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Sr,tnITEsoF THERrpusrtc or Sours Arruce - Perrurs, Desrcnsauo Coprancrr

', T
-'/ TRADE iVIARKSI}.I SOUTH WEST AT"RICAACT
NO. 4g OF tg73
[Assrxrro ro 24 M,ry, 1973] [Derc or CouusNcEMENT: 1 Jexu,q,Ry,1974]
(Uniessotherwiseindicated)
(English text signed by the State Presirient)

ACT
To provide for the regisnarion of trade marks rnd certification nnarks in the terntorY
of south west Afcca and to provideior incidentai matters.

n i t
IN|TR.ODUCTORY
1. Division of Act into parts.-This Act is divicied into se'renreenparts which reiate
to ihe icilorving marters resoectiveiy:
P.rnl I. Acministration (sec:ions5 to 9).
P-rnr II- R.egistrabieTracie Marks (sectionsi0 to i9).
P.*r III- Appiication for Registration (sectionsl0 to 25).
Plar IV. Opoosition (seclions26 to -:0).
Prnr v. Tire Registerof rracie Vlarxs isecrions-11to 3o.
P'rnr vI. il.egistration anci its Effects (sections 3i ,"o 12).
P.*r VII. Infnngement (sections-13to 46).
Plni viII. Duration and Renewai of R.egistraticn(secrion 47).
Prnr IX. Rr"gisteredUsers (secticn.l8).
P,rnr X. Assigament(sections49 to 5i).
P.nr Xi. Certification Nlarl<s(secrion52).
P.rnr XiI. DefensiveTrade Nlarks isec:ion 53).
P,rnr XIII. Powersand Duties of R.egrstrar(secricnsi4 io 5g).
PlRr XfV. Evicience(sections59 to 52).
?^rar XV' Apceeisto and Powersof iire Court (sections53 to 69).
P,\Rr XVI. Offences(sections70 to 7?).
PlRr Xrtfl. llisceilaneous (sections73 :o B.l).

2. Definitions.-{1) in this Act. uniessthe conrext otherwiseindicates-


"agent" means a person who, in terns of this Act, is entitled to reoresentanother
p e rs o n ;
"essignment" means assignmentby act of the panies ccncerned.,and .,Lssignrtor
"assignable" has a corresDondingneaning;
"certification mark" meansa mark registerecior Ceemecito have beenregistereduncier
section52;
'6court" meansthe
South-WestAfnca Division of ihe SupremeCourt of South Africa:

t"'.::U i ri ,, l i;,1,.
Srlrures oF THE RrpL'srtc on Sotrrn Ar'rucr - P.q.TENrs, DrsrcNs AND Copyrucnr
s. 2 Trade ilIarks in south west Africa Act, No. 48 of 1973 s. 2
65device"means any visual representation
or illustration capable of being reproduced
upon a surface,whether by printing, embossingor by any other means;
ttlegal practitionert' means an attorney of the
Supreme Court of South Africa or an
advocate of such Court duiy instructed by an attorney or agent to appear before the
registrar or his deputy;

"limitations" means any limitations of the exclusive right to the use of a trade mark
given by the registration of a person as proprietor thereof, including limitations of that
right as to the mode of use,as to use in relation to goods to be sold or otherwisetraded
in, or as to servicesto be performed, in any piace within the territory, or as to use in
reiation to goods to be exportecito any market outsidethe territory;
o'mark" inciudes a device,brand, heading,
label, ticket, neme, signature,word, letter,
numeral or any ccmbinationthereofor a containerfor goods;

"Minister" means the Minister of Economic Affairs;


"permitted use" rneansthe permitted use referred to in secdon48 (1);
"prescribed" meansorescribeciby or under this Act;
"register" means the register of tracie marks for South West Africa ieferred to in
section31;

"registeredtrade marktt neans a trade mark registeredor deemedto be registered.


under
this Act;

"registered user" me3ns a person who is for the time being registerei as such uncier
se c ti o n4 8 ;

"registrar" means the registrar of irade marks for South West Africa iefere<i to in
s e c ti o n6 (i );
'teguladon" meansany reguiation
macieand in force under this Act;
ttrepealedlaw" means those provisions
of the Patents, Designs and Tracie lvfarks
P'nnlrmrtinn 19:3, which reiateto trade marks and which are repealedby ftis Act;
r ^ vvrsuslrvu,

"territor,v" neans the territory of South West Africa;


"this Act" includes the iegulations;
('frade
mark", other than a certification mark, means a mark useC or proooseC to
be usedin reiation to goods or servicesfor the purposesof-
(a) indicating a connectionin the course of trade between the goocisor services
and some Dersonhaving the right, either as proprietor or as a registereduser,
to use the mark, rvhe:herwith or without an inciicationof the identity of that
)e rs o n : a n c
(r) distinguisiringthe goods or servicesin reiation to which the inark is used or
proooseci to be useC,liom the same icind of goods or serrices connected
in the courseof trade with any other person;
"transmission" means iiansfer by operation of law, devolution on the executor of a
person and any other rnode of transfer not being assignment,and tttansmit"
deceaseci
or "hansmissiblet' has a correspondingmeaning.

(2) Referencesin this Act to the use of a mark shall be construecias referencesro
the use of a printed or other visual representationof the mark, and in adciition,in the case
of a ccnLainer,use of such container and, in the caseof a mark which is capableof being
audibly reprociuced,the useof an auciiblereproduction of the mark.

(3) (a) R.ei'erences


in this Act to the use of a mark in relation to goods shall be con-
strued as referencesto the usethereof upon, or in physical or other relation to, goods.
A,UttL'!).lr';;.: i

Srerures oF THERrplurtc or SorrrH Arruca - Parrxrs, DEsrcNSAND Copyrucur


n
L.-./
ss. 2-8 Trade Marks in South West Africa Act, No. 48 of 1973 ss. 2-S

(b) Referencesin this Act to the use of a mark in relation to servicesshall be


construedas referencesto the usethereof in anv relat'on to the performanceof suchservices.

3. Application of this Act to trade marks registeredunder the repealedlaw.{l) Subject


to the provisions of section 80, this Act shall appiy to trade marks iegisteredor deernedro
be registeredunder the repealedlarv and such tricie marks shall be deemetjto be resistered
in part A of the register.
(l) Subject to the provisions of subsection(1), ail appiicarionsand.proceedings
commencedunder the repealedlarv shall be dealt rvith in accorciancewith thJ provisions
of that iaw: Providedthat, in the caseof an applicationfor the registrationof a trade mark,
the registrar may uDon a request by the applicant treat the appiication as an appiication
for registrarionin pan B of the register.

{. Act binds Adninistration.-This Act shail bind the Administration of the rerritorv.

PART i

Aoltxtsrnertox
! i '

5. Estabiishment of trarie marks office.{l) There shail be estabiished.an office to


be callei the traciemarks officefor South West .$rica.
(2) If lhe Vlinister cieemsit expeCient,the saicioffice urav Deestabiisheci
outsiciethe
terriror,vat a piace determinedby him.
(3) Any pi".e at which the said office is estabiisheduncier subsection(2) shail for
the purposes of the jurisdiction conferred upon the court by this Act be deemed.to De
situated within the area of jurisciiction of the ccun. and any offence under this Act com-
mitted at such piace or at any other place outside the territory where proceedingsunder
this Act are hearci and determined by the registrar in terms of sectioni4, m"y, notwith-
stanCingthe provisionsoianv other Iaw, be trieci by the magistrate'scourt of ihe disrrict
in which rhe placein questionis siruated.

6. Registrar of frade marks for South West .Urice.-(i) There shail be an officer styied
the registrar of trade marks for South West AJrica who shail be appointed subject to tire
laws governing the pubiic serviceand who shall, subject to the ciirJCtionsof the Minister.
have overall control of the traciemarks office for South 'WestAfrica.
(2) There may simiiariy be appointed a deouty registrar and an assistantre-eisriar
ot trad.emarks for South West Africa, who shail, subject to the ccntrol of the t.gfrrrur.
have all the powers coni-erredby this Act on the registrar and. who shall, wheneverthe
regisirar is for any reasonunabie to fuifii his duties. ecr temporariilzin his steaci.

i. -ceaiof trede marks oflficefor South West Africa.-There shail be a seal of the trade
marl<soiice for South West AJrice and the impressionof the seaishail be judiclaily noticeci.

8. Who may rct as frade mark agent.-(l) The registrar shall permit an agent to rj.o
on behalf of the person for whom he is agent any act in connection with registraiion und.er
this Act or any proceedingsrelating thereto: Provicied that no person otfer than a legal
practirioner or a person rvhosename has been entered in the reqistercontemoiatedin
subsection(2) shall be permitted so to act.
(2) The registrar may in writing authorize any person who, in the opinion of the
registrar, is suitably qualified and who is not by virtue of tne fact that he is i legal practi-
tioner entitled to act as an agent contemplatedin subsection(1), to act as such an agenr,
and shall keep in the trade marks office for South West Africa a register in which shail be
enteredthe namesand addressesof ail personsso authorized bv him.

585
Sr1rurrs oF THERppunric oF SourH Arruce - PereNts, DrslcNS AND CopvrucHr
ss. 9-12 Trade Marks in South West Africa Act, No. 48 of 1973 ss. 9-12

9. Unqualified personsnot to practise as trade mark agents.-(l) No person may on


behalf of any other person perform any act in connection with any registrationunder this
Act or any proceedingsrelating thereto, or for gain furnish advicein relation to such regis-
tration or proceedings,or describehimself as a trade mark agent for the purposesof this
Act or hold himself out, or permit himself to be describedor held out, as a person who is
entitled to undertake the work of a trade mark agent for the purposesof this Act, unless
he is a legai practirioner or a person whose name has been enteredin the registerreferredto
in section8 (2).
(2) Any person who contravenesthe provisions of subsection(1) shail be guilty of
an offenceand liable on conviction to a fine not exceedingtwo hundred rand.

PART II

RrctsrneslE TRADEMenxs

10. Essentialparticulars of trade marlis registrable in part A of register.{1) In orcier


to be registrablein part A of the register,a trade mark (other than a certification mark)
shail contain or consist of a distinctive mark.
(2) A mark which is reasonablyrequired for use in the trade shail not be registrabie.
(3) The name of a company, individual or firm not representedin a specialor parti-
cuiar m&nner. a signatureother than that of the appiicant for registrs.tionor of some pre-
decessorin his business,or e word being in its orciinary signification a suraame,sirall not
be registereduniessit is proved that it is distinctive.
(a) No regisrrarionof a container in terns of subsection(1) shall pre'ient the bona
.fide useby others of any utilitarian or functional feature embodiedin suchcontainer.
(5) The registration of a container in terms of subsection(1) D&Y, upon application
to the court or, at the option of the appiicant and subject to the provisions of section 69,
to the registrar by any person interested,be expunged by the court or the registiar, as the
case may be, if it is establishedthat the registration is or has become likely to limit the
developmentoi rny ail or industry.

11. Requisitesfor registration of a trade mark in part ts of the register.-ii) In order


to be registrabie in part B of the register,a trade mark shall, in reiation to the gcods or
servicesin ..tpe.t of which it is proposed to be registereC,be capabie of becoming regis-
trable, through use,in part A of the registerin respectof such goods or seryices.
(2) A trade mark may be registeredin part B of the register notrvithstandingthe
registration in part A of the registerin the name of the same proprietor of the same trade
mark or any part or parts thereof.

12. Meaning of "distinctive".-{1) For the purposes of section 10 "distinctive"


means adapted. in relation to the goods or servicesin respect of which a tracie mark is
registeredot p.oposed to be registered.to distinguish goods or servicsswith which the
prbprietor of the trade mark is or may be connectedin the course of trade from goods or
iervices in the case of which no such connection subsists,either generailyor, where the
trade mark is registeredor proposed to be registeredsubject to limitations, in reiation to
use within those limitations.
(2) In determining whether a trade mark is distinctive as aforesaid,regard may be
had to the extent to which-
(q) tire trade mark is inherently adapted to distinguish; and
(r) by reason of the use of the trade mark or by reason of any other citcumstance,
the trade mark is or has become adapted to distinguish. :
Sreru"rns oF THE Rgpr,Ruc or Souni Ar.ruc.L - Parrxrs, DesIcNs AND Copvmcnr
f , ss. 13-17 Trade Marks in South W'estAfrica Act, I'{o. 48 of 1973 ss. 13-17

13. Registration to be in respect of particular goods or classesof goods.{1) A trade


mark shall be registeredin respectof a particular class or particuiar classesof goods or
servicesor in respectof goocisor servicesfalling in such ciassor ciassesin accordancswith
the prescribed ciassification.
(2) Where a trade mark has, either before or after the commencgrrentof this Act,
been registeredin accorciancervith the requiref,rentsof subsection(i) and, during the sub-
sistenceof such registration, the prescribeciciassificationin accordancewith which the
tracie mark was registeredas aforesaidis revised cr substituteciby a new classification,the
proprietor of the trade mark shail, upon the renewal of the registration thereof in terms
of section-17.appiy rn the prescribeCmanner for revision of the ciassor ciassesin which the
tracie mark is registered.so as to bring it into conformity with the reviseCor substituted
ciassif,cation.
(-1)If the re'riseCor substitutedciassificationreferiecito in subsection(2) iesuits in
two or more identical tracie marks owned by the same propietor which were und.erthe
ore'*riouslegistration iegisreredin separateciasses,failing within a singieciass,such m.arks
shail, if the;r have :he sane re-sistrationdate. be consoljdarei as one registration in the
revised cr substituted ciass.or if as a resuit ot the levised or substituted classificationa
traciemari<is requirei to be iecorded in more ihan one ciass,such nark sirall be deemedto
be separateiyregisteredh eachciassin wiricn the mark is so iecordeciancishall be treateCas
a seDarare:ladenark ior the Durposesof renervaithelecf in eachciass.

i4. \ilhat regisrrebiefrade mark may not contain.-Tire :egistrar nav refuseto ;egister
a ilace nark .vhich ccntains any of the foilowing:
i.a,1the arns or seai of the territory; or
(,r) any wcrd. ietter or cie.ricernciicadngGoverrment Datronage;or
(_t) any mark specifredin the ieguiations as being a .:roiribiteri nark ior the rur-
?osesof ihrs section.

i5. ),iame or representationof person.-iVhere acpiicaticn is mad.efor registration of


a tiece marl<whrch consistsof or inciuciesihe name or any representationof a peison, ;he
:egistrar:tna:/require the aopiicant to furnisir him rvith the ccnsenr or that person or, where
suc,l person is deceasei. of his or her legai iepresentative,to the name or represenniion
appeanngin ihe tradenarx.

'ee
i6. ?rohibition of registrrtion sf ggrrrin mstter.-il) It shajl nor iawfui io register
as e :laie m.ari<or Dan ;f a ;recie inark 3ny :natter ihe use cf wlich .,vcuicibe iikei;l to
4.f:
.:..-'
I
cieceiveJi osuSe:oniusicn orwoulci be contrcry io iarv or noraiit;r or wouid.be iikeiy to
gl'e flienco or ceuseaniicyanceto any Derscn or ciassof cersonscr -vouid otherwisebe
iiisentitlei io proteclion :n a ccurr of iaw.
,::) f, in ihe cpinion cf the reglstrar. r :riie marl< wiil, in use. be iikeiy io cieceive
as io :he character or quaiir.vof some. but rc''t lil, of the goocisor serrricesinciucieCin lhe
specifrcaticn,ihe registrar ilcy, notwithstanciing*re provisions oi subsection(i) anci of
section 36, uoon receiproi rn undcrtaking by the proprietor cf the traciemarK that he wiil
limir rhe use of the trade rnark to goocisor serricesin relation to whicn such use wiil, in ihe
opinion of the registiar, :rot be likeiy to d.eceive.register the irade nark in respecl of ail
the goocs cr serricesinciucieciin the specificetion.

ti. Prohibition of registretion of trade marks resembling eech other.{l) Subject to


the provisions of subsection(2), no trade mark shail be registerei if it so resemblesa trade
mark beiongingto a differentproprietor and aireaciyon the iegisterthat the useof both such
trade marks in reiation to goods or servicesin respectof whicn they are sought to be regis-
tereci,and registered.wouid be likeiy to deceiveor causecon-fusion.

(IssueNo. ,1 589
Srlnrrss oF THE Rrpusuc or Sotmr Arruca - Parsms, DrstcNS AtiD Copvnrcrn
ss. 17-20 Trade Marks in South West Africa Act, I{o. 48 of 1973 ss. 17-20

(2) In the caseof honest concurrent use or of other special circumstanceswhich may
make it proper to do so, the registrarD&y, on application in the prescribedmanner,register,
subject to such conditions and limitations, if any, as he may think it right to impose, trade
marks the registration of which would otherwise be in contravention of the provisions of
subsection(1).
(3) When separateappiications are made by different persons to be registeredas
proprietors respectiveiyof tracie marks that so resembleeach other that the use of such
trade marks in relation to goods or servicesin respectof which they are respectivelysought
to be registeredwould be likely to deceive or cause confusion, the registrar may refuse
to registerany of them until the rights of those personshave, upon application in the pre-
scribed manner, been detemined by him, or have been settied by agreementin a manner
approvedby him.

18. Regisnation subject to disclaimer.-If a trade mark-


(a) contains any part not separatelyregistereciby the proprietor as e.irade mark:
or
(b) contains matter common to the trade or othenvise of a non-distinctive
character
the registrar or the court, in decicing whether the trade mark shall be enterecior shall
remain on the register, may require, as e condition of its being enterei or renaining on
the register-
(i) thar the proprietor sirail disciaim any right to the exciusiveuse of any such
part of the traciemark. or to the exciusiveuse of ail or any portion of any
such matter as aibresaid,to the exciusiveuse of which the registrar or the
court hoids him not io be entirled; or
(ii) thar the proprietor shail make such other <iisclaimeror menorancium as the
regisrrar or the court may consider necessaryfor the purtose of <iefininghis
rights uncierthe registration:
Provided that no disciaimer or memorandum on the register shail effect any ights of the
proprietor oi a trade mark exceptsuch as arise out of the registration of ihe iracienark in
iespect of which the disclaimeris made.

19. Requirenentsin regnrd to blank spaces.-If a trade mark contains any biank space
or spacesapparently intendedfor adciedmatter, the registrar may, in ciecioingwhether the
trade mark sirail be enteredon the register,require. as a condition oi its being entereCon
rhe register,that rhe biank spa€ or spacesshali, in use, be occupiecioniy by matter of a
whoiiy descriptiveor ncn-distinctivecharacteror by a :rade mark registereciin the name of
the sameproprietor in respectcf the samegoocisor by e trede mark of whicn ire is a regis-
tered user in respect of rhe same goociswith the ccnsent of the proprietor of such iracie
mark. provideC that, in both cases.use cf such trade mark is not iikeiy to cieceiveor cause
ccnfusion.

PART IiI

AppricertoN FoR Rtclsrne.rroN

20. Application for registration.-(1) Any person claiming to be the proprietor of a


trade mark used or proposedto be used by him and who is desirousof iegisteringit, shall
appiy to the registrar in the prescribedmanner for registration,and the appiication shall be
accompaniedby the fee prescribed.
(2) Subject to the provisions of this Act, the registrar may refusethe application or
may accept it absoluteiy or subject to such amendments, modifications, conditions or
limitations (if an_v)as he may deem fit.

'l', i -'r'j

(IssueNo. 7) 59i
Sreruras oF THERrpusuc oF SourH Arruce - PI.IENTS,DESTcNS AN-DCopyrucrrr
ss.20-Zl Trade h{arks in South West Africa Act, l,[o. 48 of 1973 ss.2A4A

(3) In the caseof an application for registration of a trade mark (other than a certifi-
cation mark) in part A of the register,the registrar Diry, if the applicant agrees,instead of
refusing the application, treat it as an application for registration in part B of the register
and deal with the appiication accordingly.

(a) In the cascof a refusal or conditionai acceptanceof the application,the registrar


shall, on application by the appiicant in the prescribedmanner and on payment of the pre-
scribedfee, statein writing the grounds for his decisionand the data usedby him in arriving
thereat,and the decisionshall be subjectto appealto the court.

(l The provisions of section 63 shail mutatis mutandisapply to an appeaiunder this


section,and on the appealthe court shall, if so required,hear the appiicant and the registrar,
and shail make an order determining whether and, if so, subject to what amendments,
modifications,conditions or lirnitations (if an-v-)
the appiication is to be accepted.

(6) Appeals under this section shall be hearcion the data so stated by the registrar,
and such further data as may have been iaid before him by the applicant, and no further
grounds of objection to the acceptanceof the aopiication shail be ailowed to be taken by
the registrar, other than those so stated by him, excopr by leave of the court hearing the
appeai, and where any further grounds of objection are so taken, the applicant shali be
t. ,i entitled, on giving notice as prescribed,to rvithdrarv his appeal without payment of costs.

(7) The registrar or the court, as the casemay be, may at any time. whether before
or after acceptanceof the appiication. correct any error in or in connectionwith the applica-
tion, or may permit the aopiicant to amend his appiication uDon such tenns as the registrar
or the court, as the casemav be, may think nt.

21,. Advertisementof acceptedappiication.-When an appiication for registration of


a trade mark has been accepted,whether absoiuteiy or subjectto conditions or [mitations,
the applicant shail, as soon as may be after acceptance,causethe application as accepted
to be acivertisedin the prescribedmanner, and the advertisementshall setforth all conditions
and limitations subjectto which the appiication has been accepted.:Provided that the regis-
trar nay require an appiication to be adveniseciin the prescribed manner before accept-
ance if it reiatesto a mark in respectof wirich proof that it is distinctiveis requiredin terms
of section 10 (3), or in any other casewhere it apoearsto him that it is expedientby reason
of any exceptionalcircumstancesso to do, and where an aoplication has been so advertised
the registrarmay, if he thinks fit, require it to be advertisedagain rvhenit has beenaccepted.

22. Registration of parts of trade mark.-Where the proprietor of a trade mark ciaims
to be entitied to the exciusiveuse of any part thereof separateiy.he may apply to register
the whole and an;l sucr part as separatetrade rnarks.

2-1. Rights in relation to parts of trade merk.-Each separate trade mark referred to
in section 22 shall compiy with all the conditions of an inciepencienttrade mark and shall,
subject to the provisions of sections-18(a) anci 39 (2), have all the rights attached to an
independenttrade mark.

U. Proposeduse of trade mark by body corporate to be constituted.-(1) No applica-


tion for the registrationof a trade mark in respectof any goods or servicesshall be refused,
nor shall permissionfor such registration be withheld, on the ground oniy that it appears
that the applicant Coesnot use or propose to use the trade mark-
(o) if the registrar is satisfiedthat a body corporate is about to be constituted,
and that the applicant intends to assignthe tiade mark to the body corporate
Srertms oF THERrprnuc oF Sourn A-r'nrca - Prrexrs, DEsrcNSAND Coprnlcnr
'West
ss. U-n Trade fufarks in South Africa Act, No. 48 of 1973 ss,24-21
'i---tr
,
i

with a view to the use thereof in reiation to those goods or servicesby the
body corporate: Provided that the trade mark shall nor be registeredunless
and until the registrar has been placed in a position to registerthe assign-
ment in termsof section51 simultaneouslyrvith registrationof the trademark;
or
(b) if the appiicatiou is accompanied by an application for the registration of
a Dersonas a registereciuser of the trade mark, and the registrar is satisfied
that the proprietor intends it to be used by that person in reiation to those
-goocisor servicesand the registrar is also satisfied that ihat person will be
registereCas a registereciuser thereof immediatei,vatter the registrationof the
traciemark.

(2) The provisionsof section,16 shailiraveeffect.in reiationto a trad.emark legistered


under the power ccnfeirei by subsection(1) of rhis secrion,as if for the reierencein sub-
section(1) (a) of :hat sectirn to an intention on the part oi an eoplicantibr iegistrationthat
a trade mark shouicibe useCby him, there were substitutei a iet-erenceio an intention on
his part that ir sirouicibe useciby rhe boci;rcorpor3te or registerei user ccncelnei.

(3) The registrar mav, as a cond.itionof the exerciseof the Dower confereci by sub-
d
t. seciion (i) in favour of an appiicant who ieiies on en intention to assignto e body cor-
porate as aforesaici,require him to give securitr'for the costs of any proceeciingsleiative to
ar)/ oDpositionor apoeaiby him, anc. in cefauit of suca securitybeing duly given, may treat
the aopiicatjonas abandoned.

25. Non-compietedepolicedons.---1,1) If, bv ieason of default on rhe can of rhe appii-


cant, alter ecceDtanceoi lhe apoiicetion.rhe resistrationoi a traciemark has nct beel ccm-
pieted within sii nonths iicm the date of such ecceptance,rhe iegistrar shail give rodce oi
rhe n-on-contpietionto the apclicant. ancl.if at rhe exlirarion of rhin;r daysfrom that notice
or cf such turther time .s in. registrar rna.va.ilorv.ihe registration is not compiered,ihe
aopiication shail be deenec to have been abanConei.

(2) If ihe eppiication is act accectedenci :he aopiicant, having reen 3c.,,iseicf :he
registrar'sobjections to the apoiication. f-aiisio iake any acrion within ihree nonths of the
date of suchad.vice.ihe appiiiaiion shail be deemecto have beenabancioneci.

PAR.T IV

n
t:- .l
CppcsirloNr

26. Opnositionto regist13fi6a.-;,1)Any Derscnihereinafterieferieri io ns :he ,lbjectcr,,


fivY, within iwo ncnths irom ihe iiate of the adver:isementof the eooiicatjon in lerms ci
section21, or such iurther peiod es:he lesisrrar;na'r ailorv. ser-/eon;he apolicant
et Us aciress "vithin
.or serziceanci locigert ihe iraii.e inalks crice a notice of ooposition-to the
registraticn cf ihe tracie marl<. selting cut the 3rcuncis on whicn he reiies ro supDon iris
notice, ancirrooi oi serviceto ihe satisrhcrionof tte registrar shail be furnisired.

27. Lodging of ccunterstatement by apptricant.-(i) Wirhin one monrh after the lodging
of notice of opoosition, or within such iurlher periocl as ihe iegistrar may ailow, the appli-
cant mav sel-reon the ob-iectorat his aci.ciress
for service anci iocigeat the traciemarks office
a counterstatementsetting out the -qroundson which i:e reiiesin supporr of his apoiication,
and proof of sen,'iceio the satisfactionof the registrar shail be furniineO

(2) If the applicant faiis so to locigea counterstatenent,he shaii be deemedto have


abandonedhis apoiication.

QssueNo. 7) 595
Srenms oF THE Rrpu:suc or Sows Arruce - Perslrrs, DesrcNs AND Copyrucnr
ss. 28-30 Trade Marks in South TY'estAfrica Act, No. 48 of 1973 ss. 28-30

28. Informd proceedingsbefore registrar.{1) The registrar shall, with the consent
of both parties,and on payment of the fee prescribed,considerthe notice of opposition and
ttre counterstatementthereto, and shall reconsicierthe application and the u...ptuo.e there-
of, and shall then, with or without hearing the panies, as they may agree,decide-
(o) to reject the appiication; or
(D) to register the trade mark; or
(c) that he is prepared to register the trade mark subject to such amendments,
modifications,conditions or limitations as he aray cieemfit; or
(d) to direct that the normal opposition procedure as hereinafter prescribed
be foilowed.
(2) If the registrardecidesin terms of subsection(1) (c) that he is preparedto register
the tracienark subject to such amendments,mociifications,conditions or ilmitations as he
may deen fit, and the applicant does not accept such amendments,modifications, condi-
tions or limrtations within such period as the registrar may deternine. the appiicant shall
be cieemedio have abandonecihis application.
(3) The registrarshail be entitled to take into consicierationsuch acimissionses either
or loth of the parties nay be preparedto make, even if such acimissionsare not inciucieciin
the notice of ooposition or ccunterstaterrent.
t

(a) No order shail be made in respect of the cosrs of the proceeiinss under this
section.
(5) No appeai shail iie against a decision cf the :esistrar siven uncierthis section.

29. Formai hearing of opoosedappiications.-(1) In the e./enrcf the proceeciingsnor


belng determined in accoroancewith the provisicns of section 13, or in i,he .'r.rr of tne
registrar directing that the eormal opposirion procedure be foilorved. e'riciencemay be
aiciuced by the parties in the prescribedmanner.
(2) The registiar shall fix a ciayfor the hearing of the appiication ancishail give norice
thereof to the aopiicant ancithe objector at iheir iesoectiveacidresses ior seryice.
(3) On the ciay so ixeC, or on any other day to which lhe heaing is acijourned,the
reqistrar shall, on payment of the l'ee prescribeci,hear the appiicant anci rhe objecror anci
their respectivewitnesses(if any) unless the eviciencehas beJn submitted in affidavit form
and the registrar does not require or permit e.ricience
to be given viva.toce,ancishaii ciecicie
whelher the application is to be refusedor whether it is to be grantecieirher with or wirhout
rncdifrcationsor conditions.
(-t) The registrar may nake such orcier ts :o the costs cf ine procsedlngsas f,lay sesm
just anci iris order shail ce eiorceable in ail iesDectsas lf it were 3 judgment of a singie
jucige of ihe court.
(5) The decisionof lhe registrar shail be subject ro apceai :o the ccurt anci the pro-
visions of section 6-: shail mutatis mutanriisaool,r.

30. Appeai againstregistrar'sdecision.-(i) Cn appeal ihe court shail hear the parties
and the iegistrar. if he desiresto be hearci,and shaii make an orcier determining wherher
and subjectto what conciitions(if any) registrationis to be permittei.
(2) On the heanng of an appeai under this sectionany partl/ il&,v, by speciaiieaveof
tile court, bring forward further evidencefor the considerationof the court.
(3) (a) On an appeal under this section no furrher grouncis of objection to the regis-
tration of a trade mark shail be allowed to be taken by t[e objector or the registrar, other
tlan those so stated as aforesaid by the objector, nor shail the ipplicant be enritled to raise
any further grounds in support oihis appication, except Uy spiciai leave of the court.
Srarrrrss oF THE Rrpusuc oF SourH Arnrc.c. - Persxrs, Drsrcxs euo Copytrcnr
ss. 30-32 Trade tuIarks in South West Africa Act, No. 48 of 1973 ss. 30-32

\. .J (6) If any party, by special leave of the court, raises any further grounds and the
other party decidesin the light thereof not to pursue the proceedings,the court shall make
such order as to costs as it may deem fit.
(a) The court may in its discretion require the appellant to give security for the
costs of the proceedings relative to the appeal and, in default of such security being given,
treat the appeai as abandoneC.
(-<) In the case of proceeciingsunder this Part, the registrar may in his ciiscretion
require either or both partiesto give securityfor the costsof the proceedingsand, in default
of such security being given, may treat the opposition or application as abandoned.

PAR.T V

T^rll RrclsrER oF Taeor Vlelxs

-:1. Tae register.-(1) There shail be kept at the tracie marks office a iegister of tracje
mar<s in wiricn shaii be enrereciparticulars of-
(al ail aoplications to iegister trade marks anci all registrations of tracie marks
wiih the names and acidressesof their proprietors and cf all registered users
thereof, togerher with the ciateof :egistration and tle date of expiraion of rhe
registration;
(,t) notifications of assignments,transmissions and disciaimen; and
(t) any other mattersieiaring to registereCtrade marks which may be prescribei.

il) The reg:'stershail be ccmprisei oi'two Darts cailed respectivelypart A ancipart B.


(3) Tae register kepr uncier the repealed iaw and e{sting at ttre commencement of
ihis Act shail be inccr^corateCwith and form part oi parr A of the register kept under this
Act.
(a) Tle iegister shail ccmprise ail tracie marks which are registerei or are cieened
to be iegistereCunder this Acl anci shail inciicate rvhether tley are registereciin part A or
pari B of the register.
(5) The tegister shail, on payment of the prescribedfees,and subjecrro the provisions
of this Act, be open at a1lconvenient times during offce hours to inspecion by the oublic.
(6) A certifrecicopy of an entry in any register kept under this Act, shail, subjecr to
any special arovisions io ihe contrary contained in this Act, be given to any perscn who ap-
plies icr such a copy ancipa;rs lhe prescribedfee.

?t
J-. ^{mendment
of register.{1) The registrarmal/ correctany error in the legister
made by an officiai of ais ofrce.
(l) iie iesistiar Day, on ieguest naie in :he prescibed manner by the registered
proDnetor of e trade llark, and on pal/mentof the t'eeprescibed, amend or aiter the register
by-
(a') conecting any effor in the name or address of the regisrered ^Dropnetoroi
ihe rraciemark: or
(,r)
aitering the name or acidressor adiress for serviceof the registereCprooietor
who has changedhis name or addressor addressfor service;or
(c) canceiling the registration of ihe rraciemark; or
(,i) striklng out any goods or servicesor ciassesof goods or servicesfrom those
in respectof which the trade mark is registered;or
(e) entering a disclaimer or memorandum relating to the trade mark which does
not in any way extend the rights given by the registration of the trade mark.

-,.:
- \:\-
;-..'1,';-l.ir'.t i.d,- "
,,.,!r-s"lli .i
'' -: (IssueNo. ?)
1 *:.,,ft|i I , .t ; r,,,6,,,:.,a,#ir*ili,ri'*#',*
r,r+,4,6ii:lr
Srerurrs oF TIIE RrpL.suc oF Sourr{ Arruca - ParE\TS, DEsrcNs AND Copnlcsr
4tl-\ ss. 32-35 Trade Marks in Soutlr lV'est Africa Act, l,{o. 48 of 1973 ss. 32-35
\J
(3) The registrar D&y, on request made in the prescribedmanner by the registered
proprietor or a registereduser of a trade mark, and on payment of the fees prescribed;
correct any error in the registerrelating to such trade mark or enter therein any changein
the name or addressof such registereduser.

(a) Any decisionof the registrar uncier this section shall be subjectto appeai to the
ccurt.

33. Generalpower to rectify entriesin register.-(1) Any person aggrie'reciby the non-
insertion in or omissionfrom the registerof any entry, or by any entry made in the register
rvithout sufficientcauseor by any entry wrongiy renaining on the reeister,or by any error
or ciefectin any entry in the register,may appiy to the coufi or, at the option of the acpiicant
and subject to the provisions of section 69, on payment of the fees prescibed in the
presclibed manner, to the registrar, for the desired relief and thereupon the court or :he
registrar, as ihe casemay be, may make such order for making, expunging or varying the
entry as to it or him may seemflt.

(2) The court or ihe registrar, as the case may be, m.ayrin any proceeiings uncier
this ;ection decideany questionthat it i:ray be necessaryor expedientto decidein connection
with the rectifrcation of the iegister.

(3) In the e'rent of the registrar being satisfiedthar any enrry reiating to the regisra-
:ion. assignmentor transnission of a trace nark has been securedby fraud or erisrepresen-
iaticn cr that any such entry was nad.e rvithout suttrcient cause or wrongly renains on rhe
regisier, he shail aiso rave locusstanciiio appiy to the couri under the provisions of ihis
section.

(4) Aly order of the court rectifying :he legister shall direct that noice of fre 1sgrifi-
cation shail be sen'ei on the registrar, and the registrar shail, on receipt of the notice
together wirh the aopiicarion on the form prescibeC, rectify the registeraccordingr.v.

(-{) The tower to iectify the registerccnferreCby this seciion shall inciuie power ro
aiter a registrationin lari A of the registerto x iegistlation in part B of the register.

3.{. Aiteration of registeredtrade mark.-{'i) The registereCproprietor of a rade mark


f,tral/,on payment of ihe fee prescribei, appiy in the prescdbei nanner to the regisuar for
leave to aici to or aiter the traciemark in any rranner not substantiaiiy aff"ectingthe identiry
therect, and the registrar nay refuse leeve or xtay grant it on such terms anci subject :o
such iimitations as he may think fit.

(2) (a) The registrar shall require the appiicant to acivenisethe appiication in rhe
n'rrcruuer
J.rJUrrL,eLl
rrocn-ikori ^nn.
and, if within the prescibeC peiod irom lhe tiate of the ad.rertisenent
f,n)/ leison iodges a notice of opoosition to :he appiication in the prescribedmannervith
the iegistrar, the iegistrar sirail, after hearing the parties, if the;,'rvish to be heard. decicie
;he natter.
(b) The provisions of sections 25 lo -:0 inclusive sirail mutatis mutanriis3ppiy
to any proceeCingsuncierthis section.

35. Fower to expungeor yary registration for breach of condition.-lf the registered
proprieror or registereduser of a traciemark ccntravenesor fails to observeany conciition
entered in the register in reiation thereto, the court or the registrar, as the casemay be, may
on application to the court, or, at the option of the applicant and subjectto the provisions
of section 69, to the registrar by any person aggrieved, or on appiication to the coun by
the registrar, make such order for expunging or varying the registration of the trade mark
as to lt or him mav seemf;t.

(Issue No. 7) 60i


Armce - Pargvrs. DrslcNSANDCcpvrucgr
Sr,lrures oF THEREpratrc or Sourg'14/est
ss.'36-37 Trade Marks in South Africa Act. l'{o. 48 of 1973 ss.36-37

ir'.'-j
36. Removal from register and imposition of limitation on ground of non-use.{l) Sub-
ject to the provisions of sections16 (2) and 53, a registeredtrade mark DaY, on application
to the court, or, at the option of the applicant and subject to the provisions of section 69,
to the registrar by any person aggrieveci,be taken ofr the register in respect of any of the
goods or servicesin respectof which it is registered,on the -rround either-
(a) that the trade mark was registeredwithout any bonafrie intention on the part
of the applicant for registration that it should be useciby him in relation to
those goods or seryices,and that there has rn fact been no bonafide use of
the trade mark in ieiation to those goods or servicesby any proprietor thereoi
for the time being up to the date one month before the ciateoi the appiication;
or
(r) that up to the date one month before the date of the appiication a continuous
peiod of five years or longer eiapseCduing which the tracie mark was a
registerecitracie mark and during rvhich there lvas no bona -fide use tlereci
in reiation to those gccCs or servicesby any propietor therecf ior the tine
b e i n g ;o r
(c) subject to such notice as '.-heccurt or the registrer. as :he casemay be, sirail
direct, anci subject to the provisions of fte ieguiations. that. in the casecf a
trade mark legrstereciin the name of a bociy corDorate.or :n the name of a
l i natural person, sucn bcdy ccr-Doratehas been dissoi.rei. or such naturai per-
son has died, nor less than two years prior to the date ot ihe application anci
that no application for registration of an assignmert cr suce :iaoe mark has
been maciein terns of seclion 5i:
Proviciei that (exceptwhere ihe appiicant b.asbeen pernrttei uncier sec'.ion17 tl) to register
a resem.biingtrade mark in respectcf the goccisor ser-zicesin question cr wirere ihe registrar
or the ccurt, as the case may be, is oi opinion ihar he may properiy be per:laitteciso to
register such a trade marK), the regisriar or the ccurt may rel'use 3n eppiication nade
unter paragraph (c) or tb) of rhis subsectionin reiarion to any goods or ser.rices,if it is
shown lhat there has been, before the reievant date or during the reievanr peiod, as iJte
casema)/ be, bonaf,cie use of the tracienark by any propietor thereoi icr the time being
in relation io goods or serricesin iespect of wirich the irade marK is ieg:sterei: Proviciei
funher thar the registrar or couit may lefuse en appiicarion aaie unier paragraph ic'l
of this subsectionin reiation to any goocisor serviceslf it is sirown :har ihe rrade marj< ls
useCor proposed to be useCin reiation to such goois or servicesby e successorin title of
the registereCproprietor.

(:) An aopiicant shail not be entitled to reiy for the pur?oses of subsection(i) iD)
on any non-useof a tiade mark rhat is shorvn:o have been due to sceciaicircumstancesin
the traoe ancinot to any intention not to use or to rbandcn the traie nark in ieiarion to ihe
gooCsor seriices to which the appiication ieiates.

PAR.T Vi

R;crsrrrTroN ANDtis lrnrc:s

3i. Registration.-(1) When an apoiicarion for regisuation cf a tracie nark in part


A or in pan B of the registerhas beenacc:pteciancieiverdseciin the prescribedmanner anci
either-
(a1 the application iras not been opposei and the time ior notice of opposition
has expired;or
(b) the appiication has beenopposeciand has beengranteC,
the registrar shall register the trade mark in pan A or part B, as the case Inay be, oi the
register as on the date of the lodging of the applicaCon for registration, and that date shall
Srarures oF THERlpusuc oE Sounr Arruce - ParrNrs, DrslcNs ANDCopyrucur
ss.37-39 TradeMarks in South WestAfrica Act, No. 48 of 1973 ss.37-39
for the purposesof this Act be deemedto be the date of the registration : Provided that where
the registrar is satisfiedthat the trade mark has been acceptedin error or that, in the special
circumstancesof the case,the trade mark should not be registered or should be registered
subject to conditions or limitations or to additional or different conditions or limiiations,
he may withdraw the acceptanceand proceed as if the application had not been accepted.

(2) On registration of a trade mark, the registrar shall issue to the applicant in the
prescribed form a certificate of the registration thereof sealed with the seii of the trade
marks office.

38. Certain trade maricsto be associatedso ts to be assiguableand transmissibleas a


whole only.-(l) Trade marks that are registered as, or thar are deemed by virtue of this
Act to be, associatedtrade marks shall oniy be assignabieor transmissiblerogetherand not
separateiy,but they shali for all other pur^Doses
be deemedto be registeredas separatetrade
marks.

(2) If a trade mark that is registeredor is the subject of an appiication for registration
so resembiesanothel trade mark that is registered or is the subject of an appiication for
registration in the name of the same proprielor that the use of both sucir trade marks
by difrerent personsin relation to goocisor serricesin lespect of which they are respectively
registeredor proposed to be reglstereriwouici be iikely to deceiveor causeconruiion, the
registrar may at any time iequire that the iracie narks shail be entered in the resister as
associatedtraciemarks.

(r:) Any decision of the registrar under subsectionil) sirail be subject to appeal to
the court.

(4) When a tracie nark and any part or paris rhereof are by virtue of section 22
registeredas separatetrade narks in the aame of the same proprietor, they shail be deemed
to be, ancishail be registeledas, associateci
traciemarks.

(5) Any associationof a traciemark with any other racie mark registereriin the name
of the same proprietor shail be deened to be an association with ail marks associatedwiti
that other trade mark, uniessthe registrar or ihe court othervise decicies.

(6) On appiication made in the prescibeC nanner by the registered proprietor of


two or more traCe marks iegisteleC as associated.trade marics, the registrar may, on pay-
ment of the fee prescribei, ciissoivethe associationas regarcisany of them if he is satiafied
that there would be no likeiihood of deception or confusion berng causedif that trade mark
were used by another person in ielation to any of &e goocisor ser-ricesin respectof which it
is registered,and may amencithe registeraccordingly.

(7) Any decision of fte registrar uncier subsection (6) sirail be subiect to aDDealto
the court.

39. Use of one associatedor substantiaily identical trade mark equivalentto use of
another.-(l) When under the provisions of this Act use of a registered trade mark is
fleuired to be proveci for any purpose, the registrar or the ccurt, as the casemay be, may,
if and so far as he or it cieens fit, accept proof of the use of an associatedregisteredtrade
mark or of the trade mark with adciitions or eiterations not substantially affecting its iden-
tity, as equivaientto proof ot the use resuired to be proved.

(2) The use of the whoie of a registered trade mark shail for the purposes of this
Act be deemedto be the use also of any registeredtrade mark being a part thereof, iegistered
in the name of the sameproprietor by vinue of section22.

(Issue No. 7) 60-<


Stenrrrs oF THE Repusuc oE Sourri Arnrce - Parpms, DrsrcNs exo Copyrucnr
ss. 40*f4 Trade Marks in South West Africa Act, No. 48 of 1973 ss. 40-44

4. Limitation of trade mark as to particular colours.-(l) A trade mark may be


limited in whole or in part to a particular coiour or colours and, in case of an application
for the registration of a trade mark, the fact that the trade mark is so limited shall be taken
into consicierationby any tribunal in decidingwhether it is distinctive or not.

(2) If and so far as a trade mark is registeredwithout limitation as to colour, it shall


be deemedto be resisteredfor all colours.

41. Words used as rame or descriptionof an article or substance.-(i) If a trade mark


consistsof a word which has becomegenerailyrecognizedby the public as the only practic-
able name or descriptionfor any article or substanceor servicefor which it is registeredanci
has commoniy been so used by personscarrying on businessin relation to such articie or
substanceor service(not being usein reiation to goods or serviceconnectedin ihe ccurse of
trade with the proprietor or a registereduser of the trade mark, or, in the caseof a certifi-
cation mark. goods or servicescertifred by the proprietor), the registration of such tracie
mark shail for the puroosesof section 33 be deemedto be an entry wrongiy remaining on
the registerfor the article or subsranceor servicein question.

(2) If a trade mark contains a word to which the circumstancescontempiateciin


subsection(1) are appiicabie.the registrar or the court, in decidingwhether such trade mark
shali iemain on the register for the articie or substanceor service in question may, as a
conciition of its remaining on the register.require a disciaimerto be enreredof any rignt to
the exciusiveuse of such word in relation to the said article, substanceor service,ancisucn
disciaimershail be cieenei to iravebeenmaCeunderthe provisionsof section18.

(3) The provisions of subsections(1) and (2) shail apply respectiveiyto trade marks
consistingof or containing a worci which is the only practicablename or ciescriptionof an
article or substancefcr wirich such traCe mark ',vasregistered, if such articie or subsmnce
was the subject of letters patent in the territory which have expired or lapseci.

42. Registretion in part A of register to be conclusiyeas to validity after seyenyears.-


In ail legalproceeCingsrelating to a iraoe mark registeredin part A of the register(inciuciing
appiiattions uncier section 33), the original registration of the trade mark in part A of the
registershaii. after the expiration of sevenvearsfrom the date of that registration,be taken
to be vaiici in ail resoects,unless-
(ct) that registiationwas obtainedby lraud; or
(bl :he tlaciemarK offendsagainstthe orovisions of either secrion 16 or section4i.

PART Vii

IxrRrxceveNr

"13. Registradon e condition precedentto an action for infringement.-No person shail


be enritled to institute any proceedingsto prevent, or to recover damagesfor. the infringe-
ment of a trade mark not iegisteredunder this Act: Provided that nothing in this Act shail
affect the rights of any person"at common law, to bring an action against any other person
for passingoff goods or serricesas those of another person.

4. Infringement.{1) Subjectto the provisionsof subsections(2) and (3) of this section


and section 45 and 46, the rights acquired by registration of a trade mark shall be infringed
by-
(a) unauthorizeci use as a trade mark, in relation to goods or servicesin respect
of which the trade mark is registered, of a mark so closely resembling it as
to be likeiy io tj.eceiveor causeconfusion; or

607
SrerurEsoF THERrpunuc or Sourn Arruce - Perexrs, DrsrcNsANDCopynrcnr
ss.44{7 TradeMarks in South WestAfrica Act, No.48 of 1973 ss,447

(b) unauthorized use in the course of trade, otherwise than as a trade mark, of
a mark so closelyresemblingit as to be likely to deceiveor causeconfusion,
if such use is in relation to or in connection with goods or servicesfor which
the trade mark is registered and is likely to cause injury or prejudice to the
proprietor of the trade mark:

Provided that in the caseof a trade mark registeredin part B of the register,no interd.ict
or other reiief shall, for the purposesof paragraph (a) of this subsection,be granted if the
defendantestablishesto the satisfactionof the court that the use of which the proprietor of
the registeredtrade mark complains is not likely to be taken as indicating a connectionin
the course of trade betweenthe goods or servicesand some person having the right either
as proprietor or as registereduser to use the trade mark.

(2) The right to the use of a trade mark given by registration shail be subjectto any
conditions or iimitations enteredin the register, and shall not be infringed Uyine use of
any such mark as aforesaidin any mode in respectof or in relation to goocisto be sold or
otherwisetraded in or servicesto be performed in any place, or in relaiion to goods to be
exported to any market, or in any other circumstances,to which, having iegard to any
such limitations, the registration does not extend.

(3) The use of a registeredtrade mark, being one of two or more registered.trade
marks that are identical or closely resembleeach other, shall in the exerciseof thr right to
the use of that trade mark given by registration, not be deemedto be an infrinsenent of the
right so given to the use of any other of those trade marks.

'15. Saving of vested rights.-Nothing in this Act shall entitle the proprietor or a
.
registereduser of a registeredtrade mark to interfere with or retain the useby any person of
a traciemark identical with or closelyresembiingit in relation to goods or serviceiin relation
to which that person or a predecessorin title of his has continuouslv used.that trade mark
from a date anterior-
(a) to the use of the first-mentioned trade mark in relation to ihose goods or
servicesby the proprietor or a predecessorin title of his; or
(b) to the registrationof the first-mentionedtrade mark in respectof those goods
or servicesin the name of the proprietor or a predecessorin title oi his,

whicheveris the earlier, or to object (on such use being proved) to that personbeing put on
the registerfor that identical or closeiyresemblingtrade mark in respeit of those gobar ot
servicesunder section l7 (2).

46. Saving of use of name, address or description of goods.-No registration of a


trade mark shail interfere with-
(a) r:n'1bonafde use by a person of his own name or of the name of his place of
business,or of the name of any of his predecessors
in business,or of the name
of any such predecessor'spiace of business;or
(b) the use by any person of any bonafrie description of the characrer or quaiity
of his goods or services.

PART VIII

DunenoN AND RENEwALoF R-ecrsrnanoN

47. Duration and renewal of registration.-{1) The registration of a trade mark shall
be for a period of ten years, but may be renewed from time to time in accordancewith the

(IssueNo. 7)
Arruca - PaTENTS,
S1anrrrs oF THERrpusuc oF SourH .lV'est DEsIcNSAND Copvmcsr
ss. 47-48 Trade Marks tn South Africa Act, No. 48 of 1973 ss. 47-48

provisions of this section: Provided that in the case of a trade mark registeredbefore the
commencementof this Act, the provisions of this subsectionshall have effectwith the sub-
stitution of a period of fourteen yearsfor the said peiod of ten years.
(2) The registrar shall, on application made by the registeredproprietor of a regis-
tered trade mark in the prescribed manner and within the prescribed period, renew the
registration of the trade mark for a period of ten years from the date of expiration of the
original registration or of the iast renewal of registration,as the casemay be, which date is
in this section referred to as "the expirstion of the last registration".
(3) At the prescribedtime before the expiration of the iast registration of a trade
mark, the registrar shall send notice in the prescribedmanner to the registeredproprietor
at his ad.dressfor service,of the date of expiration and the conditions as to payment of fees
and otherwiseupon which a renewalof registrationmay be obtained.and. if at the expiretion
of the period prescribedin that behalf ihose conditions have not been duly compiied with.
the registrar may remove the trade mark from the registersubjectto such conditions,if any.
as to its restoration to the registeras may be prescribeC.
(4) Where a trade mark has been removed fiom the registerfor non-paymentof the
fee for renewai,it shail nevertheless,for the purpose of any appiication tor the registration
{' i, of a trade mark during one yesr next following the date of the expiration of rhe last registra-
tion, be d.eemedto be a trade inark that is already on the register: Provided that the fore-
going provisions of this subsection shail not have effect where the registrar is satisfieci
either-
(o) that there was no bonafirietrade use of ihe trade mark that irasbeenrenoveci.
during the two years immeciiateiyprecedingthe date of the expiration of the
last registration; or
(r) that, notwithstanding any such use. no cieceptionor confusion is likeiy to
arise from the use of the trade mark that is the subject of the application for
registration.

PART IX

R.rcrsrsmoUsrns
48. Registeredusers.{l) (o) Subjectto the provisions of this section.a person other
than the proprietor of a trade mark may be registeredas a registereduser thereof in respect
of ail or iny of the goocisor servicesin respectof which it is registered(othenvisethan as
a ciefensivetrade mark), and either with or without conditions or restrictions.
(b) The use of a trade mark by a registereduser thereof in relation to goois or
serviceswirh rvirich he is ccnnectedin the course of trade and in respectof which for the
time being the trade mark remains registeredancihe is registeredas a registereduser, being
use such as complies with any conciitionsor iestrictions io which his registrationis subject.
is in this Act referred to as the "permitte(i use" thereof.
(2) The permitted use of a trade mark shail be deemedto be use by the proprietor
thereof, and shlfl not be cieemedto be use by a person other than the proprietor for rhe
purposesof section 36 or for any other purpose for which such use is material under ihis
Act or at common larv.
(3) Subjecr ro any agreementsubsistingbetrveenthe parties, a registereduser of a
trade mark shail be entitled to call upon the proprielor thereof to institute proceedingsto
prevent infringement thereoi and, if ihe proprietor refusesor negiectsto do so within two
months after being so called upon, the iegistered user may institute proceedings_ for in-
fringement in his o*n name as if he were the proprietor, making the proprietor a defendant,
but a proprietor so cited as a defendant shall not be liable for any costs uniesshe enters an
appearanceand takes part in the proceedings.

ClssucNo. 7)
Sra.rurrsoF THERrpunuc oE Sourg Arnice - Persurs, DesrcNSANDCopyrucgr
s. 4[f TradeMarks in South W'estAfrica Act, I,[o. 48 of 1973 s. 48

(a) Where it is proposed that a person shouid be registeredas a registereduser of


a trade malk, the proprietor and the proposed registereduser shall apply in writing to the
registrar in the prescribed manner, and the appiication shall be accompanied by the pre-
scribed fee, and they shall furnish him with a sworn declaration macie by the proprietor,
or by somepersonauthorizedto act on his behalf and approveCby the registrar-
(o) giving particuiars of the relationshifr,existing or proposed, betweenihe pro-
prietor and the proposed registereduser, incluciing carticuiars showing the
degreeof control by the proorietor over the permitted use ivhich their reia-
tionship will confer and whether it is a term of their reiationship rhat the
proposed registereduser shall be the soie registereduser or that there shail
be any other restriction as to persons for whose registration as registered
usersappiication may be made;
(D) stating the goods or servicesin respectof wnich ie_sistrationis proposeci;
(t) stating any conCitions or restrictions procoseci ivith respectio the charac-
teristicsoi ihe goods or services.to the mocieor ciace of permntei use. or
to any other matter; and
(,1) stating whether the permitteC use is to be for a penoci or rvithout iimit of
period, and. if for a peiod. the duration therect'.
and with such further Cocuments.information or evicience3s mav be reguirei under the
reguiationsor by the registrar.

f5) When lhe requirementsof subsection(-1)have ceen compiieC ntth. enci rf ihe
iegistrar, after consicieringthe information furnisheci :o him. unCer rhar subsecrion,is
sadsnecithat in the circumstancesthe use of the tracienarK in ieiation to the oroocseCgooCs
or serricesor any of therr by the proposed registelei user, subject to any ccnciirionsor
restrictionswirich the registrar thinks proper, would not be ccnriary to the pubiic inreresr,
the regrstrarmay registerthe proposed registereciuser as a iegisiereciuser in iescect cf :he
gooCsor ser.,'icesas to wirich he is so satistieC.

(6) The iegistrar sbail refuse an apoiication under the provisions of this section if
it eopearsto Um that ihe qrant thereof wouid tend to faciiitate lraricking in a traie nark.

(7) The registrarshail,if so requireCby an applicant,iake srepsto ensurerhar inform-


ation iurnished for the DurDosesof an apolication under ihe provisions of iiis seclion{other
than natters entered;n ihe register),is not ciisclosedto rivais in :iade.

(3) Without prejuciceto the provisionsof secticn i3. the registiationcf a :erson
as a iegistereduser-
(.a'l rnay be 'rariecibir the regisrar es regaris ihe ,soodsor selrices in iespect of
which it iras e.fect,or any conditions or restiicrionsreiating io ir, on appiica-
tion in rvriting in the prescibei manner and on payment of the prescribed
fee by the registeredproprietor of the tracie mark to which the registration
reiates;
(b) may be canceiledby the registrar on appiication in writing in the prescribed
manner anci on payment of the prescribed iee by the registeredproprietor
or by sucii registereduser or by any other registereduser of the traciemark;
(c) may be cancelledby the registrar on application in writing in the prescdbed
manner and on payment of the prescibeC fee by any person on any of the
foilowing grounds,that is to say:

^,.,",'*;ilir-.-.,
@''aii;;'
Sre.rurss oF THE Repr-r'rrtc op Sorrrg Arruce - P.rrsvrs, DEstcxs AND Copvnrcsr
ss. 48{9 Trade fufarks in South West Africa Act, I,{o. 48 of 1973 ss. 48{9

(i) that the registered user has used the trade mark otherwise than by way
of the permitted use, or in such a way as to deceive or causeconfusion,
or to be likely to deceiveor causeconfusion;
(ii) that the proprietor or the registereduser mis-represented,or faiied to
disciose,some fect material to the application for registration, or that
the circumstanceshave materially changed since the date of the registra-
ti o n ;
(iii) that the registration ought not to have been effected,having regard to
ri_ehtsvestedin the applicant by virtue of a contract in the performance
of which he is interested;
(d) may be canceiledwhere the trade mark in respectof which such person has
beenregisteredhas beenassignedand appiication has in terms of section51 (1)
been made for registration of the assignment.
(9) Provision shail be made by reguiation for the notification of the registration of
a person as a registereCuser to the registerei proprietor of the tracie mark and for the
advertisementthereof, and for the notifrcation of an appiication under subsection(8)
to the registeredproprietor and each registereduser (not being the appiicant) of the trade
mark, and for affording the appiicant in such an applicetion, and ail personswho intervene
in the proceedingsin accordancewith such regulations,an opportunitl' of being heard.
(10) The registrar may at any time cancelthe iegistration of a person as a registered
user of a trade mark, in lespect of any goods or ser','icesin respect of wirich the traciemark
is no longer registered.
(11) Any decisionof the registraruncierthe provisions of this sectionshail be subject
to appeai to the court.
(i2) Nothing in this section shall con-feron a registereduser cf a tracie mark any
assignabieor transmissibieright to the use thereof.
(13) The expression"permitted use" in subsection(2) shail be deeneCio inciuciethe
use of a trade mark before eny person has been entered in the regisreras rhe registered
owner thereoi rf-
(a) an application to register the person who has so usei ihe tracieraark, as a
registereduser of the trade mark is maoe within one l/ear after the commence-
ment of this Act; and
(b) that person has used the trade mark in connection with goods or sersices
in respect oi which he is so registered,and, if the registration is efr'ecleC
subject to any ccnciirions or limitations, he has useci the trade mark in a
manner substantiallvin accordancewith suchconditions ancilimitations.

PAR.T X

AsslcNivlrvr
,{9. Powers of and restrictions on assignmentend transmission.-(1) Notwithstanding
any rule of larv to the ccntrary, a re-sisteredtratie m.ark shail be, and shail be deemedalways
to have been,assignableancitransmissibieeither in connectionwith or without ihe goodwiil
of the businessconcerneciin the goods or servicesfor which it has beenregistered.
(2) A registereCtrade mark shail be, and shail be deemed aiways to have been,
assignableand transmissibiein respectof either ail the goods or servicesin respectof which
it is registered,or was registered.as the casemay be, or some (but not all) of those goods
or services.
(3) The provisions of subsections(1) and (2) shail have effect in the caseof an un-
registered trade mark used in reiation to any goods or servicesas they have effect in the
caseof a registeredtrade mark registeredin respectof any goods or servicesif at tle effective
Sr,c,Tt"rEs
oF THEREpugrtc or Sourg Arnlca - Parrxts, DrstcNS AND CopyRlcnr
s. 49 Trade Marlcs in South West ,4frlca Act, Aro.48 of 1973 s. 49

date of the assignmentor transmissionof the unre-eistered trade mark it is or was used.in
the samebusinessin which a re-sistered trade mark is or was used,and if it is or was assigned
or transmitted at the sarnedate and to the same person as that registered. trade mark is or
was assignedor transmitted aad in respectof goods or servicesall of rvhich
are goods or
servicesin relation to rvhich the unregisteredtrade mark is or was used in that business
and
in respectof which that registeredracie mark is or rvasassignedor transmitted.

('1) Notwithstandinganythingin subsections (l), (i) and (3) contained,a trade mark
shall not be, or be deemedto ha','ebeen. assienableor transmissibiein a casein rvhich.
as a result of an assignmentor lransmission,there woulci in the circumstances subsist,or
have sui:sisteC,whether under the common larv or by re"ristration,e:lciusiverights in
rnore
than one of the personsconcernecilo lhe use of trade marks which so resenbie each other
that the use thereof bv different perscns in relation to the goods or serv'icesin respect
of
which such exciusiverights subsistorvould. ha.ie subsistedwould be, or wouid have
been,
iikeiy to deceiveor cause ccnfusion: Proviciecithat rvhere a trade mark is. or has
been,
assignedor transmitted in such a case as aforesaid,the assignmentor transmission
shall
not be deeraedto be, or to ha"'e Desn.invaiid under this subsectionif the exciusiverights
subsistingas a resuit therecf in the persons ccncerneCrespectivelyare, or were, having
regard to the limitations imposed therecn. such es nor to be exercisabieby two or
more
of those pefsons in reiation to goois :c be sold, or orherwisetraded in, or servicesto
be
periormeC. within the territorlr iorherwise than icr export iherefrom) or in reiation
to
,?oodsto be exportecito ihe samemarxet outsid.ethe rerritory.
(5) The proprietor of a reqisterec:raciemar.K'vho inrencisto assignit in respect
of
anir goods or senricesin ;espectoi ivhicn it is registerei nay submit to the regisr.ai in the
prescibeC llanner a statementcf casesetiing out lhe circumstances,
anC the registrar ma;r
on payment oi the fee prescribei issue io him a certincaresrating whether, having regard
to the goods or servicesand the trade mari<sieferrecito in rhe statementof case,the pro-
posed assignmentof the first-mentionei riacie nark wouid or would not be invaiid under
subsection(4), ancia ceftificateso issueCsirail. subjecrro the orovisions of rhis section
as to
aDDeal,and unlessit is shorvnthat :he ceftificatewas obtainedby fraud.or misrepresentation,
be conclusiveas to the vaiidiqr or in'raiiciityundel the :aici subsectionof the assignmentin
so far as such vaiiditir or invaiiciit;rdependsuDon the facts ser out in the statementof case,
but, as regardsa certificatein lavour of vaiiciity, onirvif appiication for registration of the
title of the person becomrngentitiei ;s nade under section 5i within six months from
the
date on rvhich the certiflcateis issueci.
(6) NotwithstanCinganything;n subsections (i), (:) and (3) contained,a traclemark
shall not be assignabieor transmissibiein 3 casein whicn, es a result of an assignment
or
lransmissionthereof. thele wouici 'n :ire circumstancessubsist.whether under the common
iaw or by registration,an exciusiveiight in one of rhe Deiscnsconcernedto the use of
the
trade mark limiteciio usein relation io goois to be sold, or cthenvisetradedin, or services
to be performei, in I piace or piacesin the territory, anci an exciusiveright in another
of
those personsto the use,in reiation to gooos to be soici.or otherwisetraded in, or
services
to be performed,in another place or cthcr ciacesin the territory, of a trade mark so resemb-
ling the first-mentionedtrade mark iirat the use in the same place of both such marks
in
relation io the goods or servicesin iesDectof which such exciusiverights respectiveiysubsist
wouid be likely to deceiveor cause confusion: Plovicied that on appiication in the pre-
scribedmanner by the proprietor t:f :r tracie nark rvho intends to assignit, or of a person
who claims that a trade mark was irensmitted to him or to a predecessorin title of his aftsr
the commencementof this Act, the regisrrar,if he is sarisfied.that in all the circumstances

(Issue No. 7) 6r7


oF THERrpusuc or Sours Arnrce - ParrNts, DsstcNSANDCopvrucsr
Sr.c.rurEs
ss.49-52 TradeMarks in South l|/estAfrica Act, No. 48 of 1973 ss.49-52

the use of the trade marks in the exerciseof the said rights would not be contrary to the
public interest, D&y, on payment of the fee prescribed,approve the assignmentor trans-
mission, and an assignmentor transmissionso approved shail not be deemedto be, or to
have been,invalid under this subsectionor under subsection(a) of this section,provided that
in the caseof a registeredtrade mark application under section 51 for the registrationof the
title of the person becoming entitled is made within six months from the date on which the
approval is given or, in the caseof a transmission.was made before that date.
(7) I.{otwithstandinganything containedin subsections(1) and (2) and subjectto
the provisionsof subsections (4) and (6), wherea trademark which is the subjectof a pending
appiicationfor registrationhas subsequentto the date of the appiicationbeenassignedor
transmitteci,the registrarilay, on applicationin the prescribedmanner and subjectto such
conditions as he may cieemnecessary,allow, on payment of the fee prescribed,the person
or personsentitled to such trade mark by reasonof such assignmentor transmission,to be
substitutecias appiicant or appiicantsfor registration of the trade mark.
(8) Any decision of the registrar under this section sirall be subjectto appeal to the
court.

50. Power of registeredproprietor to assign and give receipts.-Subject to the pro-


f. visions of this Act, the person for the time being entered in the registeras proprietor of a
'<i,
trade mark shall, subjecl to any rights appearingfi'om the registerto be vestedin any other
person.have porver to assignthe trade nark and to give effectualreceiptsfor any considera-
tion lor an assignmentthereof.

51.. R.egistration of assignrnentsand transmissions.-{1) Where a person becomes


entitleciby assignmentor transmissionto a iegisterecitrade mark, he shall n:ake appiication
to rhe resistrar on the form prescribedto registerhis title, and the registrarshall on receipt
of the appiication tcgether wirh the fee prescibed and of proof of title to his satisfaction,
registerhim as the proprieror of the trade mark in respectof the goods or servicesin respect
of which the assignmentor transmissionhas efr'ect,ancishall causeparticuiarsof the assign-
ment or transmissionto be enterei in the register.
(2) Ever,vappiicetion ro registeran assignmentor transmissionin terms of subsection
(1) shall iecite the efrectiveiate of sucn assignmentor transmission and, if appiication is
rnade trrore chan tweive months after such date. the applicant shall be liabie to pay such
penaify as may be prescribed.
(3) Any decision oi the registrar uncierthis section shall be subjectto appeai to the
courl.
(4) Except for the purposesof an appeal under this sectionor of an appiicationuncier
section 33, a ciocumentor instrument in respectof lvirich no entry has been made in the
registerin accordancewith ihe provisions of subsection(1) of this section,shail not be
admitteCin evidencein tn./ court in oroof of the title to a trade mark unlessthe court
othenvisedirects.

PART XI

sz. certificerion -,,i^


marks J:ililt:'Tt*rr,"guish, of trade.
in thecourse
goods or servicescertif;edby any personin respectof origin, material, mode of manufacture
or performance, quality, accurac:ror any other characteristic,as the case may be, from
goods or servicesnot so certified, shall, on application in the manner provided for in this
section, and subject to the provisions thereoi be registrableas a trade mark in part A of
the registerin respect of such first-mentionedgoods or services,in the name, as proprietor
thereof, of that person: Provided that a mark may not be so registeredin the name of a
person who carries on a trade in goods or servicesof the kind in question.

619
Srarurss oF THERrpusuc or Sours Ar"ruce - PereNrs, DesicNS AND Copynrcnr
i t
s. 52 Trade Marks in South lfiest Africa Act, I,{o. 48 of 1973 s. 52

(2) An application for the registration of a mark under this sectionshall be made to
the registrar in the prescribedmanner, and may be made by any governmenror provincial
authority or any person desiringto be registeredas the proprietorihereof.
(3) In determining whether a mark is adapted to distinguish goods or servicesas is
contemplatedin subsection(1), regard may be had to the extent to which-
(a) the mark is inherently adapted so to distinguish the goods or services
in
question:and
(b) the mark is in fact adapted so to distinguish, by reason of the use rhereof
or
of any other circumstances,the goods or servicesin question.
(4) There shall be submittedto the registrarruies (which shail thereuponbecomepart
of the aoplication) stating the circumstancesln which the proprietor concernedis to certify
goods or servicesas contempiated_in subsecrion(1) and to auihorizethe use oisuch mark,
and othenvisegoverning lhe use tirereof.
(-<)The provisions oi subsections(2) and (4) ro (7), both inciusive,of section20,
shail have ei1^ecl
in reiation to an appiication under subsection(1) cf this secrionas they have
efect in reiation to an acoiicetionunciersubsection(1) oithe said section20.
(6) In the exerciseof his powersunder subsection(5) of this sectionthe registrarshali
have regard io the same considerations,so tbr as the.vare relevant, to which he wcuici have
regarCtf the appiication ',verean apoiication und.ersecrion:0 (1) and to any other reievant
consicierations.inciuciing-
(a) the iesirabiiiry of ensuring thar a cerrificaticn nar^k shail ccmprise some
inciicationihat it is sucha mark:
(b) the ccmoetenc',/of the appiicant io ceriif,r'rhe gcod.sor ser.,,ices
in respectof
wiricir the inarl< is to be registereci:
(r) rhe adequac;.'of the ruies in ouesticn; anci
(d) the acivantageof the pubiic,
and may cail to his essistanceone or nore Dersons.who shail rerfome rhe prescribed
iunctions.
(7) The ruies iei-elredto in subsection(-1)shail arter the acceptanceof rhe appiicatron
be ocen to insirectionin ihe samemanner as the register.
(8) The crovisionsof seclions21.25, 26 to 30, both inciusive.and 37. shaiihaveefect
in ieiation to en appiication under subsection(2) of this secticnas rhey have effecrin reiation
to an apoiicarionunciersection20 (1).
(9) The ruies ieterrei io in subsection(-t) may, on the epoiication of ihe registerei
proprietor concerned,be aitereciby the registrar.
(10) The registiar rra)/ require an anplicatron unier subsecrion(9) to be aciveniseC
in the presciibed.inanner :n eny casewhere ir ao"."rs :o him io be expedienrso to do. and
it-,where the registrar:equires an apolicarion t;ie so acivertisei. any person gives,within
ihe presciibecitime. nctice io the registrar of opposition ro rhe apoiitition, th-eprovisions
'cf sections 26 to -:0. both inciusive, shal7mutoiii *ttronriis appiy,lo
,o t'ar as they can be
appiied.
(i 1) Subject to the provisions of this section, the provisions of this Act, except the
provisions of secticns24 and 48, subsections(,1)to (7), borh inclusive, of section 49, and
section 73 shall. except in so far as is otherwiseprovicied in this Act, and in so far as they
can be applieci, appi-vio a certification mark.
(l?) The power to order rectification of the register conf'erredby secrion 33 shall
-
inciude, in relarion to certificationmarks, rectification on the ground-
(o) that. in the case of any goods or sen,icesin respect of which the mark is
reglstered.the proprietor is no longer competent to certify those goocisor
seivicesas is contemplatedin subsection(i)J

(Issue No. 7) 621


Sre.ruresoF THERrpust,rc or Sourg Arrucl - Parexts, DrslcNSANDCopvnlcHr
ss.52-53 TradeMarks in South WestAfrica Act, No. 48 of 1973 ss.52-53

(b) that the proprietor has failed to observea provision of the rules which it was
his duty to observe;
(c) that it is no longer to the advantageof the public that the mark shouid be
registered;or
(d) that the advantageof the pubiic demandsthat, if the mark remainsregistered,
the rules in question shouid be varied.
(13) A certification mark shall not be assignableor transmissibieotherwisethan with
the consentof the registrar,who may grant his consentsubjectto such terms and conditions
as he may think fit.
(1a) Subjectto the provisions of section69, the court ffi&Y,on the application of the
and the registrarmay. on the appiication of any person
registraror of any person ag-9rieved,
aggrieved,make such order as it or he thinks fit for varying the rules which govern the use
of suchmark.
(15) There shail be a right of appeal to the court in the prescribedmanner against
refusal by a registeredproprietor of a certification mark to certify goods or services,or to
authorizethe useof the certificationmark, in accordancervith such ruies.

\
l_..
,
,
(16) A person called to assistthe registrarin terms of subsection(6) shal1be entitied
to the prescribedremuneration.

PART XIi

DeFexstveTnaon lVlenrcs

53, Defensive registration of well-known frade marks.-(l) Where the re-eisrraris of


opinion that, by reason of the extent of use or of any other circumstances,a trade nark
registeredin part A of the register rvouid, if used in reiation to goods or servicesother
thin the goodi or servicesin respectof which it is registered,be likeiy to be taken as indicat-
ing a connection in the course of trade betweenthe first-mentioned goods or servicesand
the proprietor of the registeredtrade mark, then, notwithstanding that the proprietor does
not use or proposeto use the trade mark in relation to the first-mentionedgoodsor services
and notwithstinding anything in section 36 contained, the trade mark D&Y, on application
by the proprietor in the prescribed manner, and on payment of the fee prescribed, be
rigisterJd in tris name in lespect of the first-mentioned goods or services as a defensive
ttid. mark, and such a trade mark, whiie so registered,shall not be liable to be taken ofr
the registerunder section36 in respectof those goods or services.
(2) The registeredproprietor of a trade mark may appiy in the prescribecimanner for
the registration thereof in respect of any goods or servicesas a defensivetrade mark, not-
withstinCing that it is already registeredin his name in respectof those goods or services
otherwisethin as a defensivetrade mark, or may appiy f or the registrationtherecf in respect
of any goods or servicesotherwise than as a defensivetracie mark notwithstanciing that it
is already registered in his name in respect of those goocis or servicesas a defensivetrade
mark, in each casein lieu of the existing registration.
(3) A trade mark re,eisteredas a defensivetrade mark and that trade mark as other-
wise regiitered in the name of tne same proprietor shall, notwithstanding that the respective
registritions are in respect of different goods or services,be deemed to be, and shall be
registeredas, associatedtrade marks.
(a) On application to the court or, at the option of the applicant and subject to the
provisions of seition 69, to the registrar by any person aggrieved,the registration of a trade
mark as a defensivetrade mark may be iancelied on the ground that the requirementsof
subsection(1) of this section are no longer satisfied in respect of any goods or servicesin
reipect of which the trade mark is regist-red in the name of the same proprietor otlerwise
than as a defensive trade mark, or -ay be cancelled with regard to any goods or services

(lssuc No. 7)
Sranrrrs oF THERgpusuc or SowH Arnrc.r - Parexrs. DesicNS AND Copymcsr
ss. 53-57 Trade Marks in South West Africa Act, |io. 48 of 1973 ss. 53-57

in respectof which it is registeredas a defensivetrade mark on the ground that there is


no longer any likelihood that the use of the trade mark in relation to those -eoodsor services
would be taken as indicating a connection such as is mentioned in subsection(1) of this
section.
(5) The registrar may at any time cancei the registration as a defensivetrade mark
of a trade mark of rvhich there is no longer any registration in the name of the same pro-
prietor otherwise than as a defensivetrade mark.
(6) Except as otherwise expressiyprovided in this section, the provisions of this
Act shall appiy mutatis mutandisin respectof the registration or cancellationor the registra-
tion of trade marks as defensivetraciemarks and of trade marks so registeredas they appiy
in other cases.

PAR.T )GII

PowEns rxo DurrES oF Rtclsrnr-n

54. Yenue of proceedings.-The place where any proceeCingsbefore the registrar


under this Act are to be hearciand determinedin any particular caseshail be dererminei by
t .

the registrar after consuitation rvith the partlr or parties concerned, and such proceedings
shall be heard anci cieterminedb,vhim at lhat piace.

-i5. Generalpowersof registrar.{1) The registrar may, for the purposesof this Act-
(a) receive evid.enceanci cietemine whether and to wirat extent it shall be given
by afflciavitor viva i,oceuron oath;
{b) summon wimessesanci issuecommissionsde beneesse;
(c) order disccvery or inspection,and iequire the due prociuction of ciocuments;
(d) consicierany interiocutory or other matters as nray seemexoeCient;
(e) award costs againstany party io any proceedingsbefore him,
and generally the re-sistrar shail in connecdon with any proceedings before him have ail
such powers and jurisdiction as are possesseciby a singlejudge in a civii action before the
courr.
(2) Where e:\pressprovision is not containedin this Act on any matier of procedure,
the registrarshail have recourseio the ruies governingprocedurein the court.
(-t) Whenever by this Act any pericci is specifieciwithin wirich any act or thing is
to be done, the registrar rna,v,uniess othelwise expresslyprovicied, extend the period either
bercre or rfter its expiration.

56. Power of regisnar to allow lmendment of any document.-(1) The registrar may at
anyr time before registraticn of a tracie mark permit the amencimentof any ciocunent
relating to any apoiication or proceedingsbefore him on such terms as to costs or other-
wise ashe thinks just.
(2) If rights in a trade mark wirich is the subject of a pending appiication have been
acquired by a body corporate subsequentto the date of appiication, the registrar may, on
goori causeshown and on payment of the fee prescribed, permit amendment of the appiica-
tion by the substitution of the name of rhe bociy corporate as appiicant for registration
notwithstandingthat such body corporate was not in existenceat the date of the appiication.

57. Dufy of registrar in exercising discretionary power.-Whene'rer any discrerionary


power is by this Act given to the registrar, he shall not exercisethat power adverselyto an
applicant without giving that applicant an opportunity of being heard personally or by
his agent.
oF THEREpunuc or Sours Arnrcr - Pa.rexts, DrstcNS AND Copvnlcnr
Sr,c.TUTEs
ss. 58-63 Trade tr'Iarks in South'W'estAfrica Act, l,[o. 48 of 1973 ss. 58-63

58. Taration of costs awarded by registrar.-Any costs arvarded by the registrar


shall be taxed by a taxing officer of the court, and payment thereof may be enforcedin the
same manner as if they rverecosts allowed by a judge of the court.

PART XIV
EvroexcE

59. Register to be prima facie evidence.-Any register kept under this Act shall be
prima facie evidenceof an,vmatters directedor authorized by this Act to be insertedin that
register.

60. Certificatesof registrer to be prima facie evidence.-(1) A cenificate purponing


to be under ihe hand of the registraras to any entry, matter or thing wirich he ls authorized
by this Act to make or do, shail be prima facie evicienceof the entry having been made anci
of the contentsthereof and of the matter or thing having been done or leit uncione.
(2) Printed or written copies or extractspurporting to be copies of or extractsfrom
any register or bock or document reiating to trade marks and kept in fie trade marKs
offfrceand certified by the registrar and seaiedwith the sesi of rhat office. shail be acimittei
J
t in evidencein all courts and proceedingswithout iurther proof or produclion of the orig:nais.

61. Regisfiationto be prima facie evidenceof validitv.-In all legai proceeiingsrelating


to a registerecitrade mark (including appiicationsunder section -:3 of ;his Aclj the fact that
a person is registeredas proprietor of the traciemark shall be prima facie e'ricienceof ihe
valiciiryof rhe original registrationof the traciemark anC of ail subsequertassignmenmanci
transmissionsthereof.

62. Certificetion of velidity.-In any legal proceeciingsin whicn the validit;,' of ihe
registrationof a registeredtrade mark is in issueanci is decidedin favour of fie proprietor
of the trade mark, the court may certify to that efrect. and if lt so certifies. then in any sub-
sequenrlegai proceedingsin which the valiciity of the registration of ihat tracienark is in
issue,the proprietor of the trade mark, on obtaining a frnai orcieror jucigmentin his favour.
shall be entirled to iris fuil costs,chargesand expensesas betrveenattorne'r end ciient, uniess
in the subsequentproceedingsthe court certifresotherwise.

PART XY
Appren To AND Porvrns oF TI{E Comr
6-1. Appeai ageinst decisionsof the registrar to the court and powers of the ccurt.-
(1) In adciirionto any right of appeai speciflcailyconferred in respectof proceedingsuncier
this Act, any party to any proceedingsbefore the registrar, other than proceeciingsuncier
section28, may appeai to the court againstany decisionor order pursuant io such pro-
ceeiings.
(2) Subjectto the provisionsof subsection(5), an appeaiageinstthe ciecisionof ihe
court in any apoeal to it under this Act shail lie to the appeiiate ciivision of the Supreme
Court.
(3) In addition to any orher powers conferredupon it by this Act, the court na-v in
reiation to such apped-
(ai confirm, vary or reversethe orCer or decision appealed against, as justice
may require;
(b) if the record does not furnish sufficient evidenceor information for the deter-
mination of the appeal, remit the matter to the registrar with instructions in
. . regard to the taking of further evidenceor the setting out of further informa-
ti o n ;

(Issue No. 7)
Srerurrs oF THE Rrpuslrc or Sourn Arzuce - PITENTS,DESTcNS AND Copynrcnr
ss. 63-68 Trade Marks in South lV'estAfrica Act, No. 48 of 1973 ss. 63-68
L .
\.,.u
(c) order the parties or eitler of them to produce at some convenient time in
the court of appeaisuchfurther proof as shall to it seemnecessaryor desirable;
or
(d) take any other course which may lead to the just, speedyand, as far as may
be possible,inexpensivesettlementof the case;and
(e) make such order as to costsasjustice may require.
@) (a) Every appeal to the court shail be noted and prosecutedin the manner pre-
scribedby law for appeaisto it againsta civii order or decisionof a singlejudge of the court,
savethat the period within which such appeai shall be noted shail be three months after the
date of the order or decision and that the appeal shall be prosecutedrvithin six weeks of
the date upon which it was noted: Providecithat the court may, on appiication and on good
causeshown, ailow such extensionof time for noting or prosecutingthe appeal as may
be necessary.
(6) Every appeai to the appeilatedivision of the SupremeCourt shail be note<iand
prosecutedin the manner prescribedby iaw for apoealsto such division in civii proceedings
savethat no specialleaveto appealto such division shall be necessarr.
(5) The parties to croceedingsbefore the registrar shall be cieemedto be panies to
civil proceedingsfor the purposesof section 20 (-?)of the Suoreme Court Act, 1959 (Act
No. 59 of 1959),and the appellatedivision of the SupremeCourt shali havejunsdiction to
hear and determine an appeal against an orcier or cieclsionof the registrar wirhout any
intermediateappeal first having beenhearciand cietermineciby the court, if the said parties
iodge with the registrar notice in writing of iheir consent thereto on the form prescribed
and pay the prescribedfee.

64. Power to order producfion of certificete of regisrarion.-in addition ro any other


powers conferred upon it bv this Act, the ccurt may in ieiarion io anyiaoolicarionor apoeal
under this Act order any party to deiiver io ihe courr or ro the resisrrar the certiicate of
registration of any trade mark.

65. l{otice to registrer of applicetion to court.-Belbre eny appiication is made to the


court for an order invoiving the performance of any act by rhe registrar or affecting any
entry in the register,the applicant shail in ihe nanner prescibeci give the registrarat ieast
fourteen ciays' notice before the hearing oi such application: Proviied that the registrar
D&y, in his discretion, waive such notice or acceDtsuch shorter norice as he nay in the cir-
cumstancesdeem suffi.cient-

66. Registrar's appearancein proceedingsinvoiving rec'ficetion of register.{l) In


any legai proceedingsin which the relief sought includes eiteration or rectificarionof the
register, the registrar shail have the right to appeer and be hearci. and shail appear if so
directedby the court.
(2) Unless otherwise directed by ;he ccuri. the registrar, in lieu of aopearing and
being heard,may submit to the court a staten:lentin writing signedby him, giving particuiars
of rhe proceedingsbefore him in relation io ihe natter in issue or of the grounds of any
ciecisiongiven by him afr'ectingsuch matter or of the practice of the trade marks office
in like casesor of such other matters reie'ranrto the issuesanci within his hrowiecigeas
registrar,as he thinks fit, and the statementshail be deemedro iorm part of the evidenie in
the proceedings.

67. Court's power to review registrar's decision.-The court, in deaiing with any
question of the rectification of the register(including all applications under the provisioni
of section 33), shall have power to review any decision of the registrar reiating to the enrry
in question or the correction sought to be made.

68. Discretion of court in appeals.-In any appeel against a decision of the registrar
to the court under this Act, the court shall have power to exercisethe same discretionary
powers as under this Act are conferred upon the resistrar.
Srenrres oF THE Rrpr,guc or Sourg Arnrce - P.,{,TExts,DrsrcNS AND Copymcst
ss. 69-72 Trade Marks in South West Africa Act, I{o. 48 of 19i3 ss. 69-72

o 69. Procedurein casesof option to apply to court or registrar.-Where under any pro-
vision of this Act an appiicant has an option to make an application either to the court or
to the registrar-
(a) if proceedlngsconcerningthe trade mark in question are pending before the
court, the application must be made to the court;
(b) if in any other case the appiication is macie to the registrar, he may at any
stage of the proceeCingsrel'er the appiication to the court. or he may after
hearing the parties determinethe question betweenthem subjectto an appeai
to the court.

PART X!'I

OErrxcns

74. Penalty for making laise enfries in registers. or 6rkiag, producing or tendering
falsecopy.-Any personwho-
(a) makes or causesto be made e lalse entq/ in any iegister kept under this Acr; or
(r) makes or causesio De made e writing ialseiy purporting to be a copy oi an
entry in any such register: or
(r) produces or ienders or causesio be orociucecior tencierecias evidenceany
such entry or copy thereof knowing rhe same io be faise,
shall be guiity of an ofr'enceanci liabie on conviction to a i.ne not exceeciingtwo huncirei
rand or to imprlsonment tor 3 peiod not rxceeiing iweive rronths or to both such fine
and such imprisonment.

it. Penaity for making false statementsibr the purpose of deceiving or influencing
registrar or other officer.-Any person who-
(a) for the purpose of deceivingthe iegisrrar or any officer in the executionof the
provisions of this Act: or
(r) for the purpose of procurin-qcr influencingthe <ioingor omissionof anything
in reiation to this Act or anl/ natter thereuncier,
makes a faise statennentor reDresentationkeowing the same to be lalse, shail be guilty of
an offenceand liabie on conviction to a fine not exceeiing two huncireCrand or to imprison-
ment for a oeicci not e.-,ceeiinetweive months or:o coth such fine ancisucnimorisonment.

1n
l 2 t Penalty for faiseiy representinga trade mark es registered.-i1) Any person who
makesa representation-
(a) with respect to a inark not being a iegisterecitracie :nark, to the effect that
it is a registereciliacie srark: or
(b) with respectto a part of a registereC:racie ::rark not being e part separareiy
registeredas a tracieararj<.to ihe efrectihat jt is so legistereC:cr
(c) to ihe effect ihat a registereCiracie mark is legisterei in respectof any goocis
or serzicesin resoectof wirich lt is nor iegistered: or
fti\ to the etTectthat the registration of e rraciemark gives an exciusiveright to
the use thereof in any circumsrancesin wirich, having regard to limitations
enteredin the register,the registration cioesnot give ihat iignt,
shall be guiity of an offenceand liable on conviction to a fine aot exceeciingone hundreci
rand.
(2) For the purposes of this section, the use in the territory in relation to a tracie
mark of the word "registered" or of any abbre.riationthereof or of any other word or letter
which might reasonably be construed as referring to registration, shail be deemedto import
a referenceto registration in the register excepr-
SrerurES oF THERlpt,tuc oE Sourg A-nnlc.c.- Perrvrs, Drstcxs AND Copyrucgr

o ss.72-76 Trade Marks in South West Africa Act, I,{o,.48 of 1973 ss.72-76

(a) where that word, abbreviation or letter is used in physical associationwith


other words delineated in characters at least as iarge as those in which that
word, abbreviation or letter is delineatedand indicating that the referenceis to
registration as a trade mark under the law of a country outside the territory
being a country under the law of which the registration referred.to is in fact
in force;
(b) where that word (being a word other than the word. "registered"), abbrevia-
tion or letter is of itself such as to indicate that the referenceis to such reeis-
trarion as is ref-erredto in paragraph (a); or
(c) where that word, abbreviation or letter is usedin relation to a mark registered
as a trade mark uncierthe law of a country outsidethe territory an6 in ielation
to goods to be exportedto that countrv.

PART XVII

IfiscrrleNEous
K,, ;
!.ii-.j
73. Trade mark not to be deemed to be deceptive or confusing in certain cases.-
The use of a registeredtrade mark in reiarion to goodi betweenwirichlnd the personusing
the trade mark a form of ccnnectionin the ccurse of trade subsists,shail not be deemedto
be iikely to deceiveor causeconfusion on ihe *wound oniy thar the trade mark has been or
is useCin reiadon to goods betweenwhich and that Dersonor a pred.ecessor in titie oi that
person a different fbrn of connectionin the courseol rrade subsiited or subsists.

74. Use of trade mark for ex^nortrade.-{l) The application of a trade mark in the
territory to goocis-tobe exported from the territory, and iny otler act d.onein the teritory
in relation to goo<is be so exportecirvhich.if done in reiation to goods to be soicior
1o other-
wise traded in within the territory, wouid. constirute use of u tra,i. marj< therein, shall be
deemedto constitute use of the tiade mark in reiation to those goods for any ouroose for
which such use is materiai uncierthis Act or at common law.

(2) Subsection(i) shall be deemecito have had efrectin reiation to an act <ionebefore
the date of the commencementof this Act as it has etTectin relation to an act done after
that date, but shail not affect a determination of a court which was made before that date
or the determinadon of an apoeaiagainsta cieterminationso made.

fl) 75- Palment of prescribedfees io be made before rcts done or doc:,mentsissued.-


Wheneverunder this Act anv prescdbeCt-eeis payabie in respectof any application.resis-
tration, matter or ciocument,the registrarmay iefuse to penbrrn the act or to receiveor to
issuethe document (as the casenay be) untii the fee payabie in respectthereof is paid.

76. Address.for service.{1) With '3veryappiication or notice of opposition under


this Act, the appiicant or objector, as rhe *t. roiy be, shall furnish an ad.biess(not being
a post box number) acceptabieto the registrar as an adciressfor service which shail, for all
the purposesof the appiication or the notice of opposition, be deemedto be the address
of
the appiicant or of the objector (as the casemay be), and all documentsin relation to the
application or notice of
lpposition may be served by leaving them at or sending them to
the addressfor serviceof the appiicant or of the objettor, urlh. casemay be.

(2) Aly acidressfor service may with the approval of the registrar be changed by
notice to the registrar on the form prescibeci

(Issue No. 7) OJJ


Sranires oF THERrpunrrc op Souur Arruce - Parevrs, DestcxsANDCopvnlcsr
ss. 76-&4 TradeMarks in South WestAfrica Act, I{o. 48 of 1973 ss.76-84

(3) The address for service furnished by an applicant in terms of this section shall
be deemed to be the domicilium citandi et executandiof such applicant for the purposes of
any proceedingsrelating to any entry made in the register in pursuance of the application.

77. Circulation of periods of time.-Where any period of time is specifiedby this Act
as running from the doing of any act, it shall be reckoned as commencingon ttre day next
following the doing of that act.

78. Personsunder disabilify.-If any person is, by reason of minority, iunacy or other
disabiiity, incapable of making any deciaration or doing any act required or permitted by
this Act, then the guardian, curator or other legal representative(if any) of such person or
if there be none, any person appointed by the court upon petition on behaif of the person
uncier disabiiity or on behaif of any other person interestedin the making of such declara-
ration or the doing of such act, mav make the declarationor a declarationas nearly corres-
ponding thereto as circumstancespermit, and do the act in the name and on behalf of the
person under disability, and all acts done by such substitute shall, for the purposesof this
Act. be as effectualas if done by the personfor whom he is substituted.

79. Fees,regulations,forms and classificationof goods.-(l) The Minister in consulta-


tion with the Minister of Finance may prescribe a tariff, not inconsistent with this Act, of
the fees which shail be payable to the registrar in respect of any application, registration.
matter or document, and the fees shall be payable as so prescribed.
(2) The lvlinister may make regulations, not inconsistent with this Act, as to ail
matters, inciuciingforms and a scheduleof ciassificationof goods or services,which by this
Act are required or permitted to be prescnbed by regulation or which are necessaryor con-
venient for giving effect to ihe provisions of this Act or for the conduct of any businessrelat-
ing to the trade marks oilce establishedby this Act.

80. Transitional provisions.-(1) Subject to the provisions of sections 3 and 81 the


validity oi any entry reiating to a trade mark on the register of trade marls existing at the
ccmmencement of this Act shall be determined in accordance with the laws in force at the
date of such entry

81. Rehospectiveefect of certain provisions.-sections 48 and .19,and those provisions


of this Act which relate to registeredusers and assignments,shail be deemedto have come
into operation on i January 1948.

82. Application in Eastern Caprivi Zipfei.-This Act and any amendment thereof shall
apply also in the Eastern Caprivi Zipfel.

83. Repeal and amendmentof laws.-{l) Sections 10 to 13 inciusive of the Patents,


Designsand Trade Marks Proclamation.1923,of the territory, and so much of the remainder
of that Prociamation as relatesto trade marks, are hereby repealed.
(2) The said Prociamationis hereby amended-
(a) by the substitution in section 24 for the words "Designs and Trade Marks"
of the words "and Designs"; and
(b) by the delerionin the preambie of the words "and Trade Marks".

84. Short title and commencement.-This Act shall be cailed the Trade Marks in South
West Africa Act, 1973.and shail come into operation on 1 January 1974.

(Issue No. 7)