THE SUPREME COURT OF APPEAL
OF SOUTH AFRICA
Reportable
Case No. 250/99
In the matter between:
COWBELL AG
Appellant
and
ICS HOLDINGS LIMITED
Respondent
Coram:
NIENABER, HARMS and NAVSA JJA, MELUNSKY and
NUGENT AJJA
Heard:
26 FEBRUARY 2001
Delivered:
16 MARCH 2001
Subject:
Trade mark registration.  S 17 (1) Trade Marks Act 62 of
1963.
JUDGMENT

HARMS JA/
HARMS JA:
[1] The appellant applied during 1988 for the registration of the trade
mark  Cowbell in conjunction with a cow device in class 29.  Opposition from
the respondent, the owner of a number of trade marks in this class, based
principally upon the provisions of s 17(1) of the Trade Marks Act 62 of 1963,
led to a finding by the Deputy Registrar in the appellant's favour.  This, in turn,
gave rise to a successful appeal by the respondent to the Full Court of the
Transvaal Provincial Division (per Van Dijkhorst J, Van der Walt and
McCreath JJ concurring).  Hence the present appeal.
[2] The appeal to this Court was ultimately noted without leave having
been obtained from either the Full Court or this Court.  Initially, acting on the
advice of counsel, the appellant sought leave from the Full Court.  The
respondent's attitude was that leave was not required.   Disagreeing, the
appellant proceeded with its application.  In the event the Full Court (per Van
der Walt J, Van Dijkhorst and Kirk-Cohen JJ concurring) upheld the
respondent's point of view and struck the application from the roll with costs.
[3] Because of the delay caused by the abortive proceedings the
appellant's notice of appeal was lodged out of time and there is before us an
application for condonation.  Before dealing with it, it is necessary to consider

whether leave to appeal is a jurisdictional requirement because although Van
der Walt J's judgment is not as such the subject of this appeal, the question
remains whether the appeal is properly before us.  The Full Court judgment
does not bind us.  Unfortunately, we did not have the assistance of argument
since both parties assumed that the correctness of that judgment could not be
raised in this appeal.
[4] As mentioned, the application for the registration of the trade
mark was launched in terms of the 1963 Act which has since been repealed
and superseded by the Trade Marks Act 194 of 1993.  The latter provides in
s 3(2) that -
“[a]ll applications and proceedings commenced under the repealed Act shall be dealt with in
accordance with the provisions of that Act as if it had not been repealed.”
The question, simply put, is whether appeal proceedings in relation to an
application for registration which commenced under the 1963 Act should be
dealt with in accordance with the provisions of that Act.   Before the Full
Court it was argued that applications for leave to appeal are procedural steps
which should follow the current state of the law.  That argument was based
upon a wrong premise.   An application for leave to appeal, normally a
procedural step, is necessary because leave is a jurisdictional requirement.  But
jurisdictional requirements can hardly be termed “procedural”.  In any event,

although as a general rule procedural steps should follow the current state of
the law, that rule has to yield to any contrary intention appearing from the
statute in question.  In this case it seems to me that the intention of the
Legislature was that all applications (including those for registration of trade
marks) commenced under the 1963 Act should in all respects be dealt with
thereunder.
[5] This finding leads to a consideration of whether the appellant
required leave to appeal under the 1963 Act.  Section 63 dealt with the matter.
Its scheme was as follows.  The decision of the Registrar was appealable as
if it were a decision of a single judge, i e, to the Full Court of the Transvaal
Provincial Division (ss (2) read with ss (4)(a)).  Thereafter an appeal to this
Court was available (ss (2)) for which “special” leave to appeal was not
necessary (ss (4)(b)). At the time (1963) the concept of special leave did not
exist; it only acquired a particular connotation when ss 20 and 21 of the
Supreme Court Act 59 of 1959 were amended by the Appeals Amendment Act
105 of 1982.  Since then civil appeals from the Full Court were made subject
to special leave by this Court and the Full Court sitting as a court of appeal no
longer had the competence to grant leave to appeal (s 20(4)(a) of the Supreme
Court Act).  The application to the Full Court was therefore ill-conceived.
Because of s 63(4)(b) read with s 20(6) of the Supreme Court Act, special

leave of this Court was also not required.  The appellant thus had an
untrammelled right of appeal.
[6] Reverting to the condonation application, the appellant was
obliged to file its notice of appeal within one month of the granting of the
judgment or order appealed against (SCA r 7(1)(a)).  Because of its attitude
concerning leave to appeal it was substantially out of time: the judgment was
delivered on 4 March 1998 and the notice of appeal filed on 21 June 1999,
which was less than two weeks after the judgment of Van der Walt J had
become available on 10 June.  The respondent refused to agree to an extension
of time under r 7(4) and filed a lengthy answer.  The respondent no longer
opposes the application except on the ground that there are no prospects of
success.  Since, as will appear in due course, I am of the view that the appeal
should succeed, this ground of opposition is without  merit.  Having acted on
the advice of two senior counsel, it cannot be said that the appellant was
culpable in having failed to file its notice of appeal in good time and the
condonation application must succeed.  The matter of costs will be dealt with
later.
[7] After all these preliminaries, the attention can now be directed to
the merits of the appeal.  The respondent is the registered proprietor of a
number of antedating registrations which, it alleges, create a bar to the

appellant's registration.  Although the pleadings are cast wider, the case can be
decided with reference to the provisions of s 17(1) of the 1963 Act:
“Subject to the provisions of sub-section (2), no trade mark shall be registered if it so resembles
a trade mark belonging to a different proprietor and already on the register that the use of both
such trade marks in relation to goods or services in respect of which they are sought to be
registered, and registered, would be likely to deceive or cause confusion.”
The introductory proviso is inapplicable and all the trade marks concerned are
primarily directed to dairy products.  Their wider registration or proposed
registration does not assist in answering the main question, namely whether
there would be a likelihood of deception or confusion.
[8] The respondent's trade marks which have a bearing on the matter
are four in number: (a) no 60/2609/1 Dairybelle, (b) no 65/1957 Dairybelle, (c)
no 65/1958 Dairy Belle with cow device and (d) no 75/0908 Jerseybel and cow
device.  The fifth registration which relates to Dinner Bell adds nothing to the
debate and is only relevant in the context of the so-called series objection
which will be dealt with in due course.  These marks are all independent marks,
i e they are not associated marks.  The registration of (c) contains an
admission that cow devices are common in the foodstuff classes and that of
(d), somewhat similarly, that bovine devices in general are common to the class
but that the admission does not relate to the bovine device as depicted in the
mark.  They are thus represented:

[9] The appellant's proposed mark looks like this:
Whether the background consisting of a top-heavy T was intended to form
part of the mark is a question raised by the respondent, but the application has
to be taken at face value and the appellant's unexpressed intention is of no
consequence.   The application contains a number of admissions or
disclaimers but these have no bearing on the enquiry under s 17(1).
[10] Section 17(1) creates an absolute bar to registration provided the
jurisdictional fact is present, namely that the use of both marks in relation to
goods or services in respect of which they are sought to be registered, and
registered, would be likely to deceive or cause confusion.  The decision
involves a value judgment and
“[t]he ultimate test is, after all, as I have already indicated, whether on a comparison of the two

marks it can properly be said that there is a reasonable likelihood of confusion if both are to be
used together in a normal and fair manner, in the ordinary course of business.”
(SmithKline Beecham Consumer Brands (Pty) Ltd (formerly known as
Beecham South Africa (Pty) Ltd v Unilever plc 1995 (2) SA 903 (A) 912H.)
“Likelihood” refers to a reasonable probability (ibid at 910B) although the
adjective “reasonable” is perhaps surplusage. In considering whether the use
of the respondent's mark would be likely to deceive or cause confusion, regard
must be had to the essential function of a trade mark, namely to indicate the
origin of the goods in connection with which it is used (The Upjohn Company
v Merck 1987 (3) SA 221 (A) 227E-F; Canon Kabushiki Kaisha v Metro-
Goldwyn-Mayer Inc (formerly Pathé Communications Corporation) [1999]
RPC 117 (ECJ) par 28).  Registered trade marks do not create monopolies in
relation to concepts or ideas.    More recently this Court in Bata Ltd v Face
Fashion CC and another 2001 (1) SA 844 (SCA) 850 par 9 pointed out that
the approach adopted in Sabel BV v Puma AG, Rudolf Dassler Sport [1998]
RPC 199 (ECJ) 224 accords with our case law.  There it was said that the
likelihood of confusion must “be appreciated globally” (cf Organon
Laboratories Ltd v Roche Products (Pty) Ltd 1976 (1) SA 195 (T) 202F -
203A) and that the
“global appreciation of the visual, aural or conceptual similarity of the marks in question, must be
based on the overall impression given by the marks, bearing in mind, in particular, their distinctive

and dominant components.”
Cf SmithKline at 910B-H and Canon par 16 - 17.
[11] As far as the visual similarity is concerned, both the Deputy
Registrar and the Court a quo held that the mark of the appellant on the one
hand and those of the respondent on the other are visually so different that
confusion or deception is improbable.
Bovine devices are to be
expected on dairy products and provide a common feature as the  admissions
or disclaimers testify.  The three cows are represented in substantially different
ways.  It is not necessary to elaborate since the respondent did not attack
these findings.
[12] The aural aspect was not dealt with by the Court a quo in so
many words as a separate inquiry.  What has to be compared is then Dairybelle
and to a lesser extent Jerseybel on the one hand with Cowbell on the other.
Since the suffix “-le” in Dairybelle is muted it may be of no audible
consequence to the consumer who is unaware that the word as pronounced
can refer to a dairy maid.  The words “dairy” and “cow” bear no auditory
relationship to one another.  Neither do “jersey” and “cow”.    The emphasis
in both the respondent's marks is on the first part which form the dominant
parts of the words.  “Dairy” and “jersey” are two-syllable words whereas
“cow” consists of one syllable.  Dairybelle and Jerseybel represent unusual

combinations of words and are in a sense invented words whereas Cowbell is
an ordinary word bearing an ordinary connotation.   Since the respondent did
not submit that confusion or deception is likely in this context, it is
unnecessary to belabour my conclusion that there is no such likelihood.
[13] Regarding conceptual similarity, the court a quo found that a
person having heard the one mark advertised on the radio, when confronted
with the other in a supermarket, will not be astute enough to discern that they
are not the same or are not cows from the same herd.  The concept created is
that of a dairy full of cows with bells used in connection with dairy products.
It reasoned that to the listener, who does not have the benefit of visual
comparison, the concepts are too close for comfort.   In conclusion it held
that this reasoning applied a fortiori in the case of Jerseybel and Cowbell.
Respondent adopted this line of reasoning, emphasising that -
“[t]he marks must be considered as wholes; one must look for the main idea, or the general
impression, conveyed to the mind by each of the marks and at the essential features, rather than
the exact details, of each.”
(adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd
1976 (1) SA 530 (T) 536B-C.)
[14] Albeit in the context of the interpretation of a European
Community Council Directive, the European Court of Justice in Sabel (at 223 -
224) made some observations that are pertinent to the present issue:

“. . . the likelihood of association is not an alternative to that of likelihood of confusion, but serves
to define its scope.”
Also -
“. . . the perception of marks in the mind of the average consumer of the type of goods or services
plays a decisive role in the global appreciation of the likelihood of confusion.  The average
consumer normally perceives a mark as a whole and does not proceed to analyse its various
details.”
Further -
“. . . the criterion of 'likelihood of confusion which includes the likelihood of association with the
earlier mark' contained in Article 4(1)(b) of the Directive is to be interpreted as meaning that the
mere association the public might make between two marks as a result of their analogous
semantic content is not in itself a sufficient ground for concluding that there is a likelihood of
confusion within the meaning of that provision.”
The last statement was, however, preceded by a qualification:
“It is therefore not impossible that the conceptual similarity resulting from the fact that two marks
use images with analogous semantic content may give rise to a likelihood of confusion where the
earlier mark has a particularly distinctive character, either per se or because of the reputation it
enjoys with the public.”
[15] Likewise, s 17(1) is concerned with a likelihood of confusion or
deception and unless the analogous semantic content can reasonably give rise
thereto, it is irrelevant.  The danger of confusion or deception must be real
(“Bali” Trade Mark [1969] RPC 472 (HL) 496 line 45 - 497 line 2).  That the

approach of the court a quo is  untenable can be illustrated with reference to
the a fortiori case referred to by it, namely that because a Jersey may be a
cow, Jerseybel and Cowbell have the same semantic content and are therefore
confusingly similar.  If this were correct, it would mean that the name of any
breed of dairy animal in conjunction with -bel must run foul of the respondent's
marks, including Ayreshirebel, Holsteinbel and Frieslandbel.  There is in any
event no such thing as a Jerseybel.   As said in Bata 850 par 10 -
“Counsel for the appellant submitted that the common element in both marks, the word 'Power',
was likely to lead to confusion despite the fact that it is used in combination with the word 'House'
on the first respondent's clothing. If full effect is given to this argument it would result in the
appellant having a virtual monopoly to use the word 'Power' on clothing. According to the
evidence, however, there are numerous trade mark registrations in South Africa in respect of
clothing which incorporate or include the word 'Power'. It is an ordinary word in everyday use,
as distinct from an invented or made-up word, and it cannot follow that confusion would probably
arise if it is used in combination with another word.”
In short, the respondent cannot lay claim to the exclusive use of words having
a dairy connotation or ending in “-belle” or “-bel” in relation to dairy products
where these do not form a dominant part of its marks and have not any
particularly distinctive character.   That is why “Coca-Cola” and “Pepsi-Cola”
have been able to exist side by side (cf The Coca-Cola Co of Canada Ld v
Pepsi-Cola Co of Canada Ld [1942] RPC 127 (PC)).

[16] In conclusion the respondent relied upon the so-called series
argument.  In 29 LAWSA par 138 the argument is explained:
“Where an objector has used a series of marks, all containing a common element, and where the
applicant’s mark contains the same element, the registrar of trade marks may infer that the public,
when they see the applicant’s mark, will be likely, by reason of the common element, to think that
it is a new mark added to the series.
In opposition proceedings the 'series' objection is normally brought under section 16(1) of the
1963 Trade Marks Act and it is necessary to establish actual use of each of the marks in the
series.”
Since the respondent only has used the Dairybelle marks, the objection is not
available to it under s 16(1).  However, the author of the LAWSA title
proceeds:
A 'series' objection does not appear to be available in opposition proceedings brought under
section 17(1) or trade mark infringement proceedings. This is somewhat surprising and open to
question. Use under section 16(1) is necessary to prove that distinctiveness of the marks is in
issue, whereas such distinctiveness is deemed to exist for the purposes of section 17(1). Thus if
there are either a series of factually or deemed distinctive marks, the opponents should be entitled
to rely on such a series for the purposes of an opposition.”
[17] Respondent likewise argued that the limitation of the objection to
s 16(1) is incorrect and that it should be available under s 17(1).  If that were
correct, it should similarly be available in infringement actions, a proposition

that was seriously queried by Corbett JA in Hollywood Curl (Pty) Ltd and
Another v Twins Products (Pty) Ltd 1989 (1) SA 236 (A) 247C - 248H.  Its
availability under s 17(1) was doubted in Upjohn at 228H - 229A where,
speaking on behalf of the Full Court, I had occasion to say the following:
“In the case of an objection based upon s 17(1) or in the case of trade mark infringement the
Court is, however, merely concerned with a comparison of  the two marks placed side by side
in the market place and the Court is not entitled to have regard to extraneous matters. The fact
that the objector or plaintiff has a series of marks containing a common element appears to me
to be an extraneous matter. It is, however, not necessary to reach a final decision on this aspect
because the concept of a series of marks cannot arise in the present instance. There is no series
in use belonging to the appellant, and furthermore, the prefix in casu is not very distinctive but is,
rather, descriptive. Had the prefix been non-descriptive and borne a high degree of distinctiveness
there might have been merit in counsel's submission.”
These views, at the very least, accord with the practice adopted by the British
Registry  (Semigres Trade Mark [1979] RPC 330) and with the general
approach favoured by Corbett JA.
[18] The premise of the respondent's argument is that the main object
of s 17(1) is consumer protection and only indirectly the protection of
registered trade marks.  I disagree.  Consumer protection is primarily catered
for by s 16(1) and registered monopolies by s 17(1).  Registration of the
appellant's mark would provide an absolute defence against an infringement

action based upon the respondent's earlier marks.  To prevent that eventuality
where the second mark is confusingly similar to an earlier mark as registered
is the reason why s 17(1) was enacted.  The further argument is that since, as
a general rule, the singular includes the plural, s 17(1) prohibits also the
registration of a trade mark if it resembles “trade marks belonging to a different
proprietor”.  But if one extrapolates the argument that the singular includes the
plural, it would mean that trade marks belonging to different proprietors could
form part of the series.  That identifies another problem.  The respondent's
marks are not associated and that means that they can be assigned individually
to different proprietors.  The fact that they belong to one proprietor is
fortuitous and transient.  The series argument might have had some merit had
the marks been associated.   I have in any event a conceptual difficulty.  If A
does not resemble B, C or D individually, I fail to understand how it can
resemble them collectively.
[19] In the result the appeal must succeed with costs.  All that remains
is the costs of the application for condonation.  It would have been
unnecessary had the appellant accepted the respondent's advice.  It would also
have been unnecessary had the respondent not taken the incorrect view that it
could not have consented to the late filing of the notice of appeal.  Taking a
broad approach, it seems to me that justice will be served if no costs order is

made in relation thereto.
[20] The order is consequently:
(a)
The condonation application is granted.
(b)
The appeal is upheld with costs, including the costs of two counsel.
(c)
The order of the Court a quo is amended to read: “The appeal is
dismissed with costs, including the costs of two counsel.”
____________________
L T C HARMS
JUDGE OF APPEAL
AGREE:
NIENABER JA
NAVSA JA
MELUNSKY AJA
NUGENT AJA