In Shalom Investments (Pty) Ltd v Dan River Mills Inc., 1971 (1) SA 689 (A), this Court
had occasion to consider the meaning of s. 46(b). OGILVIE THOMPSON JA, who
delivered the judgment of the Court, referred to with approval, and adopted as being
equally applicable to the provisions of s. 46 (b) of the Act, certain remarks of
LAWRENCE LJ, made with reference to the identically-worded s. 44 of the English
Trade Mark Act of 1905 in the well-known case of J B Stone & Co Ltd v Steelace
Manufacturing Co Ltd, (1929) 46 RPC 406, at p 417. The learned Lord Justice said:
"In my opinion the object of Section 44 was to safeguard traders in cases where the
registered trade mark consisted of more or less descriptive words forming
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part of the ordinary English language, without the use of which other traders would find
some difficulty in describing certain qualities of their goods; but was never intended and
does not operate to enable a trader to make use of a rival trader's registered trade mark
consisting of a fancy word having no reference to the character and quality of the goods
in order more readily to sell his own goods."
In the Shalom Investments case, supra, the respondent was the proprietor of the mark
"Dan River", registered in regard to, inter alia, cotton goods and articles of clothing. The
respondent operated a large textile mill in the USA and the Dan River mark was used in
relation to its textile products. Without respondent's consent, appellant obtained material
manufactured by respondent, made it up into ladies dresses and marketed
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them, each with a label indicating that it was made from a Dan River fabric. Appellant
was held by the trial Judge to have infringed respondent's mark. On appeal to this Court,
in addition to attacking the infringement finding, appellant sought to rely on s. 46 (b).
After the quotation from the J B Stone case, supra, OGILVIE THOMPSON JA went on
to deal with the applicability of s. 46 (b) - at p 708 E - G:
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