THE SUPREME COURT OF APPEAL
OF SOUTH AFRICA
Case No. 427/98
In the matter between:
MARS INCORPORATED
Appellant
and
CADBURY (SWAZILAND) (PTY) LIMITED      1st  Respondent
THE REGISTRAR OF TRADE MARKS
2nd Respondent
Coram:
HARMS, MARAIS and PLEWMAN JJA &
MELUNSKY AND MPATI AJJA
Heard:
25 AUGUST 2000
Delivered:
8 SEPTEMBER 2000
Trade marks - defensive trade marks - s 70 of the Trade Marks Act, 1993
JUDGMENT
HARMS JA

HARMS JA:
[1] The first respondent (“Cadbury”) is the registered proprietor of
two trade marks, the one for the name mark “Chappies” and the other for
a device mark consisting of a dancing chipmunk, attired with a hat and
bow tie, in conjunction with the words  “Chappie Chipmunk” and
“Chappie Tjokker”.  “Tjokker” is the Afrikaans word for a chappie or
nipper and not for a chipmunk, but that is by the way.  “Chappies”
chewing bubble gum are, in the Southern African context, well-known to
the masticating generation who chewed through 8826 tonnes of of the
substance in 1995.  It is therefore no surprise to learn that these trade
marks are registered in part A of the register and fall in class 30, a class
which relates among other things to confectionery.   Cadbury (I use the
name generically to include references to its predecessors in title), in the
light of the success of its trade marks, sought wider protection and

obtained defensive registrations for the same marks in a number of
classes, including class 31, which also encompasses foodstuffs for
animals.
[2] Trade marks are registered in different classes and a trade mark
must, subject to what follows, be used in relation to the goods or
services of the class in which it is registered.  Trade mark protection
under the repealed Trade Marks Act 62 of 1963 extended only to the use
of the trade mark by another on goods or services falling within the same
class.  In order to extend protection to relatively well known trade marks
in relation to goods or services falling in other classes, such marks could
be registered  defensively in other classes.  The owner of a defensive
trade mark was not obliged to use it in relation to goods or services in
that class and the mark could not and at this stage cannot  be revoked
because of non-use.  In effect such a mark provided a statutory passing-

off remedy in relation to goods or services which fall outside the class of
goods or services of the principal mark.  Defensive trade marks could be
registered if, in the terms of s 53 (1) -
“the registrar [of trade marks] is of the opinion that, by reason of the extent of use or of any
other circumstances, a trade mark registered in Part A of the register would, if used in
relation to goods or services other than the goods or services in respect of which it is
registered, be likely to be taken as indicating a connection in the course of trade between
the first-mentioned goods or services and the proprietor of the registered trade mark . . ..”
[3] Under the current Trade Marks Act 194 of 1993, defensive trade
marks can no longer be registered.  All trade marks have to be used and,
if not used, may be removed from the register (s 27).  The reason for the
change lies in the change to the infringement provisions.  The owner of
a trade mark can now sue for infringement even if the trade mark is used
in a class different from the one in which the trade mark is registered,

It reads: “A trade mark which has been validly registered in terms of the provisions of
section 53 of the repealed Act shall, from the date of commencement of this Act, be deemed to be
a trade mark registered in terms of this Act, but shall not be removed from the register in terms of
the provisions of paragraph (4) of section 10 or of section 27 within a period of 10 years from the
date of commencement of this Act.”
provided that due to the similarity of the goods or services in the different
classes there exists a likelihood of deception or confusion (s 34 (1) (b)).
In order to regulate the transition defensive trade marks have been
elevated to “ordinary” trade marks and they can now be removed from
the register on the same grounds, subject to the proviso that they may not
be removed on the ground of non-use for a period of ten years (s 70
(2)).1
[4] The appellant (“Mars”) applied by way of notice of motion to the
Transvaal Provincial Division for an order directing the registrar to
remove Cadbury's defensive registrations from the register.  They are
impediments to applications filed by Mars for trade mark protection in
class 31 for animal foods for (i) the name mark “Chappie” and (ii) a

device mark consisting of the head of a dog accompanied by the name
“Chappie”.  The evidence shows that Mars has in some foreign
jurisdictions a substantial reputation as a provider of dog food under the
name “Chappie”.  In this country it had trade mark protection for the
name “Chappie” for animal food since 1936 but it lost its protection
through non-use (Mars Incorporated v Candy World (Pty) Ltd 1991 (1)
SA 567 (A)).  A similar trade mark which dates back to 1950 suffered the
same fate in the court below (Cadbury (Swaziland) (Pty) Ltd and
Others v Mars Incorporated; Mars Incorporated v Cadbury
(Swaziland) (Pty) Ltd and Another 1998 (4) SA 707 (T)), an aspect of
the decision not appealed against.  The application for removal of
Cadbury's defensive trade marks was, on the other hand, dismissed and
this order is, with the leave of the court below (McCreath J), the subject
of the appeal.

[5] In support of its application for revocation Mars alleged that the
registrar had erred in allowing the applications for registration of
Cadbury's defensive marks because the evidence filed in support thereof
was not sufficient to indicate any conceivable connection in the course
of trade between animal foods and chewing gum.  In the words of the
deponent for Mars, there is a lack of affinity between chewing gum and
animal food: the purchaser of Chappie's dog food will not think of a
possible trade connection between the dog food and the manufacturer of
Chappies chewing gum.
[6] In addition, Mars alleged that the likelihood of an indication of a
connection in the course of trade did not exist any longer and that the
registrations were remaining wrongly on the register.  In this regard it
relied upon s 53 (4) of the 1963 Act.  McCreath J found that the evidence
did not justify the invocation of the provision (at 712D-E), but as counsel

conceded, since the removal of all trade marks on supervening grounds
is now regulated by the 1993 Act, the reliance on s 53 (4) was misplaced.
[7] Continuing with the narrative, Cadbury's evidence filed with the
registrar in the application for the defensive registration of “Chappie
Chipmunk” consisted of an affidavit by a director who stated that the
trade mark had been used widely over a substantial period of time in
relation to chewing gum, bubble gum and confectionery and that there
had been extensive sales and widespread and expensive advertising of the
chewing gum.  The affidavit concluded with a submission that from the
long and extensive use of the trade mark in relation to chewing gum,
persons seeing the mark attached to animal food will assume that it was
a Cadbury product.  No affidavit was filed in relation to the “Chappies”
trade mark.
[8] As the first line of defence to the application Cadbury relied upon

s 42 of the 1963 Act.  It could do so since the application was premised
upon an attack on the original registration of the marks.  Section 42
provided as follows:
“In all legal proceedings relating to a trade mark registered in part A of the register
(including applications under section thirty-three), the original registration of the trade
mark in part A of the register shall, after the expiration of seven years from the date of that
registration, be taken to be valid in all respects, unless -
(a)
that registration was obtained by fraud; or
(b)
the trade mark offends against the provisions of either section sixteen or
section forty-one.”
Mars, on the other hand, argued that the provision did not apply to
defensive trade  marks, a contention dismissed by McCreath J (at 711A-
712C) and rightly not persisted in during argument before us.
[9] Mars also argued that s 42 did not survive the repeal of the 1963

Act, emphasising  that the 1993 Act does not contain a similar provision.
On this question s 70 (1) of the latter Act is of significance -
“Subject to the provisions of section 3, and except as expressly otherwise provided in this
Act, the validity of the original entry of a trade mark on the register of trade marks existing
at the commencement of this Act shall be determined in accordance with the laws in force
at the date of such entry.”
(The introductory qualification to the subsection is of no consequence for
the present discussion and can be ignored.)  McCreath J, relying on this
provision and the presumption that a statute does not take away existing
rights, rejected the argument (at 710D-G).  With due deference to the
learned Judge, I do not believe that the presumption  necessarily carries
the day in the present case.  As exemplified by s 70 (2), the 1993 Act did
take away existing rights.   The real inquiry is whether s 42 was a
provision which, in the wording of s 70 (1), determined the validity of the

original entry of a trade mark.  The answer, according to the submission
by Mars, is to be sought in the fact that s 42 did not provide for criteria
for registering trade marks because its purpose was to introduce a period
akin to prescription in relation to trade marks registered in part A of the
register.
[10] The solution to the problem is not immediately apparent.  The
scheme of the 1993 Act concerning “old” trade marks is that questions
relating to their original entry are to be dealt with by the laws in force at
the time of entry (s 70 (1)) but whether a trade mark should remain on the
register is dealt with in terms of the new Act (cf Cadbury (Pty) Ltd v
Beacon Sweets & Chocolates (Pty) Ltd and Another 2000 (2) SA 771
(SCA)). Section 42 applied to “legal proceedings relating to a trade mark
registered in part A of the register”.  Under the current Act all trade marks
are registered in the same register and the distinction between class A and

class B trade marks no longer exists.  On the other hand, trade marks
which were on either part of the register appear to remain where they are
(cf s 3 (1)).  Mars is correct in submitting that s 42 did not set out criteria
for registration.  These were to be found in sections 10, 11, 12, 14, 16, 17
and 53 of the 1963 Act.  Some have been re-enacted in one or other form
in the current Act.  Not all of these criteria, by their very nature, could
have been satisfied in the course or by the lapse of time.  For instance, a
deceptive mark could not be registered under s 16 (1) of the 1963 Act but
if registered and if it remains deceptive it is subject to removal from the
register (s 10 (12) of the 1993 Act) notwithstanding s 42.  It follows that
the section, to the extent that it can be said to survive the repeal of the
1963 Act, has a somewhat limited operation under the new dispensation.
The registration requirements of s 53 concerning defensive trade marks
have not, however, survived the repeal of the 1963 Act and they have no

counterparts in the current Act.  Having said this, it seems to me that
McCreath J was correct in his conclusion.  Section s 70 (1) obliges one
to focus on whether s 42 “determined” the validity of the original entry.
The primary meaning of “determine” is to put to an end or to settle and
decide a question.  To put to an end to questions relating to the validity
of the original registration was the object of s 42.
[11] The next issue to resolve is whether s 42 applies to the facts of the
case.  Both these marks bear registration dates which precede by more
than seven years the commencement date of the current Act which is 1
May 1995 and that of present litigation during 1996.  However, their actual
registration fell within both seven year periods.  The reason for the
discrepancy is to be found in s 37 of the 1963 Act (now s 29 of the 1993
Act).   It provided that after acceptance and advertisement of the
application for registration of a trade mark and the time for opposition had

lapsed or opposition was unsuccessful -
“the registrar shall register the trade mark . . . as on the date of lodging of the application
for registration, and that date shall, subject to the provisions of section seventy-three
[which dealt with international arrangements], for the purposes of this Act be deemed to be
the date of the registration . . ..”

[12] The history and effect of a similar provision in the Australian Act
was the subject of Hunter Douglas Australia Pty Ltd v Perma Blinds
[1972] RPC 334 (High Court).   The issue there was whether the failure
to use a trade mark between the deemed date and the actual date of
registration could be a ground for removal of the mark.  The trade mark
owner argued that the deeming provision was not appropriate to the
particular ground for removal.  The Court disagreed and made the
following salient points.  The Act makes no provision for the entry of the
actual date of registration and that is not a fact to which the public has

access (at 336 lines 32 - 45).  A provision such as this is not a definition
provision.  What it does is to alter a fact and to require that the general
provisions of the Act be applied accordingly (at 337 lines 34 - 37).   Once
registered, the trade mark owner is entitled to commence infringement
proceedings in respect of acts done in the period after the date of
application and before the entry of the trade mark (at 339 lines 30 - 43).
All these considerations to a greater or lesser extent appear to be
applicable to our old and new Acts.  There is one qualification concerning
the last point - both our Acts provide that registration is a requisite for
instituting an infringement action (sections 43 and 33 respectively).
Although the repealed Act did not deal with remedies, the current Act
does.  In particular, it provides that damages may be recovered in relation
to acts committed after the advertisement of the acceptance of the
application for registration.  In other words, it also assumes that a trade

mark can be infringed before its actual registration.
[13] The reasoning of the Australian High Court appears to be
compelling and overrides contrary considerations such as the fact that
there may be substantial delays between the date of application and actual
registration making it unfair to saddle a competitor with the absolute bar
created by s 42 after the lapse of seven years calculated from the date of
application.  In the setting of defensive marks the competitor still had
some protection in the form of s 53 (4) of the 1963 Act: if the likelihood
of confusion no longer existed, the defensive mark could have been
removed.  The fact that it is no longer possible under the 1993 Act, does
not assist in the interpretation of the 1963 Act.
[14] It follows in my judgment that Cadbury's recourse to s 42 was
justified and that Mars was therefore barred from applying for the removal
of the defensive marks on a ground which related to their “original

registration”.  There is yet a second reason why Mars could not have
succeeded.   It will be recalled that a defensive registration in terms of s
53 (1) was premised upon the “opinion” of the registrar of a “likelihood”
of (to use a general term) confusion.  In Mars Incorporated v Candy
World (Pty) Ltd (supra at 575E-F) this Court held that the opinion of the
registrar was the jurisdictional fact for registration under the provision.
[15] At the time when the registrar was called upon to form an opinion,
Mars, who had opposed the applications for registration, had withdrawn
its opposition.  It thereby lost any right of appeal.   The proceedings
before the court below were not and did not purport to be appeal
proceedings.  Had there been an appeal,  the court could have substituted
its opinion for that of the registrar (s 68 of the 1963 Act).
[16] What Mars in effect is attempting to do is to resurrect its right of
appeal by attacking the opinion of the registrar in an indirect manner.  Its

case is not that the registrar did not form the opinion.  Instead the case
sought to be made out on the papers was that the facts placed before him
by Mars in the single affidavit mentioned above, were insufficient to
establish a likelihood of confusion and that he therefore erred in forming
the contrary opinion.  On what his opinion was based is at this stage
beside the point; whether he held the opinion is in point.  (It is necessary
to point out that, in any event, his opinion need not have been based upon
facts placed before him in any particular form or manner by an applicant.
He may have used his own knowledge and experience and have had
regard to other facts on file.  We know, for instance, that he had the
record of the previous proceedings relating to these two marks and which
culminated in the judgment of this Court in  Mars Incorporated v Candy
World (Pty) Ltd supra in which the extent of the use of the “Chappies”
trade mark had been set out.)   Because the existence of the registrar's

opinion was not called into question, the jurisdictional fact was not under
attack; in order to succeed, and in the absence of an appeal against his
conclusion, it should have been.
[17] The appeal is dismissed with costs, including the costs of two
counsel.
_________________
L T C HARMS
JUDGE OF APPEAL
AGREE:
MARAIS JA
PLEWMAN JA
MELUNSKY AJA
MPATI AJA