Jurisdiction of the Court in Trade Mark Infringement Matters
Matters: Ambiguity Clarified
The Professional Provident Fund of South Africa v PD Jacobs and PPI Makelaars (judgment of Roux J handed down on 29 February 1996) was one of the first trade mark infringement cases to be decided under the new Trade Marks Act No. 194 of 1993. It also highlighted an ambiguity in the Act relating to the definition of "Court".
The new Act defines Court as follows:
"Court - means the Transvaal Provincial Division of the Supreme Court of South Africa, but in relation to any claim or counter-claim for removal, amendment or variation of, or other relief affecting any entry in the Register arising from or forming part of proceedings instituted in any other division of the said Supreme Court having jurisdiction in relation to the proceedings, includes that division in respect of such claim or counter-claim."
This definition was introduced in the new Act to clarify the situation where a counter-claim for expungement is made in a Court other than the Transvaal Provincial Division (see Spier Estate v Die Bergkelder Bpk en ‘n ander 1988 (1) SA 94 (TPD) and Sportshoe (Pty) Ltd v Pep Stores (South Africa) (Pty) Ltd 1990 (1) SA 722 (AD)).
The problem faced by the Court in this matter was that section 34(3) of the Act which deals with infringement provides as follows:
"Where a trade mark registered in terms of this Act has been infringed, the Court may grant the proprietor thereof the following relief, namely ..."
Counsel for the Respondent argued that the only Court which may hear infringement matters is the Court defined in section 1(1), namely the Transvaal Provincial Division.
Roux J concluded that if this argument were correct absurd results would follow and applied the following two presumptions. First, the legislature does not attend absurdities and, secondly, the general presumption against an interpretation that would oust the jurisdiction of the Supreme Court (see for example De Wet v Deetleefs 1928 (AD) 286 at 290).
The Learned Judge then concluded as follows:
"In my judgment, the object of the legislation was to avoid the impasse mentioned in the Spier Estate matter. Any division of the Supreme Court, having jurisdiction to hear an infringement matter, can now adjudicate upon any matter whether co-raised in convention or raised re-convention, which was previously held to be the exclusive function of the Transvaal Provincial Division.
The intention of the legislature, albeit badly expressed, can be summarised as follows:
a. Any division or local division of the Supreme Court of South Africa has jurisdiction to hear an infringement action subject, of course, to one or more of the traditional grounds of jurisdiction being presence. (Veneta Mineraria Spa v Carolina Collieries (Pty) Ltd (in liquidation) 1987 (4) SA 833 (AD)).
b. In those matters mentioned in section 53 and 57 of the Act the Transvaal Provincial Division has exclusive jurisdiction notwithstanding an infringement action in some other division.
c. In those matters mentioned in section 16(5), 24, 26 and 27, if they are independent applications, the Transvaal Provincial Division has exclusive jurisdiction.
d. If the matters mentioned in paragraph C above arise in infringement proceedings the Court having jurisdiction to hear the infringement action has concurrent jurisdiction with the Transvaal Provincial Division."
It should be noted that the legislature will be clarifying the ambiguity as there is a proposed amendment to section 34(3) of the Act to make it read:
"Where a trade mark registered in terms of this Act has been infringed, any division of the Supreme Court of South Africa having jurisdiction may grant the proprietor the following relief, namely ..."
Spoor & Fisher