
starting point to the assessment of similarity and the
effect of goods/services being in different classes. The conclusion
was
reached that based on the principles in the judgment, in the
context of the words “similar to the goods or services”

in section 10(14) a court “can not lightly find similarity”.
The Full Bench held per A A LOUW J
as
follows:
“
[27]
The trade mark classification system has been put into place so as to
permit similar (or even identical) trade marks to exist
and be used
in relation to different goods/services by different proprietors.
This is because there is simply no danger of consumers
being deceived
as to the origin of these goods and there should therefore be no bar
to different proprietors adopting the same
mark for use in relation
to goods which are not similar.  By way of illustrative example,
consumers are very unlikely to be
confused into thinking that COBRA
floor polish, COBRA golf clubs, COBRA taps and COBRA motor cars all
originate from the same source.
Similarly, POLO clothing and
POLO vehicles obviously do not originate from the same source
either.
The starting point for an
assessment of similarity must therefore be with reference to the
classification system itself.  The
fact that the goods/services
are in different classes would indicate, at least prima facie, that
the goods and services are not
similar. (emphasis added)”
(xiii)
In the context of expungement issues the
Full Bench quoted with approval the following extract:
“
[26]
In Webster and Page the following is said:
“
The
general tenor of the 1993 Act is in the direction of limiting
specifications to goods or services in relation to which the
applicant actually proposes to use his mark. This appears in
particular from provisions of section 27(1)(a) which provides for a

partial expungement in cases where the applicant did not have a bona
fide intention to use the mark in relation to all the goods
or
services contained in his specification and the introduction of
provisions which protect a mark from infringement in relation
to
similar goods or services to those which the mark is registered.
The wider the ambit of the specification, the wider the
ambit of
“similar” goods or services, and allowing unduly wide
specifications of goods or services, beyond those in
respect of which
the applicant uses or proposes to use his mark, would otherwise
provide the trade mark proprietor with an unreasonably
wide
monopoly”. (See E Webster and G E Morley Webster and Page South
African Law of Trade Marks (4
th
edition) par 8.23.)
[10]
Within this context Implats contends that its mark “IMPALA”
and “IMPALA PLATINUM” is being trespassed
upon by the use
thereof in trade by IW. In order to narrow down the ultimate
boundaries and alleged infringement it is necessary
to set out the
registered trade marks. To facilitate the ultimate findings in
relation to the multitude of disputes in the papers,
the relevant
statutory and common law framework relied upon by the parties should
then be summarised. This will be followed by
an analysis of the
factual disputes on the papers and finally the detailed legal nuances
applicable to the opposing contentions.
The latter involves a
comparison of the contentions relating to opposing trade activities
and the counter-application aimed at
restricting the ambit of the
Implats trade marks.
B:
THE IMPUGNED TRADE MARKS
[11]
It is not in dispute that Implats is the registered proprietor in
South Africa of the following trade mark registrations:
(i)
no. 98/08322 IMPALA in
class
1
in respect of:
“
Chemicals
used in industry, science and photography, as well as in agriculture,
horticulture and forestry; unprocessed artificial
resins, unprocessed
plastics; manures; fire extinguishing compositions; tempering and
soldering preparations; chemical substances
for preserving
foodstuffs; tanning substances; adhesives used in industry”;
(ii)
no. 98/08323 IMPALA in
class
6
in respect of:
“
Common
metals and their alloys; metal building materials; transportable
buildings of metal; materials of metal for railway tracks;

non-electric cables and wires of common metal; ironmongery, small
items of metal hardware; pipes and tubes of metal; safes, goods
of
common metal not included in other classes; ores”;
(iii)
no. 98/08324 IMPALA in
class
36
in respect of:
“
Insurance;
financial affairs; monetary affairs; real estate affairs”;
(iv)
no. 98/08325 IMPALA in
class
40
in respect of:
“
Treatment
of materials”;
(v)
no. 98/08326 IMPALA in
class
42
in respect of:
“
Providing
of food and drink; temporary accommodation; medical; hygienic and
beauty care; veterinary and agricultural services; legal
services;
scientific and industrial research; computer programming; services
that cannot be placed in other classes”; and
(vi)
no. 2008/28896 IMPALA PLATINUM in
class
14
in respect of:
“
Precious
metals and their alloys and goods in precious metals or coated
therewith, not included in other classes; jewellery, precious
stones;
horological and chronometic instruments”.
[12]
The trade mark registrations referred to paragraphs (i) to (v) all
date back to 15 May 1998 and the trade mark registration
referred to
in paragraph (vi) dates back to 10 December 2008.
[13]
The reputation of Implats and the fact that trade marks have become
valuable assets are not in dispute between the parties.
It is,
however, actively disputed whether Implats has any reputation in
respect of the services rendered by IW. In respect of trade
mark
registration in 6 classes, Implats contends that annual turnover
ranging between R12 to R34 billion, and average advertising

expenditure of some R7 million per annum, indicate that significant
reputation and value attach to it. The counter-application
for
expungement, however, challenged the territorial ambit of the
registered trade marks in various respects.
C:
THE APPLICABLE LEGAL MATRIX
[14]
The relief against infringement was sought by Implats in terms of
section 34(1)(b):
“
34.(1)
The rights acquired by registration of a trade mark shall be
infringed by-
(a)
….
(b)
the unauthorised use of a mark which is identical or similar to the
trade mark registered, in the course of trade in relation
to goods or
services which are so similar to the goods or services in respect of
which the trade mark is registered, that in such
use there exists the
likelihood of deception or confusion;”
[15]
IW’s counter-attack was in terms of section 24(1) read with
section 27(1)(a) alternatively section 27(1)(b). It involved
various
claims for expungement of Implats’ trade mark registration nos.
98/08322-26 IMPALA in classes 1, 6, 36, 40 and 42,
based on the
alleged limited scope of intended or actual use in relation to goods
and services. In the alternative IW seeks in
terms of section 24(1)
and section 27(1)(a) partial expungement in relation to:
(i)
trade mark registration no. 98/08323
“IMPALA” in class 6, of the registration in relation to
all of the goods for which
the trade mark is registered save and
except for the goods and services in respect of which trade mark use
is proved;
(ii)
trade mark registration no. 98/08325
“IMPALA” in class 40, of the registration by the
amendment of the specification
of services to read:  “Refining
of platinum and platinum group materials”; and
(iii)
trade mark registration no. 2008/28896
“IMPALA PLATINUM” in class 14 by the amendment of the
specification of goods
to read:  “Platinum and platinum
group metals falling within the class”
[16]
Section 24(1)
of the
Trade Marks Act reads
as follows:
“
General
power to rectify entries in register
(1) In
the event of non-insertion in or omission from the register of any
entry, or of an entry wrongly made in or wrongly remaining
on the
register, or of any error or defect in any entry in the register, any
interested person may apply to the court or, at the
option of the
applicant and subject to the provisions of
section 59
, in the
prescribed manner, to the registrar, for the desired relief, and
thereupon the court or the registrar, as the case may
be, may make
such order for making, removing or varying the entry as it or he may
deem fit.”
[17]
Sections 27(1)(a)
and (b),
27
(3) and
27
(5) of the
Trade Marks Act
read
as follows:
"Removal
from register on ground of non-use:-
(1)
Subject to the provisions of
section 70(2)
, a registered trade mark
may, on application to the Court, or, at the option of the applicant
and subject to the provisions of
section 59
and in the prescribed
manner, to the Registrar by any interested person, be removed from
the register in respect of any of the
goods or services in respect of
which it is registered on the ground either –
(a)
that the trade mark was registered
without
any bona fide intention
on the part of
the applicant for registration that it should be used in relation to
those goods or services by him or any person
permitted to use the
trade mark as contemplated by
section 38
, and
that
there has in fact been no bona fide use
of the trade mark in relation to those goods or services by any
proprietor thereof or any person so permitted for the time being
up
to the date three months before the date of the application;...
(b) that up to the
date three months before the date of the application, a continuous
period of five years or longer has elapsed
from the date of the issue
of the certificate of registration during which the trade mark was
registered and during which there
was
no bona fide use
thereof
in relation to those goods or services by any proprietor thereof or
any person permitted to use the trade mark as contemplated
in
section
38
during the period concerned;
(c) ...
(2)
...
(3) In the case of
an application in terms of paragraph (a) or (b) of subsection (1) the
onus of proving, if alleged, that there
has been relevant use of the
trade mark shall rest upon the proprietor thereof.
(4) …
(5) Subsection (1)
(a) and (b) does not apply to a trade mark in respect of which
protection may be claimed under the Paris Convention
as a well-known
trade mark within the meaning of
section 35(1)
of this Act.”
(emphasis added)
[18]
Section 31
of the
Trade Marks Act provides
as follows:
"31. Use of one
associated or substantially identical trade mark equivalent to use of
another:-
(1) When under the
provisions of this Act use of a registered trade mark is required to
be proved for any purpose, the Registrar
or the Court, as the case
may be, may, if in so far as he or it deems fit, accept proof of the
use of an associated registered
trade mark or of the trade mark with
additions or alterations not substantially affecting its identity, as
equivalent to proof
of the use required to be proved.
(2) The use of the
whole of a registered trade mark shall for the purposes of this Act
be deemed to be the use also of any registered
trade mark being a
part thereof and registered in the name of the same proprietor by
virtue of subsection (1) of section 18.”
[19]
Section 35
of the
Trade Marks Act provides
as follows:
“
35.
Protection of well-known marks under Paris Convention.
(1)
References in this Act to a trade mark which is entitled to
protection under the Paris Convention as a well-known trade mark,
are
to a mark which is well known in the Republic as being the mark of—
(a)
a person who is a national of a convention country; or
(b)
a person who is domiciled in, or has a real and effective industrial
or commercial establishment in, a convention country, whether
or not
such person carries on business, or has any goodwill, in the
Republic.
(1A)
In determining for the purposes of subsection (1) whether a trade
mark is well-known in the Republic, due regard shall be given
to the
knowledge of the trade mark in the relevant sector of the public,
including knowledge which has been obtained as a result
of the
promotion of the trade mark.   [Sub-s. (1A) inserted by s.
65 (a) of Act No. 38 of 1997.]
(2)
A reference in this Act to the proprietor of such a mark shall be
construed accordingly.
(3)
The proprietor of a trade mark which is entitled to protection under
the Paris Convention as a well-known trade mark is entitled
to
restrain the use in the Republic of a trade mark which constitutes,
or the essential part of which constitutes, a reproduction,
imitation
or translation of the well-known trade mark in relation to goods or
services which are identical or similar to the goods
or services in
respect of which the trade mark is well known and where the use is
likely to cause deception or confusion.
(4)
Where, by virtue of section 10 (8), the authorization of the
competent authority of a convention country or an international

organization is required for the registration of a mark as a trade
mark, such authority or organization is entitled to restrain
the use
in the Republic of such a mark without such authorization. [Sub-s.
(4) added by s. 65 (b) of Act No. 38 of 1997.]”
D:
THE BASIC PRINCIPLES APPLICABLE TO PASSING-OFF
[20]
In
Jennifer Williams & Associates & Another v Life Line
Southern Transvaal
(“the Jennifer Williams case”)
[1996] ZASCA 46
;
1996 (3) SA 408
(A) at 418 D - G the SCA has defined passing-off as:
"A
species of wrongful competition in trade or business.  In its
classic form it usually consists in A representing, either
expressly
or impliedly (but almost invariably by the latter means), that the
goods or services marketed by him emanate in the course
of business
from B or that there is an association between such goods or services
and the business conducted by B.  Such conduct
is treated by the
law as being wrongful because it results, or is calculated to result,
in the improper filching of another's trade
and/or in an improper
infringement of his goodwill and/or in causing injury to that other's
trade reputation.  Such a representation
may be made impliedly
by A adopting a trade name or get-up or mark for his goods which so
resembles B's name or get-up or mark
as to lead the public to be
confused or to be deceived into thinking that A's goods or services
emanate from B or that there is
the association between them referred
to above."
[16]
[21]
An applicant must establish the following two essential requirements
in order to succeed in a passing-off application:
[17]
(i)
his name, mark, sign or get up has become
distinctive in the sense that they are regarded, by a substantial
number of members of
the public or in the trade, as coming from a
particular source known or unknown; and
(ii)
that the use of the feature concerned is
likely or calculated, to deceive, and thus cause confusion and
injury, actual or probable,
to the goodwill of his business.
[22]
It is apparent that the second requirement substantially resembles
the phrase in section 34(1)(b) of the Act “the likelihood
of
deception or confusion”. Evidence in support of infringement
and passing-of would overlap in this regard, alternatively,
the
inability to establish “the likelihood of deception or
confusion” in relation to infringement, on the facts of
this
matter, would preclude relief based on passing-off in view of the
fact that “likely” constitutes a lower threshold
than
“calculated”.
E:
THE ESSENTIAL ISSUES ARISING FROM THE AFFIDAVITS
[23]
Ms Stefanie Vivier, Implats’ in-house corporate lawyer, deposed
to the founding papers and to most subsequent sets of
affidavits.
When deposing thereto she had some 10 year involvement with the
Implats group of companies. She alleged that she has
sound knowledge
of Implats’ business activities, trade marks and “goods
and services”.
[24]
In support of the terse allegations in the founding papers she relied
to a large extent on corporate marketing material and
pictures
relating to the respective companies’ activities. These
documents were simply attached to the papers, with little
if any
attempt to substantiate the contents with first hand direct evidence.
The legal position in relation thereto is dealt with
below.
Eventually, however, due to admissions by IW and vice versa the
arguments narrowed down to a debate as to whether copper,
cobalt,
nickel, gold and silver constituted goods of Implats and whether IW
provided the service of blending metals or chemicals.
This debate was
aimed at defining the crossover between the goods or services of the
respective companies, the argument being that
IW transported such
products, being the same goods in which Implats traded.
[25]
Ms Vivier alleged the following with regard to Implats:
(i)
It conducts significant business in respect
of, inter alia, mining, refining and marketing platinum group metals
(“PGM’s”),
including platinum, palladium, rhodium,
ruthenium and associated base metals. It also mines, refines and
sells nickel, copper and
cobalt.
(ii)
Its primary operating unit and wholly owned
subsidiary is Impala Platinum Limited which accounts for 50% of its
total platinum production.
Impala Platinum Limited has operated
under its current name since 25 April 1968.  Prior to that,
Impala Platinum Limited operated
under the name Impala Prospecting
Company Limited.  Impala Platinum Limited, as trade mark
licensee and operating subsidiary
of Implats, has made extensive use
of Implats’ IMPALA name and trade marks since October 1963 (i.e
for over 50 years).
(iii)
It has made continuous use of its IMPALA
trade marks (identified below) in respect of various aspects of its
business and has, as
a result of such use, acquired a significant
reputation in respect of its business of mining, refining and selling
of PGM’s
and nickel, copper and cobalt.  The IMPALA trade
marks qualify as well-known trade marks for the purposes of the
Trade
Marks Act.
(iv
)
Its business also consists of mineral
processes, comprising concentrator- and smelter plants. At the
concentrator plants, the mined
ore is converted into a concentrate
and at the smelter plants the concentrate is smelted to produce a
matte prior to refining.
(v)
Its assets also consist of base metal and
precious metal refineries. Metals such as nickel, copper and cobalt
are refined at the
base metals refinery and metals such as platinum,
PGM’s and gold are refined at the precious metals refinery.
(vi)
Its subsidiary, Impala Refining Services
(Pty) Ltd uses its excess smelting and refining capacity to process
the concentrate and
matte produced by its various mine-to–market
group operations, as well as material purchased from third party
companies.
Impala Refining Services (Pty) also undertakes
toll–refining and recycling on behalf of other companies.
Typical products
of Impala Refining Services include flotation
concentrates, furnace matte, spent autocatalysis and selected base
metal residues
and other secondary materials.
(vii)
Finally Ms Vivier alleged that Implats has
also, for many years and on a daily basis, used the IMPALA trade
marks in respect of
transport services.  It has used vehicles
bearing the IMPALA trade mark in respect of such services.
[26]
The founding papers attached various examples of the use of the name
and the mark by Implats and in turn how IW uses “Impala”,

as opposed to “IMPALA”. It is, however, not in dispute on
the papers that the respective marks are similar or identical.
IW
disputes that it is deceivingly similar. Significantly, if not
confusingly, the name “IMPLATS” with “Distinctly

Platinum” underneath it appears in the many of the examples
attached in support of the founding papers. “IMPALA”
is
mostly referred to in the examples as “Member of the Implats
Group” in exactly the same style as “MARULA”,

“ZIMPLATS” and “AFPLATS”, as opposed to “the
Impala Group”. The website of IP is “www.implats.co.za”,

which indicates that “Impala” is an operational unit of
“Implats”. It appears that most email addresses
resemble
“alice.lourens@implats.co.za”.  These hybrid
features of corporate trade marking, evident from the founding
and
replying papers have to be taken into account in considering
“the likelihood of deception or confusion” in
relation to
the trade of Implats. It appears to weigh in favour of IW’s
position with regard to the absence or watering down
of such
likelihood. Additional considerations are evaluated specifically
below.
[27]
IW, according to its answering affidavit:
(i)
is a South African company which conducts
business in South Africa under the trading style IMPALA AFRICA and/or
IMPALA WAREHOUSING
AND LOGISTICS.
(ii)
has a Dutch holding company, Trafigura
Beheer BV (“Trafigura”). Trafigura is a global commodity
and logistics house
which trades in various products, including crude
oil, petroleum products, non-ferrous concentrates (such as copper
concentrates),
refined metals and bulk commodities (such as coal).
Insofar as metals are concerned, Trafigura trades primarily in base
metals
or industrial metals such as copper, lead, zinc, nickel and
aluminium. Trafigura provides logistics, warehousing and
transportation
services through its “Impala subsidiaries”
(including IW).
(iii)
specialises in the storage and
transportation of bulk commodities and in the logistical operations
that relate thereto. On its website,
IW describes itself as a global
warehousing and logistics company, specialising in the transportation
and storage of metals, minerals
and coal. IW commenced trading in
2010, albeit under a different name, being CONGO FREIGHT. It
apparently rebranded to IMPALA AFRICA
and IMPALA WAREHOUSING during
2012.
(iv)
the persons who are interested in the
services of the Impala companies, including IW, are those engaged in
the business of mining,
trading and processing non-ferrous
concentrates, refined metals, iron ore, coal and other bulk
commodities and that it is the bulk
commodities supply chain
worldwide that is of interest to the Impala companies and their
customers.
(v)
the companies in the Trafigura group named
Impala currently provide logistics, storage and transportation
facilities for bulk commodities
in Asia, Europe and North and South
America and the customers for these commodities are, in general,
mining operations.
(vi)
although it does not yet provide services
for producers of bulk commodities such as iron ore, coal, bauxite and
alumina (or similar
commodities) in South Africa, it has an interest
in doing so in the future.
(vii)
currently the activities of IW (which are
administered in Johannesburg) are centred on the mines in the
Democratic Republic of Congo
(“DRC”) and Zambia.
(viii)
since 2006, Trafigura and subsequently IW
have been involved in improving the logistics, transportation and
infrastructure for the
movement of bulk concentrates and refined
metals from the mines in the DRC and Zambia to ports in South Africa
where the commodities
are transhipped to the ultimate buyers located
in various parts of the world.
(ix)
it has been instrumental in the improvement
of the rail network from the mines in the DRC and Zambia to the ports
in South Africa
and has established modern loading and handling
facilities for the purposes of transporting in bulk from the various
mines.
(x)
its expertise in Africa specifically
relates to the logistics of, inter alia, copper and cobalt exports
and the handling of cobalt,
copper and nickel.
[28]
IW contends that the business of Implats is limited to the mining,
refining and marketing of PGM’s and concedes a reputation
in
the trade marks IMPALA and IMPALA PLATINUM in relation to that
business.
[29]
According to IW, its business in South Africa constitutes the
rendering of logistical, storage and transportation services
in
relation to bulk concentrates and refined metals emanating from mines
in the DRC and Zambia.
[30]
Insofar as IMPALA PLATINUM, on the one hand, and IMPALA AFRICA and
IMPALA WAREHOUSING AND LOGISTICS, on the other hand, are
concerned,
there appears to be widespread use of the mark “IMPALA”
in various industries.
[31]
It was not disputed by Implats that there are many registrations for
IMPALA in various of the 45 classes, suggesting that the
mark has
been registered for a wide variety of goods and services.
[32]
IW attached to its papers extracts from telephone directories
indicating a number of businesses in various industries using
the
mark IMPALA.
[33]
The descriptive words used with Impala often indicate the kind of
business concerned such as Impala Fishing and Impala Scrap
Metal.
[34]
IW argued that these descriptive terms serve to distinguish one
Impala entity from another.  Implats confirmed this in
response
to evidence of the number of registered corporate entities
incorporating the mark IMPALA. Ms Vivier stated ‘...many
of
these entities are clearly distinguishable from the Applicant and can
be disregarded’.  Mr Morley SC (ably assisted
by Ms
Southwood) argued that this can only be on the basis of the
descriptive words in the corporate names.
[35]
Broadly speaking, it is apparent that PLATINUM, on the one hand, and
AFRICA and WAREHOUSING AND LOGISTICS, on the other hand,
serve to
distinguish between each party’s marks and thus each party’s
goods and services.
[36]
Mr Ginsburg SC, (ably assisted by Ms Kilmartin) argued that although
the goods and services offered by Implats and IW are not
identical, a
common field of activity is not a requirement for the relief sought
by Implats.  They argued, however, that the
parties do operate
in common fields of activity in relation to warehousing and
transportation in nickel and copper and this increases
the likelihood
of deception and confusion. After nearly three days of argument, this
appears to be the high water mark of the alleged
crossover between
the two companies.
[37]
It is clear that IW is also transporting and warehousing some of the
goods that Implats mines (copper and nickel) to and from,
inter alia,
customers or potential customers of Implats or persons interested in
Implats’ goods or services, or persons familiar
with Implats.
[38]
On behalf of Implats it was argued that it is clear from the
instances of confusion that have occurred, that the respective
fields
of activity are not so far removed from each other as to negate any
likelihood of confusion.  Mr Ginsburg SC urged
that a likelihood
of confusion is a genuine concern on the part of Implats, because IW,
through its activities, clearly does interact
with persons interested
in Implats’ goods or services or persons familiar with Implats
and this has led to instances of actual
confusion. This submission
will be tested below.
F:
THE LIKELIHOOD OF DECEPTION OR CONFUSION
[39]
As already indicated, during argument counsel for both parties
submitted that the fundamental issue in dispute, as far as trade
mark
infringement is concerned, is whether the parties’ respective
goods and services are sufficiently similar that, in use
of the
IMPALA trade mark by both parties, there exists the likelihood of
deception and/or confusion. This is also the key issue
that Implats
had to establish in relation to passing-off. Although other arguments
have been raised, it appears that this issue
could be decisive in
respect of both grounds for relief relied upon by Implats. Two other
considerations appear to be of ancillary
relevance, if not
destructive of the relief sought by Implats. Firstly the common use
of “IMPALA” as a registered trade
mark, coupled with
distinctive additional words, and secondly the significance of the
failure by Implats not to register its trade
marks in class 39
“Transport; packaging and storage of goods; travel
arrangements.”. Save for the latter element in
class 39, it
appears to be exactly the field of trade of IW, leaving it free to
register a trade mark in that field, alternatively
precluding Implats
complaining because “the fact that it did not choose to
register in any of the classes [in which IW operates]
is
telling.”
[18]
. The
distinction between goods and services in the 45 classes is a
substantive guideline, providing prima facie evidence against

similarity arguments. The four notional components of trade differ
materially
[19]
. On behalf of
IW it was argued that the evidence in support of the relief should be
disregarded on various technical grounds.
[40]
It is trite that ‘[m]otion proceedings, unless concerned with
interim relief, are all about the resolution of legal issues
based on
common cause facts. Unless the circumstances are special they cannot
be used to resolve factual issues because they are
not designed to
determine probabilities. It is well established under the
Plascon-Evans rule that where in motion proceedings disputes
of fact
arise on the affidavits, a final order can be granted only if the
facts averred in the applicant's (Mr Zuma's) affidavits,
which have
been admitted by the respondent (the NDPP), together with the facts
alleged by the latter, justify such order. It may
be different if the
respondent's version consists of bald or uncreditworthy denials,
raises fictitious disputes of fact, is palpably
implausible,
far-fetched or so clearly untenable that the court is justified in
rejecting them merely on the papers”.
[20]
’
[41]
Persuasive arguments tempted the dismissal of the application on the
basis of flagrant disregard for the principles in Swissborough

Diamond Mines (Pty) Ltd v Govt of the RSA
1999 (2) SA 279
(T) at 324F
– 325C. In Minister of Land Affairs & Agriculture v D &
F Wevell Trust
2008 (2) SA 184
(SCA) Cloete JA held at paragraph
[43]:
“
It
is not proper for a party in motion proceedings to base an argument
on passages in documents which have been annexed to the papers
when
the conclusions sought to be drawn from such passages have not been
canvassed in the affidavits. The reason is manifest -
the other party
may well be prejudiced because evidence may have been available to it
to refute the new case on the facts. The
position is worse where the
arguments are advanced for the first time on appeal. In motion
proceedings, the affidavits constitute
both the pleadings and
the evidence: Transnet Ltd v Rubenstein
[2006 (1) SA 591
(SCA) [also
reported at
[2005] 3 All SA 425
(SCA) - Eds] para 28] and the issues
and averments in support of the parties' cases should appear clearly
therefrom. A party cannot
be expected to trawl through lengthy
annexures to the opponent's affidavit and to speculate on the
possible relevance of facts
therein contained. Trial by ambush cannot
be permitted.”
[42]
Implats resigned itself to attaching to the 18 page founding
affidavit various documents “merely by way of example of
the
Applicant’s use of its IMPALA name and trade marks…”
instead of pointing out specifically how and in what
manner the trade
mark is used as a mark of origin in relation to the specific goods
and services contended for. The documents attached
contain various
other marks, in particular repeatedly “IMPLATS Distinctly
Platinum”, without any attempt to explain
why the latter is not
the true mark of distinction in relation to the goods and services in
question, as opposed to “IMPALA”.
[43]
In what follows, however, an attempt will nonetheless be made to
determine the key issue as the decisive feature (separate
from the
considerations adverse to Implats’ application, already
listed), as best as possible, namely whether there exists
the
likelihood of deception and/or confusion between the respective
goods/services. This would hopefully pragmatically serve to
avoid a
resurrection of the same litigation on improved papers due to
dismissal on technical grounds.
[44]
In relation to the similarity debate counsel for both parties, in
thorough and comprehensive written heads of argument referred
to New
Media Publishing (Pty) Ltd v Eating Out Services CC and Another (“the
Eating Out case”)
[21]
and of Mettenheimer and Another v Zonquasdrif Vineyards CC and Others
2014 (2) SA 204
(SCA) (“the Zonquasdrif case”).
[45]
In the Eating Out case the court had to determine whether the use of
the trade mark “EATING OUT” in relation to
an electronic
restaurant guide infringed the applicant’s registered trade
mark “EAT OUT GUIDE” in class 16 in
respect of, inter
alia, magazines.  There the court accepted that the combined
effect of the degree of resemblance between
the marks and goods or
services must be taken into account:
[22]
“
There
is, it seems to me, an interdependence between the two legs of the
inquiry: the less the similarity between the respective
goods or
services of the parties, the greater will be the degree of
resemblance required between their respective marks before
it can be
said that there is a likelihood of deception or confusion in the use
of the allegedly offending mark, and vice versa.
Of
course, if the respective goods or services of the parties are so
dissimilar to each other that there is no likelihood of deception
or
confusion, the use by the respondent even of a mark which is
identical to the applicant’s registered mark will not
constitute
an infringement
; also, if
the two marks are sufficiently dissimilar to each other no amount of
similarity between the respective goods or services
of the parties
will suffice to bring about an infringement.  I respectfully
agree with the learned authors of Webster and
Page, South African Law
of Trade marks, 4
th
Edition, paragraph 12.23 (p 12-41), where they say, with reference to
sec. 34(1)(b) of the Act:
[O]n
a proper interpretation of the South African section the degree of
resemblance between the marks and the degree of resemblance
between
the goods or services must be such that their combined effect will be
to produce a likelihood of deception or confusion
when that mark
used on those goods or services.” (emphasis added)
[46]
Both parties nonetheless also referred to and argued with reference
to the judgments of the Chancery Division in British Sugar
plc v
James Robertson & Sons Ltd
[1996] RPC 281
(Ch) at 296 – 297
and of the Supreme Court of Appeal, albeit in a context different
from s 34(1)(b), in Danco Clothing (Pty)
Ltd v Nu-Care Marketing
Sales and Promotions (Pty) Ltd and Another
[1991] ZASCA 121
;
1991 (4) SA 850
(A) at
860F – 861E, also cited with approval in Zonquasdrif supra,
where it concluded per Brand JA :
“
Included
amongst the considerations proposed in these cases are: (a) the uses
of the respective goods; (b) the users of the respective
goods; (c)
the physical nature of the goods; and (d) the respective trade
channels through which the goods reach the market. It
is clear that
the list of proposed considerations was never intended to be
exhaustive. Yet they serve to stimulate and guide the
required
process of reasoning in the enquiry as to the likelihood of
confusion.”
[47]
In passing, the 18 pages of founding papers, other than a bold
statement, failed to deal in any level of detail with evidence
in
support of the four requirements or any comparison between the
respective good/services of the two enterprises.
[23]
The allegation was made that “the goods overlap”,
disregarding the fact that IW evidently provide services in
class 39
for which Implats failed to register, as opposed to trading in goods
related to “distinctly platinum”. A bold
allegation was
made that the services of interest are similar or functionally
similar. The founding papers failed to set out or
establish the exact
nature of the “services” provided by Implats under the
banner of the impugned trade marks. In addition
no allegations appear
from the founding papers in relation to four considerations listed in
the British Sugar case and the Danco
Clothing case as they apply to
“services” as opposed to “goods”. Again, in
an attempt to pragmatically
deal with the real issues, without
downplaying the deficiencies in the founding papers, the extent to
which similar goods or services
are involved will be further analysed
in what follows.
[48]
In the Zonquasdrif case the court had to determine whether wine and
wine grapes constituted similar goods or services for purposes
of s
34(1)(b), in particular whether there existed the likelihood of
deception or confusion.
[49]
As was the case in Zonquasdrif, in the present case it is common
cause that IW used its impugned mark in the course of trade
and that
it had not been authorised by Implats to do so. What remained was the
enquiry into the issue of confusing similarity.
Unlike s 34(1)(a),
the provisions of s 34(1)(b) do not require that the offending mark
be used in relation to goods in the class
for which the trademark had
been registered. It contemplates two elements, namely, (a) a mark
identical or similar to the trademark
used in relation (b) to goods
which are so similar to those for which it had been registered, that
it gives rise to a likelihood
of deception or confusion. In
Zonquasdrif supra Brand JA confirmed, with regard to the relationship
between these two elements,
the sentiments expressed by Thring J in
the Eating Out case at 394C – F, already quoted above.
[50]
In Zonquasdrif the dispute “boil[ed] down…to the
similarity of the goods”. In this case, however, it appears
to
be a battle between goods and services of Implats, but merely
services of IW. Because of the elevation of that issue, the court
in
Zonquasdrif distilled the following from the above quoted principles:
“
Can
it be said that, having regard to the sameness of the two marks, the
similarity between the goods in respect of which the appellants'
mark
is registered (wine) and the goods in which respondent trades (wine
grapes) is such that confusion or deception is the probable
result?
The deception and confusion we are talking about, of course, must
relate to the origin of the respective goods. So, is
it likely that
the notional purchaser may be confused to think that these goods have
the same origin?”
[51]
In the present matter the debate extends somewhat beyond a mere
comparison of goods. It is very much in dispute whether IW
trades in
any goods in relation to the impugned trade mark, as opposed to
merely offering services in relation to similar goods.
The question
whether Implats provided any bona fide services in the course of
trade, apart from internal use, is equally in dispute.
[52]
Before one can consider the goods or services in question, it has to
be established that the unauthorised use takes place “in
the
course of trade in relation to goods or services…”. In
this context a number of questions appear to be equally
relevant:
What are the consequences if it is established that the trade (the
business activities) of the alleged infringer is not
in relation to
goods to which the trade mark applies or for which it is registered.
For example the alleged infringer simply does
not buy or sell or
trade in the goods bought or sold by under the trade mark. What if no
services are rendered under the trade
mark, least of all in relation
to services performed by the alleged infringer.  In the present
instance the nature of the
trade in which the respective parties are
involved is entirely different, albeit indirectly in the mining and
related industries.
In essence Implats extracts goods from mines and
processes it to be sold. In order to do so it has a massive
infrastructure involving
thousands of employees, transport vehicles,
land, structures, buildings and housing for its employees. Much like
any large corporate
entity. The only distinguishing feature in such
enterprises relates to the end product which is sold or the service
rendered to
the notional client. In short, the main source of revenue
of Implats relates to the sale of metals and minerals.
[53]
IW generates revenue, predominantly from the provision of services,
not the sale of goods. The end users of the respective
companies
engage with them for entirely different reasons. The one company
focuses on products, albeit similar to the products
in respect of
which the other offers a service. The other company offers services,
which the other company does not offer to the
public at all. The
respective trades of the companies differ substantially in their
uses, their users and the trade channels through
which they are
marketed. Since the goods sold by Implats are not subjected to any
form of service, they are merely sold to users
or traders of the
goods. The services offered by IW, on the other hand, are marketed,
advertised and sold to entities such as Implats.
The prospects of IW
selling Implats’ goods or Implats offering IW’s services
can therefore safely be excluded as non-existent.
[54]
In Zonquasdrif supra, the appellants' argument as to why, despite
such distinct differences between the two products [in this
case
goods as opposed to services], they have succeeded in showing a
likelihood of confusion, went along the following lines. “Wine

grapes constitute the raw material from which wine is made. Hence the
two
products are associated
with one another. It is known in
the industry that while some farms sell their wine grapes to
wineries, others make their own wine
from grapes produced on the farm
or purchased from other farms. There is therefore no clear
delineation between farms producing
and selling grapes and those
selling both wine and grapes. Although the appellants do not make
their own wine and only sell their
Zonquasdrift wine in Germany, they
are entitled to sell their wine in South Africa as well. What must
also be postulated as part
of the appellants' notional use is that
they may integrate their grape-growing and wine-making activities on
the farm Zonquasdrift.
In these circumstances, so the appellants'
argument went, the notional member of the public may very well be
confused in thinking
that the appellants' wine and the respondent's
grapes originate from the same farm.”
[55]
Disregarding adverse features to Implats’ application already
identified, and for purposes of this exercise also the
defects in the
founding papers, the manner in which the Supreme Court of Appeal
evaluated the same argument serves as matrix for
evaluating the
approach adopted by Implats.
[56]
Implats’ argument, it seems, draws no distinction between the
notional users (purchasers) of the respective goods (platinum
related
products) and services (warehousing, transport and logistics) (in
Zonquasdrif supra, “of grapes, on the one hand,
and the
notional purchasers of wine, on the other”). In casu, the sale
and marketing of metal and related products compared
to the transport
and storage thereof. Brand JA emphasised the distinct differences
between the two products and concluded that
logical reasoning does
not allow “this conflation”. That, one would have thought
would have been the end of the debate.
After all, the issues in the
Zonquasdrif case involved virtually the same products, definitely in
the same industry. The case put
up by Implats does not even reach
that threshold of similarity.
[57]
To iterate, the present case primarily involves goods on the one hand
and services on the other. A significant distinction
to begin with.
If that distinction is not enough it would serve some purpose to
apply the reasoning of the Supreme Court of Appeal
in order to test
the consequences of comparing the opposing commodities. In reaching
its conclusion Brand JA emphasised the suitability
of one product
(wine grapes) for wine-making only and that it was exclusively sold
to particular users. The court considered the
manner in which users
made their purchase decision, which did not include any reference to
the trade name of the seller of the
goods, as opposed to various
other relevant considerations evaluated by expert buyers/individual
representing buyers, who are unlikely
to be confused by a trade mark.
Despite its reliance in argument on Zonquasdrif, Implats presented no
evidence in its founding
papers on this process in relation to the
users of its product (let alone any services to outside users).
[58]
Brand AJ ultimately concluded that the only enquiry worthy of pursuit
related to the likelihood of notional purchasers of the
applicant’s
goods believing that it originates from the same farm as the
respondent's goods. The first question in the present
matter is
whether the notional purchaser would be aware that IW’s
services are sold under the applicant’s trade name.
Brand JA
considered the manner in which the respondent marketed its goods
(compared here to the services of IW). The simple reality
of the
present matter is that Implats does not market the services offered
by IW and IW does not market the goods sold by Implats.
Much like the
Zonquasdrif case, in order for the notional purchaser to be confused
in thinking that Implats’ goods/services
come from the same
company as IW services, such individual must infer that (a) there is
an entity named Impala that offers the
IW services or the other way
round ; (b) that IW is owned by the same entity as Implats or the
other way round; and (c) that the
services are offered from the same
source. There was no or insufficient evidence on these essential
aspects in the founding papers
and thus no reason to assume that the
notional purchaser will make all these inferences just by looking at
the similar or identical
trademarks on the trucks and corporate
material of the respective companies, taking into account the
specialised nature of the
goods compared to the services.
[59]
Implats failed to establish that the impunged trademarks are
associated with the bona fide provision of services in warehousing,

transport and logistics, even if the trade marks are the same. No
evidence was presented that the notional purchaser of the IW
services
would have inferred that it belongs to or sources from Implats (the
isolated examples of confusion on exchange control
level are
certainly far removed from the notional purchaser concept). Implats
failed to establish that the notional buyer of goods
is likely to be
confused, or that the notional user of IW’s services would fall
in this trap. After all, trade marks apply
to the dramatis personae
in the relevant trade, not those actors who get lost on the wrong
stage or spectators who land up in the
wrong audience by accident, as
did the individuals in Implats’ specific examples of alleged
confusion. The fact that Implats
mines and processes unlabelled
products from multiple sources, as opposed to offering services in a
similar fashion, also counts
against it in the exercise of judicial
discretion in favour of Implats, limited as it may be suggested. IW
does not market or sell
any goods, let alone goods traded in by
Implats.
[60]
Implats’ further argument resting on alleged incidents of
actual confusion should thus equally fail. As in the Zonquasdrif
case
“the confusion demonstrated by these incidents…probably
arose from the similarity between the [names as opposed
to the use of
trade marks]. It therefore had nothing to do with confusion created
by two similar marks.”
[61]
In conclusion on this substantive decisive issue, despite a general
allegation in the founding papers that both parties operate
in the
same industry, it is apparent that the essence of their respective
trades (goods and services) are different. Little if
any evidence
suggests that IW trades in any goods, let alone the goods in which
Implats trades. On the question of services provided
by Implats, the
position is the same. In general terms Implats can be referred to as
being in the business of mining, predominantly
platinum (as its name
depicts) and IW as a business specialising in transport, warehousing
and logistics (as its name too depicts).
[62]
In addition to the above, the essential argument by IW is thus
correct that Implats failed to establish use of its trade marks

beyond the sphere of mining and selling platinum related products
(which precludes any trade mark entitlement beyond that), whereas
the
goods or services of the respondent were so different to it, that
IW’s trade did not infringe or constitute passing-off.
This
approach is in line with the marked trend to limit anti-competitive
practices.
[24]
[63]
Implats altogether failed to establish the use of its trade mark
“IMPALA PLATINUM” by IW. The application should
therefore
be dismissed with costs, including the costs of two counsel,
justified by the complexity and volume of the main application.
G:
THE COUNTER-APPLICATION FOR EXPUNGEMENT
[64]
As indicated, the counter-application by IW is based upon the
provisions of sections 27(1)(a) and/or (b) read with section
24(1) of
the Act. Any interested person has locus standi to apply for
rectification of the Trade Marks Register under those sections.

Interested persons are those who are in some way or other
substantially interested in having a mark removed from the Register,

including all persons who would be substantially damaged if the mark
remained, and all trade rivals over whom an advantage was
gained by a
rival trader who is getting the benefit of a registered mark to which
he is not entitled, as well as an alleged infringer
of a mark
[25]
.
[65]
In order to be successful with an application in terms of section
27(1)(a), IW has to establish that Implats registered its
trade mark
without any bona fide intention to use the trade mark in relation to
the goods for which the trade mark is registered
and that there has,
in fact, been no bona fide use of the trade mark in relation to those
goods up to three months prior to the
date of the application to
expunge.
[66]
The registrations against which relief is sought are all the
registrations relied upon by Implats in its application to interdict

IW from infringing these registrations.  As such, IW is an
interested person.
[67]
IW bears the onus for establishing the invalidity of the
registrations
[26]
.
[68]
However in the case of applications brought in terms of section 27,
the trade mark proprietor bears the onus of proving relevant
use
[27]
.
[69]
In relation to the relief sought under section 27(1)(a), IW bears the
onus of showing that at the time when it made its application
[28]
,
Implats did not have the relevant bona fide intention to use the mark
in relation to the goods or services for which registration
was
obtained.
[70]
In order to defeat the application under section 27(1)(a) of the Act,
Implats had to show that up to a date three months
[29]
before the date of this counter application
[30]
,
Implats or a person permitted by it has used its trade mark in a bona
fide manner in relation to the goods or services for which
the mark
has been registered.
[71]
In order to defeat the application under section 27(1)(b) of the Act,
Implats had to show that since the issue of the registration

certificate and in the five year period up to a date three months
before the date of this counter application, Implats or a person

permitted by it has used its trade mark in a bona fide manner in
relation to the goods or services for which the mark has been

registered.
[72]
IW’s application for expungement was filed on 2 August 2013
and, accordingly, the relevant five year period within which
IMPALA
WAREHOUSING must prove non-use of the trade mark IMPALA in order to
obtain expungement of the trade mark is 2 May 2008 to
2 May 2013.
This was not in dispute.
[73]
IW alleges with reference to examples attached to the founding papers
that Implats was at all material times incorporated in
order to mine
platinum and PGM’s and at no stage has used IMPALA or IMPALA
PLATINUM in relation to any other goods or services.
Furthermore,
IW claims that Implats has not conducted any other business activity
in its history of some 45 years and accordingly
never intended to use
the IMPALA trade mark for any other goods or services.
[74]
Implats alleged in its opposition to the expungment application that
it has at all times had a bona fide intention to use its
IMPALA and
IMPALA PLATINUM trade marks and has, in fact, used those trade marks,
particularly in the relevant five year period
referred to previously.
[75]
Implats also argued that its trade mark registrations are, by virtue
of the provisions, of
section 27(5)
of the
Trade Marks Act not
vulnerable
to be expunged on the basis of non-use.
[76]
The issues argued in relation to the expungement were thus the
following:
(i)
whether, at the time when it applied for
registration of its trade marks, Implats had a bona fide intention to
use its marks in
relation to the goods and services for which the
marks have been registered;
(ii)
whether Implats or its licensee has made
relevant trade mark use of its marks in relation to the goods and
services for which the
marks have been registered in the period prior
to 2 May 2013;
(iii)
whether Implats or its licensee has made
bona fide trade mark use of its marks in relation to the goods and
services for which the
marks have been registered in the period 2 May
2008 to 2 May 2013.
[77]
Bona fide use in this context means use by the proprietor or licensee
in connection with the particular goods or services for
which the
mark has been registered with the intention of protecting,
facilitating and furthering the trading in such goods/services
[31]
.
[78]
Genuine use of a mark entails use of the mark on the market for the
goods and services protected by that mark and not just
internal use
by the undertaking concerned
[32]
.
[79]
Non-use for long periods of time such as ten, twenty or even
twenty-five years, is obviously highly relevant to the question
of
the bona fide intention to use the trade mark and the absence of a
satisfactory explanation would justify an inference adverse
to the
proprietor of the trade mark
[33]
.
[80]
Implats then had to show that it ‘has an intention to deal, in
certain goods or descriptions of goods...a real intention
to use, not
a mere problematical intention, not an uncertain or indeterminate
possibility, but a resolve or settled purpose which
has been reached
at the time when the mark is to be registered’
[34]
.
[82]
IW correctly argued that section 27(5) of the Act does not avail a
South African company, such as Implats.
[35]
[83]
Furthermore, in order to obtain the protection afforded by section
35(1), Implats had to prove that the marks IMPALA and IMPALA
PLATINUM
are well-known in relation to particular goods and services.
This is clear from a dictum in the McDonalds case which
identified
the relevant market in order to indicate the level of awareness in
the public mind.  A mark is well-known in the
Republic if it is
well-known to persons interested in the goods or services to which
the mark relates
[36]
.
[84]
Only in relation to PGM’s does IW concede that Implats’
trade marks IMPALA and IMPALA PLATINUM are well-known.
[85]
Implats has failed to establish that the marks IMPALA and IMPALA
PLATINUM are well-known in relation to any other goods and
services
covered by Implats’ registrations.
[86]
In the premises, as an additional reason, Implats cannot rely on the
provisions of section 27(5) of the Act.
[87]
Implats also alleges that the IMPALA trade mark registrations are all
inter-associated.  Implats argues that its evidence
of use
(presumably in relation to a particular registration) should be
regarded as the use of the trade mark in relation to the
other
registrations because the trade marks are identical and the goods and
services are closely associated with each other.
[88]
The court exercises a discretion when it employs the provisions of
section 31(1).
[89]
In Distillers, the court held that in exercising its discretion, it
must have regard to how close the trade marks are associated
and
resemble one another and the extent and nature of the equivalent
use.  The remoter the association, or the lesser the

resemblance, or the less satisfactory the equivalent use, the more
disposed the Court should be to ignore the association or lean

against accepting the use of the associated trade mark as being the
required equivalent use
[37]
.
[90]
As indicated above, Implats has furnished sparse if any evidence of
relevant use in relation to the registrations or goods
and services
sought to be removed.
[91]
As such, it is unclear which evidence of use must be considered in
relation to the employment of section 31(1) of the Act.
There appears
to be no basis for the court to exercise its discretion in terms of
section 31(1) of the Act.
[92]
The court has a discretion as to whether to remove a registration or
amend a specification
[38]
.
[93]
But, it is only in exceptional cases that the discretion is exercised
to allow a trade mark registration which has been shown
to be invalid
to remain on the Register
[39]
since the purity of the Register and the public interest are of
greater importance than the rights of the parties inter se
[40]
.
[94]
Implats claims that because it will be able to restrain IW’s
use of IMPALA on the basis of passing-off, this constitutes

exceptional circumstances justifying the court exercising its
discretion in Implats’ favour.
[95]
From the reasons set out above it is clear that Implats’ claim
based on passing-off cannot be granted. As such, there
is no basis
for the court to exercise its discretion in favour of Implats in
relation to the expungement issues.
[96]
All of the above considerations have been dealt with in argument and
considered in exercising the discretion in relation to
the
expungement orders arrived at below, in particular the principles in
Foschini Retail Group (Pty) Ltd v Coetzee dealt with earlier,
from
which it appears that the registrations are for most of them
substantially wider than justified by relevant use contemplated
in
both sub-sections. Implats have provided limited and isolated
examples of use in respect of the various classes relating to

products and in relation to “treatment of materials”. In
relation to other classes in “services” (registered
in
classes 36 and 42) it simply failed to show a reputation in such
services or bona fide use in trade where such services are
presented
to the public as having its source associated with the trade marks.
Save for the latter classes, Implats has been given
the benefit of
the doubt in the formulation of the orders made below in which each
class has to be amended. Having been substantially
successful, costs
in the counter-application should follow the result, including the
cost of two counsel, for the same reasons
as the main application.
(i)
Class
1:
[97]
IW alleges that Implats has failed to make use of the mark in
relation to any of the goods for which the mark is registered
in
class 1, namely ‘chemicals used in industry, science and
photography, as well as in agriculture, horticulture and forestry;

unprocessed artificial resins, unprocessed plastics; manures; fire
extinguishing compositions; tempering and soldering preparations;

chemical substances for preserving foodstuffs; tanning substances;
adhesives used in industry’.
[98]
IW alleges that since application was made for the registration of
the mark in 1998, more than 15 years has elapsed without
relevant
use.
[99]
Implats alleges use of the trade mark IMPALA in relation to a variety
of goods in this class such as ammonium sulphate and
an ABS plant,
sulphuric acid, chloride, hydrochloric acid, iridium salt, platinum
group metals chemicals and palladium resin and
attaches a number of
documents in support of the allegation. IW denies that there has been
such use.
[100]
The documents attached by Implats do not fully support use of the
trade mark in relation to all the goods referred to, namely,

chloride, hydrochloric acid, iridium salt, platinum group metals
chemicals and palladium resin.
[101]
On the probabilities of this case, however, actual or bona fide use
in respect of ammonium sulphate, ABS, sulphuric acid,
platinum group
metals chemicals and palladium resin appear to be likely.
[102]
In the premises this trade mark registration in class 1 is liable to
be amended to reflect “ammonium sulphate, ABS,
sulphuric acid,
platinum group metals chemicals and palladium resin used in industry,
science and photography as well as in agriculture,
horticulture and
forestry”.
(ii)
Class
6
[103]
IW alleges that on the basis of the founding evidence in the
application, Implats has failed to make use of the mark in relation

to any of the goods for which the mark is registered in class 6,
namely ‘common metals and their alloys; metal building
materials; transportable buildings of metal; materials of metal for
railway tracks; non-electric cables and wires of common metal;

ironmongery; small items of metal hardware; pipes and tubes of metal;
safes; goods of common metal not included in other classes;
ores’.
[104]
The outer limit of the allegations by Implats in relation to the
listed goods appear to be the provision of services in relation

thereto, as opposed to trading in such goods. It would not justify
the exclusion of similar services by IW or any other entity,
merely
on the basis that Implats provides services in relation to goods
described in class 6 that are generally available in the
trade.
Implats alleges, however, that it is in the business of mining ore
containing PGM’s, nickel ore, gold ore as well
as ore
containing cobalt, copper ore, silver ore, sulphur, sand
(manufactured) from waste rocks and iron ore and chrome ore from

various operating mines.  It states further that it is has a
mining right which includes metals such as nickel, cobalt, iron,

copper and chrome.
[105]
The registration in class 6 should be amended to include only
“platinum group metals, nickel, gold cobalt, copper, silver,

sulphur, iron and chrome and their alloys”.
(iii)
Classes
36 and 42:
[106]
On the basis of the evidence in the founding affidavit, IW alleges
that there has been no use of the trade mark IMPALA in
relation to
the services in class 36 for which the mark is registered, namely
‘insurance; financial affairs; monetary affairs;
real estate
affairs’.
[107]
IW alleges that, based on Implats’ founding evidence, Implats
has not used its trade mark IMPALA in relation to the
relevant
services in class 42, namely ‘providing of food and drink;
temporary accommodation; medical, hygienic and beauty
care;
veterinary and agricultural services; legal services scientific and
industrial research; computer programming; services that
cannot be
placed in other classes’.
[108]
The actual use alleged by Implats in respect of classes 36 and 42 is
not genuine use as the services are offered internally
to Implats’
employees and their dependants.
[41]
[109]
Implats has failed to show relevant use of the trade mark in relation
to any of the services for which the mark has been registered.
[110]
In the premises, the registrations in class 36 and 42 should be
removed.
(iv)
Class 40:
[111]
IW challenged the registration for the ‘treatment of materials’
in class 40.
[112]
IW avers that Implats has failed to use the IMPALA trade mark in
relation to the treatment of any materials other than the
refining of
platinum and platinum group metals.
[113]
IW contended that such non-use has been for a period of about 15
years since application for registration of the mark was
made in
1998.
[114]
As such it argued that there is a reasonable inference that the mark
was registered without the requisite intention to use.
[115]
In the premises, IW agues, that the specification should be amended
to read ‘the refining of platinum and platinum group
metals’.
[116]
Implats alleges, however, that it offers a wide variety of services -
it enters into metal purchase agreements or toll refining
agreements.
It is unclear how these agreements relate to the treatment of
materials, but the benefit of the doubt should weigh
in its favour.
Ms Vivier states further that its products include floatation
concentrates, furnace matte, spent auto catalysts
for recycling and
selected base metal residues and other secondary materials. Implats
failed to state how this relates to the treatment
of specific
materials beyond the limitation proposed by IW.
[117]
Implats also indicated that it converts mined ore into concentrates
and smelts the concentrate to produce a matte prior to
refining.
Implats failed to state how this relates to the treatment of
materials.
[118]
Ms Vivier indicates further that Implats refines both base metal
(nickel, copper and cobalt) and precious metals (namely platinum

group metals and gold).
[119]
IW denies these allegations.
[120]
Implats also attaches extracts from Implats’ annual reports, a
fact sheet and details of its patent registrations in
support of
these allegations relating to refining of the said products and
states that this is clear evidence that it uses its
trade mark in
respect of a variety of services in class 40.
[121]
In the premises, the registration in class 40 should be amended to
read ‘the refining of platinum and platinum group
metals and
nickel, copper and cobalt’.
Class
14:
[122]
The registration 2008/28896 in class 14 is for ‘precious metals
and their alloys and goods and precious metals or coated
therewith,
not included in other classes; jewellery, precious stones;
horological and chronometric instruments’.
[123]
Implats avers that it uses the trade mark IMPALA PLATINUM in relation
to PGM’S and their alloys, as is evident from
the founding
affidavit.
[124]
In support of the allegation that it sells precious metals (as
opposed to proof that Implats uses the trade mark IMPALA PLATINUM
in
relation to precious metals), Implats relies on photographs of
ingots, briquettes and other formats, invoices for the sale of
silver
and gold and a mining right for PGM’s, nickel, gold, silver and
copper.
[125]
As such, the specification of the registration in class 14 should be
amended to refer to ‘platinum and platinum group
metals,
nickel, gold, silver and copper”.
H:
THE ORDER
[126]
In the result the following order is made:
1.
The application is dismissed;
2.
The applicant in the main application is
directed to pay the first respondent’s costs in the
application, such costs to include
the costs consequent upon the
employment of two counsel;
3.
The second respondent in the
counter-application is directed to amend the Register of Trade Marks
by:
3.1
amending trade mark registration number
98/08322 IMPALA in class 1 to be amended to reflect “ammonium
sulphate, ABS, sulphuric
acid, platinum group metals chemicals and
palladium resin used in industry, science and photography as well as
in agriculture,
horticulture and forestry”;
3.2
amending trade mark registration number
98/08323 IMPALA in class 6 to include only “platinum group
metals, nickel, gold cobalt,
copper, silver, sulphur, iron and chrome
and their alloys”;
3.3
removing trade mark registration number
98/08324 IMPALA in class 36;
3.4
amending the specification of trade mark
registration number 98/08325 IMPALA in class 40, to read ‘the
refining of platinum
and platinum group metals and nickel, copper and
cobalt’;
3.5
removing trade mark registration number
98/08326 IMPALA in class 42;
3.6
amending the specification of registration
number 2008/28896 IMPALA PLATINUM in class 14 to read “Platinum
and platinum group
metals falling within the class, nickel, gold,
silver, cobalt, copper”.
4.
The first respondent in the
counter-application is directed to pay the applicant in the counter
application’s costs, such
costs to include the costs consequent
upon the employment of two counsel.
L
J van Tonder AJ
Counsel
for the applicant: P Ginsburg SC
L
G Kilmartin
Attorneys
for the applicant: Adams & Adams
Counsel
for the first respondent: G E Morley SC F Southwood
Attorneys
for the first respondent: & Fisher
[1]
Adcock-Ingram
Products Ltd v
Beecham
SA (Pty) Ltd
(“the Adcock Ingram case”)
1977 (4) SA 434
at 436
H - 437 B; The
Jennifer
Williams
case
infra
,
at 418 H.
[2]
See s2(1)(xxiii) where a a trade mark is defined.
[3]
See
Beecham Group plc v Southern Transvaal Pharmaceutical Pricing Bureau
(Pty) Ltd1993
1 SA 546
(A) at 557F – 558I read with court
a
quo
in
1992 2 SA 213
(W) from 218 onwards.
[4]
See in general Verimark (Pty) Ltd v BMW AG
2007 6 SA 263
(SCA) par
[5] – [7].
[5]
See s2(3) and Abbot Laboratories v UAP Crop Care (Pty) Ltd1999
3 SA
624
(C)
[1999] 1 All SA 502
(C) at 512d-g; National Chemicals
Limited v Amblins (Chemicals) Ltd
(1940) 57 RPC 323
at 332;
and compare Société Monsavon l;Oreal v Coiffeur
Supplies Ltd
[1961] RPC 219
and Royal Baking Powder (Pty) Ltd v
Wollion Enterprises (Pty) Ltd (unreported) 1983 12. Use in relation
to services see Abdulhay
M Mayet Group (Pty) Ltd v Renasa Insurance
Co Ltd
1999 4 SA 1039
(T) at 1045I to 1046C.
[6]
Foschini
Retail Group (Pty) Ltd v Coetzee (A1/11) [2013] NGHC (18 January
2013), paragraphs [21] – [27], per A A LOUW J.
[7]
See definition s 2(1)(xxiii) of the Act and cf Abbot Laboratories v
UAP Crop Care (Pty) Ltd1999
3 SA 624
(C); Cadbury (Pty) Ltd v Beacon
Sweets & Chocolates (Pty) Ltd
2000- 2 SA 771
(SCA) 777H; Canon
Kabushiki Kaisha v Metro- Goldwyn-Mayer Inc
[1999] RPC 117
(ECJ)
133; Koninklijke Philips Electronics NV v Remington Consumer
Products Ltd
[2003] RPC 2
14 (ECJ) par 22; Glaxo Group v Dowelhurst
Ltd (No 2)
[2000] FSR 529
(ChD) 540 -541; Cowbell AG v ICS Holdings
(Pty) Ltd
2001 3 SA 941
(SCA) 948A; Beechham Group Plc v Triomed
(Pty) Ltd
2003 SA 639
(SCA) par [7] – [8]; AM Moolla Group
Limited and Others v The Gap Inc and Others
[2006] ZASCA 5
;
2006 4 SA 275
par [38] –
[40]; L’Oreal SA v Bellure NV
[2007] RPC 14
328 (ChD) par [97]
– [100]; Elleni Holdings BV v Sigla SA [2005] ETMR par [40];
Arsenal Football Club v Reed[2003] RPC
9.
[8]
Cf Société des Produits Nestlé SA v Cadbury
[2013] RPC 14
(ChD) par 20; Commercial Auto Glass (Pty) Ltd v BMW AG
2007 6 SA 637
(SCA) par [8] and Lubbe NO v Millenium Style 2006 6
241 SCA par [22] – [23].
[9]
Policansky
Bros Ltd v L&H Policansky
1935 AD 89
at 97.
[10]
Cf Century City Apartments Property Services CC v Century City
Property Owners’ Association
2010 3 SA 1
(SCA) par [25] –
[26].
[11]
Cf Laugh it Off Promotions CC v SAB International (Finance) BV2005
2
SA 46
SCA and Laugh it Off Promotions CC v SA Breweries
International (Finance) BV t/a Sabmark International 2006 1 SA 144
(CC).
[12]
The
Nice Classification
is
a short name for
International Classification of Goods and Services
(
ICGS
)
for the Purposes of the Registration of Marks established under the
Agreement on Classifications (the Nice Agreement) designed
for
trademarks registration. International Classification of Goods and
Services for the Purposes of the Registration of Marks
consists of
45 classes: classes of the Nice Classification from 1 to 34 are
attributed to goods, and classes from 35 to 45 are
services. Names
of the classes of the Nice Classification specify in the most
general terms those fields to which goods and services
are related
to. The provisions of section 27(1)(a) suggests The goods or
services has to be specified with reference to the proprietor’s

real trade interests, as opposed to merely referring to the class in
general. For a general discussion see Arjo Wiggens Ltd v
Idem (Pty)
Ltd
2002 1 SA 591
(SCA) at 602B – 604D. For the importance of
the as yet unreported judgment of the full bench in Foschini Retail
Group (Pty)
Ltd v Coetzee (A1/11) [2013] NGHC (18 January 2013),
paragraphs [21] – [27], per A A LOUW J.
[13]
See
for example Jeffrey M. Samuels and Linda B. Samuels,
Trademark
Jurisprudence of Judge Rich
,
56 American University Law Review 761
(2007) from which the almost
eccentric nature of trade mark litigation in the United States, as
dealt with by a specific judge
appears. His judgments emphasised the
importance of commercial reality in resolving trade mark issues.
[14]
Cf Tool Wholesale Holdings (Pty) Ltd v Action Bolt (Pty) Ltd
1991 2
SA 80
(A) at 91F.
[15]
Ansul BV v Ajax Brandbeveiliging BV
[2003] RPC 40
717 (ECJ) 725;
Reckitt
Benckiser South Africa (Pty) Ltd v Colgate-Palmolive Company
2004
BIP 56 (RTM) at 61.
[16]
Jennifer
Williams & Associates & Another v Life Line Southern
Transvaal
(“the Jennifer Williams case”)
[1996] ZASCA 46
;
1996 (3) SA 408
(A) at
418 D - G; See also:
Capital
Estates & General Agencies (Pty) Ltd & Others v Holiday Inns
Inc
(the “
Capital
Estates case”)
1977 (2) SA 916
A at 929 C - D;
Caterham
Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd
(the “Caterham Case”)
1988 (3) SA 938
(SCA) at paras15 -
16.
[17]
Adcock-Ingram
Products Ltd v Beecham SA (Pty) Ltd
(“the Adcock Ingram case”)
1977 (4) SA 434
at 436
H - 437 B; The
Jennifer
Williams
case
supra
,
at 418 H.
[18]
Foschini
Retail Group (Pty) Ltd v Coetzee (A1/11) [2013] NGHC (18 January
2013), paragraphs [21] – [27], in particular paragraph
[23],
per A A LOUW J.
[19]
See paragraph [46] infra: “
Included
amongst the considerations proposed in these cases are: (a) the uses
of the respective goods; (b) the users of the respective
goods; (c)
the physical nature of the goods; and (d) the respective trade
channels through which the goods reach the market.
It is clear that
the list of proposed considerations was never intended to be
exhaustive. Yet they serve to stimulate and guide
the required
process of reasoning in the enquiry as to the likelihood of
confusion.”
[20]
NDPP
v Zuma
[2009] ZASCA 1
;
2009
(2) SA 277
(SCA) at para 26.
[21]
2005
(5) SA 388 (C).
[22]
The
Eat Out case at 394 D – H.
[23]
Swissborough
Diamond Mines (Pty) Ltd v Govt of the RSA
1999 (2) SA 279
(T) at
324F – 325C
.
Minister
of
Land Affairs & Agriculture v D & F Wevell Trust 2008 (2) SA
184 (SCA).
[24]
Foschini
Retail Group (Pty) Ltd v Coetzee infra.
[25]
Ritz
Hotel Ltd v Charles of the Ritz & Another
1988 (3) SA 290
(A) at 308A-D.
[26]
Danco
Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty)
Ltd & Another
[1991] ZASCA 121
;
1991 (4) SA 850
(A) at 860E.
[27]
Section
27(3) of the Act which provides that ‘
In
the case of an application in terms of paragraph (a) or (b) of
sub-section (1) the onus of proving, if alleged, that there
has been
relevant use of the trade mark shall rest upon the proprietor
thereof.
’
Relevant use means trade use in the furtherance of a proprietor’s
trade or business;
AM
Moolla Group Ltd and others v The Gap Inc and others
2005
(6) SA 568
(SCA) at [27]-[28], [42].
[28]
Salt
of the Earth Creations (Pty) Ltd and others v The Gap, Inc and
another
2010
BIP 163 (GNP) at 167F.
[29]
2
May 2013.
[30]
2
August 2013.
[31]
AM
Moolla Group Ltd and others v The Gap Inc and others
2005
(6) SA 568
(SCA) at [42].
[32]
Ansul
BV v Ajax Brandbeveiliging BV
[2003]
RPC 40717
(ECJ) at 725;
Reckitt
Benckiser South Africa (Pty) Ltd v Colgate-Palmolive Company
2004
BIP 56 (RTM) at 61.
[33]
McDonald’s
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd; McDonald’s
Corporation v Dax Prop CC; McDonald’s
Corporation v Joburgers
Drive-Inn Restaurant (Pty) Ltd (
unreported
judgment, 5 October 1995, Transvaal Provincial Division) at 52.
[34]
Victoria’s
Secret Inc v Edgars Stores Ltd
[1994] ZASCA 43
;
1994
(3) SA 739
(A) at 745E-F.
[35]
New
Line Manufacturing (Pty) Ltd v National Brands Ltd & Another
2005 (1) SA 346
(T) at [9].
[36]
McDonalds
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd
;
McDonalds
Corporation v Dax Prop CC
;
McDonalds
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd
1997 (1) SA 1
(A) at 20E.
[37]
Distillers
Corporation SA Limited v SA Breweries Limited
;
Oudemeester
Groep Beperk v SA Breweries Limited
1976 (3) SA 514
(A) at 539B-D.
[38]
McDonald's
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd; McDonald's
Cooperation v Dax Prop CC; McDonald's Corporation
v Joburgers
Drive-Inn Restaurant (Pty) Ltd and Dax Prop CC
1997
(1) SA 1
(A) at 32A-B.
[39]
Ibid
.
[40]
Broadway
Pen Corporation v Wechsler & Co (Pty) Ltd
1963
(4) SA 434
(T) at 440A-B
;
Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd and Another
2005
(1) SA 346
(T) at [8].
[41]
Ansul
BV v Ajax Brandbeveiliging BV
[2003]
RPC 40
717 (ECJ) at 725;
Reckitt
Benckiser South Africa (Pty) Ltd v Colgate-Palmolive Company
2004
BIP 56 (RTM) at 61 and
AM
Moolla Group Ltd and others v The Gap Inc and others
2005
(6) SA 568
(SCA) at [42].