Mars Incorporated v Cadbury (Swaziland) (Pty) Limited

Cadbury (Swaziland) (Pty) Limited was the registered proprietor of two trade marks: a name mark "Chappies" and a device mark consisting of a dancing chipmunk with the words "Chappie Chipmunk" and "Chappie Tjokker", registered in Part A of the register in class 30 (confectionery). Cadbury obtained defensive registrations for these marks in multiple classes, including class 31 (foodstuffs for animals). Mars Incorporated applied to remove Cadbury's defensive registrations from the register, as they were impediments to Mars's own applications for trade mark protection in class 31 for animal foods under the marks "Chappie" (name mark) and a device mark consisting of a dog's head with the name "Chappie". Mars had a substantial reputation in some foreign jurisdictions for dog food under the name "Chappie" but had lost its South African trade mark protection for "Chappie" in relation to animal food through non-use. Mars alleged that the registrar erred in allowing Cadbury's defensive mark applications because there was insufficient evidence of a conceivable connection in the course of trade between animal foods and chewing gum. The Transvaal Provincial Division dismissed Mars's application for removal, and Mars appealed with leave.

• Whether section 42 of the Trade Marks Act 62 of 1963 applies to defensive trade marks registered under section 53 of that Act
• Whether section 42 of the 1963 Act survived the repeal of that Act and applies under the Trade Marks Act 194 of 1993
• Whether the 'date of registration' for purposes of section 42 means the deemed date (date of application) or the actual date of registration
• Whether Mars could challenge the registrar's opinion that formed the jurisdictional basis for the defensive registration under section 53(1) of the 1963 Act in proceedings other than an appeal
• Whether the evidence before the registrar was sufficient to support the defensive registration of Cadbury's marks in class 31

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

The binding legal principles established are: (1) Section 42 of the Trade Marks Act 62 of 1963 applies to defensive trade marks registered under section 53 of that Act; (2) Section 42 survived the repeal of the 1963 Act through the operation of section 70(1) of the Trade Marks Act 194 of 1993, to the extent that it determines the validity of the original entry of a trade mark on the register; (3) The 'date of registration' for purposes of section 42 is the deemed date under section 37 of the 1963 Act (the date of lodging of the application), not the actual date of registration; (4) After seven years from the deemed date of registration, the original registration of a trade mark in Part A is taken to be valid in all respects (subject to the exceptions in section 42), and this bars applications for removal based on grounds relating to original registration; (5) The registrar's opinion under section 53(1) of the 1963 Act is the jurisdictional fact for defensive registration, and parties who do not appeal the registrar's decision cannot subsequently challenge the opinion in separate proceedings without attacking the existence of the opinion itself.

The Court made several non-binding observations: (1) Under the 1993 Act, defensive trade marks can no longer be registered because trade mark owners can now sue for infringement even if the mark is used in a different class, provided there is likelihood of deception or confusion due to similarity of goods or services (section 34(1)(b)); (2) The registrar's opinion under section 53(1) need not be based solely on facts placed before him in any particular form by an applicant - he may use his own knowledge and experience and have regard to other facts on file; (3) Section 42, to the extent it survived the repeal of the 1963 Act, has a somewhat limited operation under the new dispensation because some registration criteria (such as the prohibition on deceptive marks) could not be satisfied by the passage of time; (4) While it may seem unfair to impose an absolute bar under section 42 after seven years from the deemed date when there may be substantial delays between application and actual registration, competitors still had some protection under section 53(4) of the 1963 Act (which allowed removal if likelihood of confusion no longer existed).

This case is significant in South African trade marks law for clarifying the transitional provisions between the Trade Marks Act 62 of 1963 and the Trade Marks Act 194 of 1993, particularly regarding defensive trade marks. It establishes that section 42 of the 1963 Act, which provided for incontestability of trade marks after seven years, survived the repeal and applies to determine the validity of original entries under section 70(1) of the 1993 Act. The judgment confirms that the 'date of registration' for purposes of section 42 is the deemed date (date of application) under section 37, not the actual date of registration. The case also clarifies that the registrar's opinion under section 53(1) of the 1963 Act is a jurisdictional fact for defensive registration, and parties who withdraw opposition and fail to appeal cannot subsequently challenge that opinion in separate proceedings. The case demonstrates the limited scope for challenging old defensive trade mark registrations under the transitional regime.