Shatterproof
Dot637 M158 ASI
Had the words "Shatter Proof" (or Shatterproof) been on their own, even combined with Commercial
Autoglass (which is in a frame in the above inscription), it would have amounted to an infringement.
However, the addition of the company name plus "laminated" make the words bona fide descriptive. There is
also no emphasis, compared to the capital letters in the other words, on the word Shatter Proof. Each case
would have to be dealt with on its own merits. Of course, the descriptive aspect is based on the written form
in which it appears. In the case of mere oral publication the likelihood of deception is much more substantial
in the course of trade. Even to rectify a verbal advertisement of shatterproof by adding the spelling would be
confusing. In the result I do not believe that the respondent has made out a case for an interdict.
Page 285 of [2006] 2 All SA 260 (T)
[65] I make the following order:
1.1
The application for expungement from or variation of the Register in terms of prayers 1 and 2 is
dismissed with costs, including the costs consequent upon the employment of two counsel.
1.2
The application for a declaratory order is acceded to with costs. The registration does not prohibit the
bona fide descriptive use of the written word "shatterproof" or "shatter proof" within the meaning of
section 34(2)(b) of the Trade Marks Act 194 of 1993 in the course of trade, provided that the word
"shatterproof' (or "shatter proof") may not be used on its own or emphasised in any manner where it
is used as part of a description. The context must confirm that it is used in an exclusively descriptive
manner. Specifically, the following description referred to in the judgment is not regarded as an
infringement:
Commercial
Autoglass
Laminated
Shatter Proof
(there must be a box, as in the papers, around Commercial Autoglass, which indicates the company
name. For new products "(Pty) Ltd" must be added to the name of the Company as from 1 May 2006).
Further, specifically, the instances on the tax invoice and website discussed. In the judgment are
regarded as infringements.
1.3
The counterapplication for an interdict is dismissed with costs.
For the applicant:
R Wheeldon instructed by Webber Wentzel Bowens, Johannesburg
For the respondents:
GE Morley SC and R Michau instructed by Bowman Gilfillan, Midrand (1st respondent); Moore Attorneys, Hyde Park &
Savage, Jooste & Adams, Pretoria (2nd & 3rd respondents)
Footnotes
1
2
3
4
5
6
7
8
Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A) at 21H [also reported at [1997] 1 All SA 327 (A) Ed.];
PlasconEvans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 634D635C.
Ritz Hotel Limited v Charles of the Ritz Limited 1988 (3) SA 290 (A) at 307; Mars Incorporated v Candy World (Pty) Ltd
1991 (1) SA 567 (A) at 575; Valentino Globe BV v Phillips and another 1998 (3) SA 775 (SCA) at 781; SAFA v Stanton
Woodrush (Pty) Ltd 2002 (2) SA 236 (T) at 239; Danco Clothing (Pty) Ltd v NuCare Marketing Sales and Promotions
(Pty) Ltd 1991 (4) SA 850 (A) at 855.
2002 (2) SA 236 (T) at 239.
S 1 of the Trust Property Control Act 57 of 1988 provides:
"A trust is not considered a separate independent entity vested with legal personality which, independently and of its
own right, can own and exercise control over property, be it movable, immovable or immaterial property such as
copyright and trade marks."
[1999] 1 All SA 425 (D).
1986 (3) SA 12 (A) at 25FG.
IA Essack Family Trust v Kathree 1974 (2) SA 300 (D); Goolam Ally Family Trust v Textife, Curtaining and Trimming
1989 (4) SA 985 (C).
S 27(1) Subject to the provisions of s 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 s 59 and in the prescribed manner, to the Registrar by any interest
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 s 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