Westminster Tobacco Company (Cape Town and London) (Pty) Ltd v Philip Morris Products S.A. and Others

Westminster Tobacco Company, a subsidiary within the British American Tobacco group, was the registered proprietor of two South African trade marks for the word and label mark PARLIAMENT in class 34 for cigarettes. Philip Morris Products S.A., part of the Philip Morris International group, sought to have these marks expunged from the trade marks register under s 27(1)(b) of the Trade Marks Act 194 of 1993 on the basis of non-use. Philip Morris alleged that Westminster had not made bona fide use of the PARLIAMENT mark during the continuous five-year period ending on 22 July 2008. Westminster bore the onus of proving bona fide use. Evidence showed that BATSA, an authorised user, manufactured and sold limited quantities of PARLIAMENT cigarettes from January 2008 in selected geographic areas as part of what was described as a tactical execution strategy in the low-price cigarette market, rather than a full national launch. The High Court found the use not to be bona fide and ordered expungement. Westminster appealed to the Supreme Court of Appeal.

The appeal was upheld with costs. The High Court order expunging the PARLIAMENT trade marks was set aside and replaced with an order dismissing Philip Morris’s application for expungement with costs.

The case is an important South African authority on the interpretation of bona fide use under s 27 of the Trade Marks Act. It clarifies that limited, tactical, and geographically constrained use of a trade mark can still qualify as genuine use, and that commercial strategy choices do not negate bona fide use merely because the volumes are small or the use also serves to preserve registration.