Formal application for rectification required, confirms court

In Colgate-Palmolive Company v SmithKline Beecham plc (Case 24704/03, June 17 2004), the High Court has confirmed that where the registrar of trademarks erroneously issues a certificate of registration for a trademark in respect of which the opposition period is still open, interested parties should formally apply to correct the error on the register pursuant to Section 24(1) of the South African Trademarks Act.

The ruling is one of a string of recent cases that seem to suggest that the Trademarks Registry and the courts are moving towards a more formal approach to this issue. In the past, a practice arose whereby, in such circumstances, the attorney representing the trademark proprietor would return the incorrectly issued registration certificate to the Trademarks Registry, pointing out that the mark was under opposition. The registrar would then simply correct his records and the normal opposition procedure would continue.

In the case of Home Hyper City (Pty) Limited v Homemark (Pty) Limited (Case 96/11946), it was held (per Judge McCreath, sitting as registrar of trademarks) that the act of the registrar in issuing a certificate of registration can only be set aside on review or appeal. The registration certificate is not a nullity, even if the registrar was not competent to register the trademark at that time. The opponent's remedy is to apply for rectification of the register. McCreath held that the registrar may not simply remove the trademark from the register.

The view that the registrar cannot simply remove or delete an entry in the register in an informal manner was confirmed in a further matter heard before the registrar in January 2004 (Neville Dorrington v Hugo Boss AG (Case 90/2254-5)).

The High Court has now commented on this issue in the Colgate-Palmolive Case. In that matter, SmithKline Beecham plc's (SKB) registration certificate in respect of its MACLEANS TOTAL CLEAN trademark was issued, despite the fact that the opposition term had been extended by agreement between it and Colgate-Palmolive Company. SKB's attorneys contended that the certificate had not been issued in error and refused to return it. SKB furthermore alleged that Colgate was not entitled to move for rectification of the register under Section 24(1) of the Trademarks Act, which allows any interested person to apply to court or to the registrar to correct any error or defect in any entry in the register. SKB alleged that, in issuing the registration certificate, the registrar had not committed an "error" but had performed a pure, mechanical function. Colgate, it contended, ought therefore to have applied for expungement of the mark on one of the grounds provided for in the Trademarks Act.

The High Court held that the registration certificate had been wrongly issued and that Colgate had been correct to apply to court under Section 24(1). The certificate was declared void and the registrar of trademarks was ordered to amend the entry wrongly made on the register and to categorize the trademark as being pending. The court also punitively awarded costs against SKB on the attorney-and-own-client scale as a result of, among other things, its refusal to accede to Colgate's request that it return the registration certificate, despite knowing that the registration had been wrongly granted. The court pointed out that SKB could have itself applied to the registrar pursuant to Section 24 and avoided the costs of the application.

Accordingly, where a certificate is wrongly issued and sent to the proprietor or its agent, the prudent course of action would be for the agent to apply formally to the registrar in terms of Section 24, with the request that he correct the error in the register.

Kelly Thompson, Adams & Adams, Pretoria