Kuhn v Kerbel and another [1957] 3 All SA 365 (1957 (3) SA 525) (A)
Referred to
351
Page 346 of [2011] 1 All SA 343 (SCA)
Modder East Squatters and another v Modderklip Boerdery (Pty) Ltd;
President of the RSA and others v Modderklip Boerdery (Pty) Ltd [2004] 3
All SA 169 (2004 (6) SA 40) (SCA) Referred to
349
Montres Rolex SA v Kleynhans [1985] 1 All SA 220 (1985 (1) SA 55) (C)
Referred to
348
National Director of Public Prosecutions v Zuma [2009] 2 All SA 243
(2009 (2) SA 277) (SCA) Confirmed
348
President of the RSA and another v Modderklip Boerdery (Pty) Ltd and
others 2005 (8) BCLR 786 (2005 (5) SA 3) (CC) Referred to
350
Room Hire Co (Pty) Ltd v Jeppe Street Mansions (Pty) Ltd
1949 (3) SA 1155 (T) Confirmed
348
Sieberhagen v Grunow [1957] 2 All SA 249 (1957 (3) SA 485) (C)
Referred to
351
Titus v Union and SWA Insurance Co Ltd [1980] 3 All SA 607
(1980 (2) SA 701) (Tk) Confirmed
351
Van der Merwe v Protea Insurance Co Ltd [1982] 3 All SA 426
(1982 (1) SA 770) (E) Referred to
352
Williams v Tunstall 1949 (3) SA 835 (T) Referred to
348
United Kingdom
R v Johnstone [2003] UKHL 28 Referred to
347
Judgment
HARMS DP:
Introduction
[1] The first respondent, WeberStephen Products Co, a US company, is the registered owner of trademarks that
relate to the shape and configuration of barbeque kettle grills. Its sole distributor in South Africa is the second
respondent, Galactex Outdoor (Pty) Ltd. The appellant, Cadac (Pty) Ltd, also manufactures kettle grills and
had a kettle grill on the local market for some 18 months when it decided to introduce another model during
November 2004.1
[2] This gave rise to correspondence between the parties in which the respondents (to whom I shall simply refer
as WeberStephen) alleged trademark infringement, something Cadac denied. WeberStephen then alleged
that Cadac was guilty of counterfeiting and threatened to lay a charge under the Counterfeit Goods Act 37 of
1997. In spite of Cadac's detailed refutation of the allegations, the respondents proceeded to lay a complaint
without notice to Cadac in terms of section 3 of the Act by means of an affidavit and without disclosing the
fact that Cadac had asked for notice and had provided it with a detailed defence.
[3] An inspector appointed under the Act, acting on the correctness of the allegations in the affidavit, applied for
a warrant from a magistrate in chambers authorising him to seize Cadac's kettle grills (section 6(1)). The
warrant was executed during the Christmas season and kettle grills in the possession of dealers were also
confiscated. Cadac alleges that it suffered some loss as a result.
Page 347 of [2011] 1 All SA 343 (SCA)
[4] On 13 January 2005, Cadac applied on an urgent basis for a setting aside of the warrant in the light of the
underhand manner in which it had been obtained. It also applied for a declaration that the goods seized were
not counterfeit and for an inquiry into damages and for costs.
[5] The application was heard by Schwartzman J on 25 February, and in a fully reasoned judgment of 18 March he
came to the conclusion that the warrant had been obtained irregularly and he set it aside with costs and
ordered the return of Cadac's goods.2 WeberStephen sought leave to appeal from the learned Judge and
from this court but without success.
[6] Because of this finding, the learned Judge thought it unnecessary to express any view about whether or not
the Cadac product was counterfeit. This he did in spite of the fact that:
"the striking feature about counterfeit cases is that they are legally very simple: they do not involve serious disputes
over the boundaries of the trademark owner's rights. In mimicking the goods and the trademarks, the conduct of
counterfeiters clearly falls within the ambit of conduct that a trademark owner is entitled to prevent."3
Counterfeiting involves deliberate and fraudulent infringement of trademarks4 and "counterfeit cases involve