Cadbury (Pty) Limited v Beacon Sweets & Chocolates (Pty) Limited and Another

Cadbury applied to the court for rectification of the trade marks register by requiring that an additional disclaimer be entered against Beacon’s registered composite trade mark for confectionery, which prominently featured the words “Liquorice Allsorts”. Beacon had registered the mark in 1986 and had used the term “Liquorice Allsorts” since about 1952. Cadbury did not challenge the validity of the trade mark as a whole, but contended that the words “Liquorice Allsorts” were descriptive of a type of confectionery and therefore incapable of distinguishing Beacon’s goods from those of others. Beacon opposed the application, arguing inter alia that the capability to distinguish had to be assessed as at the date of application for registration and that the court lacked jurisdiction to order a disclaimer without an attack on the entire registration.

The appeal was upheld with costs. The order of the court a quo was set aside and replaced with an order rectifying the registration of trade mark 86/3570 by inserting an additional disclaimer that the registration gives no right to the exclusive use of the name “Liquorice Allsorts” separately and apart from the mark. Beacon was ordered to pay the costs of the application.

The case is a leading South African authority on post-registration rectification of trade marks by disclaimer under section 15 of the Trade Marks Act 194 of 1993. It clarifies that the capability of matter in a registered trade mark to distinguish may be assessed at the time of rectification proceedings, and affirms that generic or descriptive product names cannot be monopolised through trade mark registration. The judgment underscores the public interest in keeping descriptive terms free for use by all traders.