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Brian Boswell Circus (Pty) Ltd and another v BoswellWilkie Circus (Pty) Ltd 1985 (4) SA 466 (A) 594 Broadway Pen Corporation v Wechsler & Co (Pty) Ltd 1963 (4) SA 434 (T) 602 Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd [1998] 3 All SA 175 (1998 (3) SA 938) (SCA) 593 Geary & Son (Pty) Ltd v Gove 1964 (1) SA 434 (A) 594 James Brown & Hamer (Pty) Ltd (previously named Gilbert Hamer & Co Ltd) v Simmons NO 1963 (4) SA 656 (A) 592 Matthews and others v Young 1922 AD 492 594 Oils International (Pty) Ltd v Wm Penn Oils Ltd 1965 (3) SA 64 (T) 602 Oils International (Pty) Ltd v Wm Penn Oils Ltd 1966 (1) SA 311 (A) 602 P Lorillard Co v Rembrandt Tobacco (Co) (Overseas) Ltd 1967 (4) SA 353 (T) 603 PlasconEvans Paints Limited v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) 592 Schultz v Butt 1986 (3) SA 667 (A) 594 Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty) Ltd 1990 (1) SA 722 (A) 593 Tie Rack Plc v Tie Rack Stores (Pty) Ltd and another 1989 (4) SA 427 (T) 603 Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A) 603 United Kingdom AL ASSAM Trade Mark [1995] RPC 511 (CA) 594 GE Trade Mark [1973] RPC 297 (HL) 594 Pinto v Badman [1891] RPC 181 (CA) 594 Star Industrial Co Ltd v Yap Kwee Kor (t/a New Star Industrial Co) [1976] FSR 256 (PC) 594 Page 590 of [2005] 2 All SA 588 (T) Judgment SOUTHWOOD J [1] The applicant seeks an order in terms of section 24(1) read with subsections 10(3), 10(7) and 10(12) of the Trade Marks Act 194 of 1993 ("the Act") expunging from the register, trade mark 1998/18119 JACOBSEN'S (Special Form) in class 35 and trade mark 1998/18120 JACOBSEN'S (Special Form), both registered in the name of the first respondent. [2] The background to this matter, very briefly, is as follows: the applicant is Butterworths Publishers (Pty) Limited, a publisher of legal and academic works. During October 1998 the applicant purchased the assets, goodwill and business of Jacobsen's Publishers (Pty) Ltd ("Jacobsen's Publishers") as a going concern. The assets of the business included copyright in the works published by Jacobsen's Publishers: Jacobsen's Harmonised Customs & Excise Tariff Book; Jacobsen's Customs & Excise Rules and Prohibited Goods Index and Jacobsen's Guide to Classification. All were, and still are, standard works in the field. From the date of acquisition of the business the applicant published and distributed the works under the name JACOBSEN'S in a stylised form. The first respondent is the registered proprietor in terms of the Act of trade mark 1998/18119 JACOBSEN'S (Special Form) in class 35 in respect of "advertising; business management; business administration; office functions; offering for sale and the sale of goods in the retail and wholesale trade" and trade mark 1998/18120 JACOBSEN'S (Special Form) in class 36 in respect of "insurance; financial affairs; monetary affairs; real estate affairs". The first respondent applied for registration of these trade marks on 14 October 1998. The trade marks are identical to the trade mark used by the applicant. The first respondent was incorporated as Cargo Card Holdings CC on 22 March 1994. Its principal object was to hold various assets and investments including, but not limited to, trade marks. The first respondent converted to a private company and then changed its name to Jacobsens Holdings (Pty) Ltd. The first respondent has not at any time conducted business using the trade marks. On 6 February 2003 attorneys Wertheim Becker, on behalf of the first respondent, addressed a letter to the applicant alleging that the applicant was infringing the trade marks; demanding the removal of the infringing mark from all material produced or distributed by the applicant, alternatively, delivery up, failing which the first respondent would institute infringement proceedings. On 7 March 2003 attorneys Beall Chaplin & Hathorn, on behalf of the applicant, answered this letter. They pointed out that the applicant had purchased Jacobsen's Publishers' business as a going concern, that the assets of the business included the trade marks JACOBSEN'S and JACOBSEN'S PUBLISHERS, that the

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Butterworths Publishers (Pty) Ltd v Jacobsens Group (Pty) Ltd and another [2005] 2 All SA 588 (T)

Case Law

Country

South Africa

Country Location

Latitude: -28.58043087631903

Longitude: 24.820993917210945

Country Location (Lié Case Law): South Africa

Decision Date: 12 avr. 2005

Case Status: Affaire Résolue

Case Outcome (Procedural)

Motion Granted

Case Outcome (Disposition)

Injunction or Order Granted
Law or Action Upheld

Keywords

Intellectual Property
Trademark

Judicial Body: Administrative Court

Court Name: Transvaal Provincial Division

Case Number: 17107/04

Case Summary: The parties were in dispute as to the use of the trademark by the first respondent and its companies. The applicant's stance was that the trademark in question was an unregistered one, and accordingly that the purported acquisition of that trademark, separately from the business or goodwill with which it was associated, by the first respondent was not legally possible. Applicant contended further that it had acquired the trademark with the business bought from the first respondent, and that the first respondent did not acquire any rights in respect of the mark. This formed the basis of the argument that the first respondent's registration of the trademarks was contrary to sections 10(3), 10(7) and 10(12) of the Trade Marks Act 194 of 1993; and they should be expunged. In the application for expungement, the applicant was successful in proving that the first respondent had no bonafide claim to proprietorship of the mark. The application accordingly succeeded.

Related Caselaw (self)

Related Law

Trademark law No. 194 of 1993

Collection

CIPIT

Date Updated: 9 mai 2024

Documents principaux

Butterworths Publishers (Pty) Ltd v Jacobsens Group (Pty) Ltd and another [2005] 2 All SA 588 (T).pdf
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