Mars Incorporated v Cadbury (Swaziland) (Pty) Ltd and Another

Cadbury (Swaziland) (Pty) Ltd was the proprietor of the well-known trade marks “Chappies” and “Chappie Chipmunk”, registered in Part A of the register in class 30 for confectionery. Owing to their reputation, Cadbury had also obtained defensive trade mark registrations for these marks in other classes, including class 31 for animal food, under the repealed Trade Marks Act 62 of 1963. Mars Incorporated applied to the Transvaal Provincial Division for the removal of these defensive registrations, as they blocked Mars’s applications to register “Chappie” marks for dog food in class 31. Mars argued that there was no conceivable trade connection between chewing gum and animal food and that the registrar erred in granting the defensive registrations. The High Court dismissed the application, and Mars appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs, including the costs of two counsel.

The case clarifies the transitional effect of the Trade Marks Act 194 of 1993 on defensive trade marks registered under the repealed 1963 Act. It confirms that section 42 of the old Act continues to bar challenges to the original validity of long-standing registrations and underscores the finality of the registrar’s opinion as a jurisdictional fact where no appeal is pursued. The judgment is significant for trade mark proprietors and competitors dealing with legacy defensive registrations.