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 (BAT) group, was the registered proprietor of two South African trade marks for the mark PARLIAMENT in class 34 (cigarettes and tobacco products). Philip Morris Products S.A., part of the Philip Morris International group, applied for the expungement of these marks under s 27(1)(b) of the Trade Marks Act 194 of 1993, alleging non-use. The relevant period was the five years prior to 22 July 2008. Westminster bore the onus of proving bona fide use. Evidence showed that BATSA had not used the mark prior to late 2007, but manufactured cigarettes branded PARLIAMENT, launched them on a limited and geographically targeted basis (initially Upington, later Bloemfontein and Welkom), and sold them in small quantities during the relevant period. The High Court found that this use was not 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 a leading South African authority on the interpretation of 'bona fide use' under s 27(1)(b) of the Trade Marks Act. It clarifies that limited, geographically targeted, and strategically motivated use can still qualify as genuine trade mark use, provided it is real commercial exploitation and not merely token. The judgment underscores that motive to preserve registration does not, on its own, negate bona fide use.