Arjo Wiggins Ltd v Idem (Pty) Ltd and Another

Arjo Wiggins Ltd, a UK company, was the proprietor of the South African registered trade mark “Idem” in respect of paper, paper articles, cardboard, cardboard articles and paper stationery. Its actual South African trade consisted solely of carbonless copying paper sold to the printing industry through an associated distributor. Arjo also distributed various promotional items (such as notepads, pens and stickers) bearing the Idem mark, which were not sold but given away to customers. Idem (Pty) Ltd, whose own registration of the mark “Idem” had lapsed, applied under section 27 of the Trade Marks Act 194 of 1993 for expungement of Arjo’s registration on the ground of non-use. The High Court ordered expungement of the mark in respect of all goods except carbonless copying paper. Arjo appealed against the extent of the expungement.

The appeal succeeded in part. The expungement order was set aside and replaced with an order limiting Arjo’s registration to “paper and paper articles”, rather than only carbonless copying paper.

The case is a leading South African authority on the meaning of bona fide use in trade mark law and clarifies that promotional use alone does not satisfy statutory use requirements. It also establishes important principles governing partial expungement for non-use, particularly that courts should avoid overly narrow or commercially incoherent limitations of trade mark specifications.