THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Reportable
Case no: 166/2021

In the matter between:

COCHRANE STEEL PRODUCTS (PTY) LTD                                        APPELLANT

and

JUMALU FENCING (PTY) LTD                                                           RESPONDENT

Neutral citation:
Cochrane Steel Products v Jumalu Fencing (166/2021) [2022]
ZASCA 100 (22 June 2022)
Coram:

Maya P, Makgoka and Gorven JJA, Meyer and Matojane AJJA
Heard:

17 May 2022
Delivered:

22 June 2022

Summary:
Trade Marks Act 194 of 1993 – ss 34(1)(a), (c) and 34(2)(b) – trade mark
infringement claims – disclaimer in relation to registered trade mark ‘CLEAR VU’ –
registration of a mark shall not debar others from the bona fide descriptive use of the
words ‘clear view’ – whether respondent’s use of those words in the course of trade
bona fide and descriptive of its kind of goods and their characteristics – whether
respondent’s conduct unlawful and amounting to passing-off.

___________________________________________________________________
ORDER
___________________________________________________________________

On appeal from: Gauteng Division of the High Court, Johannesburg (Lombard AJ,
sitting as court of first instance):

The appeal is dismissed with costs.
___________________________________________________________________
JUDGMENT
___________________________________________________________________

Meyer AJA (Maya P, Makgoka and Gorven JJA, and Matojane AJA concurring)

[1] This is an appeal against an order of the Gauteng Division of the High Court,
Johannesburg (Lombard AJ), dismissing with costs the appellant’s application in terms
of ss 34(1)(a) and (c) and 34(2)(b) of the Trade Marks Act 194 of 1993 (the Act), as
also, for interdictory relief based on passing-off. The appellant, Cochrane Steel
Products (Pty) Ltd (Cochrane), sought an order interdicting and restraining the
respondent, Jumalu Fencing (Pty) Ltd (Jumalu), from infringing its ‘CLEAR VU’
registered trade mark in two categories, one in Class 6 (in respect of non-electrical
cables and wires of common metal; metal fences; metal mesh; pipes and tubes of
metal) and the other in Class 37 (in relation to building, construction, repair and
installation) of the International Classification of Goods and Services.

[2] Cochrane and Jumalu are direct competitors in manufacturing and installing
physical perimeter security barriers. The basis of Jumalu’s opposition to the relief
claimed by Cochrane is that the words ‘clear view’ are disclaimed elements of
Cochrane’s registered trade marks. In addition its use of those words on its advertising
billboards and website is bona fide and descriptive in relation to its fencing products
and their characteristics. Other competitors within the security barrier industry also use
the words ‘clear view’ to describe their fencing products.

[3] Cochrane manufactures a variety of security fences that are marketed under
the ‘CLEARVU’ or ‘CLEAR VU’ brand, such as:

INVISIBLE WALL, described as an architecturally inspired see-through fence;
CRITICAL INFRASTRUCTURE, a category V type fence with an anti-ram barrier, anti-
cut, anti-reciprocating saw, and other high security properties;
RE-ENFORCED, a combination of high-density mesh and a category IV security
fence;
SHUTTER MESH, a high security category IV type perimeter fence that includes solid
shutters;
ANTI-STAMPEDE CLEAR VU, a collapsible fencing system designed to provide pitch
demarcation and the like;
BALLUSTRATE, an architecturally designed transparent baluster topped with a
pressed integrated hand rail;
ROCKET BARRIER, designed to prevent rocket attacks against key installations such
as fuel refineries and depots; and a POOL FENCE. Below is a photographic depiction
provided by Cochrane inter alia, of the fencing alongside its mark.1

[4] Jumalu’s actual use of the mark ‘clear view’ depicted on its advertising
billboards is the following:

1 For more pictorial depictions of some other of the steel fencing products manufactured by Cochrane,
together with descriptions employed by it in relation thereto, see Cochrane Steel Products (Pty) Ltd v
M-Systems Group [2017] ZASCA 189 para 7.

[5] On its website, Jumalu uses the words ‘Jumalu’, ‘Clamberprufe’ and ‘clear view’
as follows: Clamberprufe – safeguarding people, property and assets. In addition,
under the heading of ‘who we are’, the following is captured:
‘Jumalu Fencing is a South African private company supplying specialist Clamberprufe
turnkey mesh panel security fencing solutions known for its clear view aesthetic. Jumalu offers
an extensive range of innovative, aesthetically pleasing, high quality clear view fencing
products to secure people, property, premises and assets.’
Furthermore, in relation to the product quality, it is stated that-
‘Jumalu fencing offers an extensive range of innovative, aesthetically pleasing, high quality
Clamberprufe clear view fencing products that are manufactured locally’.
Also, under the heading titled ‘SOME COOL FACTS ABOUT JUMALU’, it is stated
that the total metres of clear view fencing installed so far is 28709. Moreover, under
the heading for services offered, it is stated that the company-
‘supplies Clamberprufe security fencing solutions known for its clear view aesthetic’.
Alongside this, Clamberprufe clear view fences series has been engineered to provide
customers with the best qualities of mesh panel fencing with high security, anti-climb,
anti-cut properties due to fence apertures and clear view aesthetics. In the remainder
of its website, Jumalu uses the words ‘Clamberprufe clear view fencing’ or ‘clear view
aesthetics’ within the same context.

[6] In dismissing Cochrane’s infringement claims under ss 34(1)(a) and (c) of the
Act, the high court held that the words ‘clear view’ are commonly used descriptively in
relation to products in the fencing industry, and it rejected Cochrane’s contention that
the use of those words by Jumalu was not bona fide descriptive use. In dismissing its
common law passing-off claim, it held that Cochrane has not established that ‘the
public identifies the clear view feature concerned as distinctive of the source of the
Applicant’s fencing’ nor did it establish ‘that the Respondent’s use of the words CLEAR
VIEW, was calculated or likely to deceive or confuse the ordinary customer, and thus
to cause confusion and damage to the alleged goodwill of the Applicant’s business’. It
should be noted at the outset that no facts were set out in the founding affidavit to
support the Class 6 services trade mark infringement claim under ss 34(1)(a) and (c)
of the Act and the services passing-off claim. It follows that those claims must fail.

The trade mark infringement claims
[7] Sections 9, 10(2), 15, 34(1)(a) and (c) and 2(b) of the Act are pertinent. Section
9 deals with registrable trade marks as follows:
‘(1) In order to be registrable, a trade mark shall be capable of distinguishing the goods or
services of a person in respect of which it is registered or proposed to be registered from the
goods or services of another person either generally or, where the trade mark is registered or
proposed to be registered subject to limitations, in relation to use within those limitations.
(2) A mark shall be considered to be capable of distinguishing within the meaning of
subsection (1) if, at the date of application for registration, it is inherently capable of so
distinguishing or it is capable of distinguishing by reason of prior use thereof.’

[8] Section 10 deals with unregistrable trade marks. Specific in this regard is s
10(2) which provides that:
‘The following marks shall not be registered as trade marks or, if registered, shall, subject to
the provisions of sections 3 and 70, be liable to be removed from the register:
(2)   a mark which—
(a) is not capable of distinguishing within the meaning of section 9; or
(b) consists exclusively of a sign or an indication which may serve, in trade, to designate the
kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of
the goods or services, or the mode or time of production of the goods or of rendering of the
services; or

(c) consists exclusively of a sign or indication which has become customary in the current
language or in the bona fide and established practices of the trade.’

[9]  Section 15 provides for trade mark registration subject to a disclaimer:
‘If a trade mark contains matter which is not capable of distinguishing within the meaning of
section 9, the registrar or the court, in deciding whether the trade mark shall be entered in or
shall remain on the register, may require, as a condition of its being entered in or remaining
on the register—
(a) that the proprietor shall disclaim any right to the exclusive use of all or any portion of any
such matter to the exclusive use of which the registrar or the court holds him not to be entitled;
or
(b) that the proprietor shall make such other disclaimer or memorandum as the registrar or the
court may consider necessary for the purpose of defining his rights under the registration:
Provided that no disclaimer or memorandum on the register shall affect any rights of the
proprietor of a trade mark except such as arise out of the registration of the trade mark in
respect of which the disclaimer is made.’

[10] Sections 34(1)(a) and (c), and (2)(b) read as follows:
‘(1) The rights acquired by registration of a trade mark shall be infringed by—
(a) the unauthorized use in the course of trade in relation to goods or services in respect of
which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as
to be likely to deceive or cause confusion;
. . .
(c) the unauthorized use in the course of trade in relation to any goods or services of a mark
which is identical or similar to a trade mark registered, if such trade mark is well known in the
Republic and the use of the said mark would be likely to take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the registered trade mark,
notwithstanding the absence of confusion or deception: Provided that the provisions of this
paragraph shall not apply to a trade mark referred to in section 70(2).
(2) A registered trade mark is not infringed by —
. . .
(b) the use by any person of any bona fide description or indication of the kind, quality, quantity,
intended purpose, value, geographical origin or other characteristics of his goods or services,
or the mode or time of production of the goods or the rendering of the services.’

[11] When Cochrane applied for the registration of the mark ‘CLEAR VU’ in the two
categories, M-Systems Group (Pty) Ltd (M-Systems) – at the time a competitor of
Cochrane in producing and installing fencing products – objected. The basis of its
opposition was that the mark was not registerable since it consisted exclusively of an
indication which may serve in trade to designate the kind, quality, intended purpose or
other characteristics of the goods or services (s 10(2)(b) of the Act) and that it was not
capable of distinguishing the goods and services for which it is to be used (ss 9(1) and
10(2)(a) of the Act).

[12] The Gauteng Division of the High Court, Pretoria (Basson J), ordered the
registration of the mark subject to two disclaimers. That order was appealed against
to this Court. In Cochrane Steel Products (Pty) Ltd v M-Systems Group (Cochrane),2
this Court dismissed the appeal, save for the deletion of certain words in the second
disclaimer as ordered by Basson J. In the result, Cochrane’s ‘CLEAR VU’ goods and
services trade marks were registered subject to the following identical disclaimers:
‘The Registration of this mark shall give no right to the exclusive use of the words “clear” and
“view” separately and apart from the mark. The registration of this mark shall not debar others
from the bona fide descriptive use in the course of trade of the words “clear view” and view.’
I refer to the second part of this entry as the ‘second disclaimer’.

[13] It is to be noted that the formulation of the second disclaimer is similar to the
provisions of section 34(2)(b) of the Act. But, as was said by Harms JA in Cadbury
(Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another,3
‘. . . a disclaimer is, theoretically, never necessary since registration of a trade mark cannot
give rise to any rights except those arising from the mark as a whole. It nonetheless has a
function. Primarily, it is to prevent the registration of a composite mark from operating so as to
inhibit the use of the disclaimed element by others.’
It prevents traders from being-
‘. . . put through the trouble and expense of first manufacturing and selling and then be
subjected to the risk of infringement litigation where the Legislature has given a simple remedy
akin to a declaration of rights to obtain certainty’.4

2 Cochrane Steel Products (Pty) Ltd v M-Systems Group [2017] ZASCA 189.
3 Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another [2000] ZASCA 2; 2000 (2)
SA 771 (SCA); [2000] 2 All SA 1 (A) para 13 relying on Philip Morris Inc's Trade Mark Application [1980]
RPC 527 at 532-533.
4 Cadbury para 14.

[14] In dismissing the appeal in Cochrane,5 Navsa ADP relied on a number of well-
known trade mark law judgments and re-affirmed the principles therein enunciated.
The trade mark law principles to be distilled from Cochrane and from the trade mark
jurisprudence relied upon in that case, can briefly be summarised as follows: Trade
mark law is concerned with the provision of information regarding trade origin. Its
object, as reflected in s 34(1)(a) and (b), is to prevent commercial dissemination that
is misleading. Trade mark registration gives a perpetual monopoly. However, the
registration of trade marks is capable of creating perpetual unjustified monopolies in
areas it should not. Therefore, the rights of other traders should not be constrained
beyond that which is necessary for the protection of the trade mark proprietor. Trade
mark law principles are not aimed at preventing or inhibiting competition. Traders
should not be permitted to ‘enclose part of the great common of the English language
and to exclude the general public of the present day and of the future from access to
the enclosure’.6 Trade mark use that is not misleading or deceiving as to origin is
protected, constitutionally and in terms of ordinary trade mark principles. A trade mark
proprietor cannot bring an action for infringement in respect of the use of a disclaimed
feature. The deliberate misspelling of ordinary descriptive words which other traders
may wish to use in relation to particular goods or services ought also to be disclaimed
since the phonetic equivalent of a non-distinctive word is itself non-distinctive.

[15] In Cochrane, Navsa ADP concluded thus:
‘[21] Returning to the facts of the present case, the “VU” in the composite mark “CLEARVU”,
is a deliberate misspelling of the ordinary word “view” and is understandable in light of the
nature of the product and what it intends to convey. To state, as Cochrane does, that it does
not embody a misspelling of the ordinary English word “view”, but that it is a coined word which
just happens to be the phonetic equivalent of the ordinary English word “view” is to strain to
avoid the implication that commonly, admissions are entered when there is a misspelling of a
word and to seek a monopoly that extends beyond that which is acceptable. Moreover, as
pointed out above in para 14, with reference to Webster and Page, the phonetic equivalent of
a non-distinctive word is itself non-distinctive and it would seem to follow that if the word itself
is one that ought to be disclaimed then its phonetic equivalent should also be disclaimed.

5 Cochrane paras 9-20.
6 In Re: Joseph Crossfield & Sons, Limited [1910] 1 Ch 13 (CA).

[22] In my view, neither Cochrane, nor any other trader, is entitled to appropriate exclusively
the ordinary English words “clear” and “view”, which, in effect, constitute the composite mark.
Furthermore, those words are commonly used descriptively in relation to fencing products.
The registration of the mark should not operate to inhibit the use by others of the disclaimed
elements.’

[16] The words ‘clear’ and ‘view’ are ordinary and well-known words to be found in
any dictionary, and so is the phrase ‘clear view’. As a noun, the word ‘view’ ordinarily
connotes ‘the ability to see something . . . from a particular place’ and as a verb ‘look
at or inspect’. As an adjective the word ‘view’ ordinarily connotes ‘transparent’, ‘having
good visibility’ and ‘free of any obstruction’.7  Therefore, when the word ‘clear’ is
adjectively used with the noun ‘view’ in a mark in relation to goods, they normally laud
a characteristic of those goods. They are non-distinctive words and, also on the
evidence before us, commonly used descriptively in relation to fencing products.

[17] Jumalu’s billboard depiction reveals that ‘ClamberPrufe’ is the dominant mark
used in the sense of ‘any sign capable of being represented graphically, including a
device, name, signature, word, letter, numeral, shape, configuration, pattern,
ornamentation, colour or container for goods or any combination of the
aforementioned’ as defined in s 1 of the Act. The words ‘CLEAR VIEW FENCING’
below the mark ‘ClamberPrufe’ in a much smaller font is clearly used in a descriptive
sense; a key characteristic of the fence is that whilst it serves as a barrier, it does not
obstruct sight. ‘JUMALU’ is the company that manufactures and installs the
‘ClamberPrufe’ fencing, and its telephone number and e-mail address are provided at
the bottom of the billboard.

[18] On its website, Jumalu uses the words ‘Jumalu’, ‘Clamberprufe’ and ‘clear view’
in proper context. The words ‘clear view’ are used exclusively together with the words
‘Clamberprufe’ or as ‘clear view aesthetics’. Both are descriptive use. In conjunction
with the word ‘Clamberprufe’, it describes what type of fence ‘Clamberprufe’ is - a clear
view fence – or it describes the aesthetics of the fence – it has a clear view aesthetic.
The use of the words ‘clear view’ by Jumalu on its billboards and website is therefore

7 Concise Oxford English Dictionary 12 ed (Oxford University Press) at 1621 and 266.

undoubtedly descriptive use when considered in the proper context of the billboard or
the website.

[19] Cochrane’s last arrow in its bow in its attempt at obtaining infringement relief
under ss 34(1)(a) and (c) of the Act, was its contention that Jumalu’s use of the words
‘clear view’, even if descriptive, is not bona fide as contemplated in the second
endorsement. I do not propose to attempt a comprehensive definition of what the
expression ‘bona fide description’ of goods or services in s 34(2)(b) or ‘bona fide
descriptive’ use in the second disclaimer means. It seems to me that some assistance
may be derived, by analogy, from the meaning our courts have attributed to the
concept of bona fide use in the context of the statutory defences to trade mark
infringement. For example, it has been held that-
‘user for an ulterior purpose, unassociated with a genuine intention of pursuing the object for
which the Act allows the registration of a trade mark and protects its use, cannot pass as a
bona fide user.’8
In this regard, what the Legislature intended to safeguard was-
‘the use by a trader, in relation to his goods, of words, which are fairly descriptive of his goods,
genuinely for the purpose of describing the character or quality of the goods: the use of the
words must not be a mere device to secure some ulterior object, as for example where the
words are used in order to take advantage of the goodwill attaching to the registered trade
mark of another’.9

[20] In essence, what Cochrane contends is that Jumalu is not using the words
‘clear view’ to describe its ClamberPrufe fence and its unobstructed view characteristic
but rather to capitalise on the reputation of the Cochrane’s ‘CLEAR VU’ mark. The
only factual basis upon which it seeks such an inference to be drawn is that in 2015
Jumalu had on its website used Cochrane’s mark by using the words ‘CLEARVU’ and
‘INVISIBLE WALL’ (which were at that stage not registered trade marks) to describe
its fencing products. As a result, Cochrane had to address a cease and desist demand
to Jumalu. However, Jumalu complied with Cochrane’s demand, altered its website
and never used the marks ‘CLEARVU’ and ‘INVISIBLE WALL’ again. An inference
that Jumalu’s use of the words ‘clear view’, even if descriptive, is not bona fide as

8 Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation 1963 (3) SA 341 (A) at 351E-
F.
9 Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 645F-G.

contemplated in the second endorsement and in s 34(2)(b) of the Act, can therefore
not reasonably be drawn. The words ‘clear view’ were disclaimed when Cochrane’s
trade marks under consideration were registered. By not disbarring others from using
those words, the entry in effect disclaims Cochrane’s right to the exclusive use thereof.

[21] I conclude, therefore, that Jumalu’s use of the words ‘clear view’ to describe the
kind of its security steel fencing and its characteristic of having a clear view aesthetic
does not infringe Cochrane’s registered trade mark ‘CLEAR VU’. Jumalu’s use is not
likely to mislead or deceive as to the origin and is thus protected. It follows that the
high court correctly dismissed Cochrane’s infringement claims under ss 34(1)(a) and
(c) of the Act.

The passing-off claim
[22] This leaves the passing off-claim, a reputational cause of action under the
common law. A disclaimer, however, does not affect a trade mark proprietor’s right at
common law if it establishes that the use by the defendant of the disclaimed feature is
likely to result in the defendant’s goods or services being passed off as its goods or
services.10 The law of passing-off is well established as a species of unlawful
competition. There are various ways in which a trader can pass off the goods of a rival
trader. But in essence, passing-off concerns a misrepresentation. There is no closed
list as to how the misrepresentation can be effected.

[23] In Policansky Bros. Ltd v L&H Policansky,11 Wessels CJ said this:
‘In most of the cases which occur it is the get-up of a manufacturer’s goods by a rival which
gives rise to passing-off actions. Here as a rule the element of dolus prevails, for the get-up is
seldom, if ever, accidental: it is generally the result of calculated imitation. In order, however,
to judge whether there has or has not been a passing-off, the get-up of the goods, even if
there has not been dishonest imitation, is often an element in determining whether the
defendant’s acts are or are not calculated to deceive the ordinary reasonable man to believe
that when buying the goods of A he is buying those of B. There are various ways in which the
defendant can pass off the goods of the plaintiff. The mass of reported cases show how
numerous the devices are by which a manufacturer can attempt to identify his goods and

10 Webster and Page South African Law of Trade Marks: Service Issue 19 (2015), para 9.19 at 9-16.
11 Policansky Bros Ltd v L & H Policansky 1935 AD 89 at 98.

therefore how varied the circumstances are in passing-off cases. Each case must necessarily
depend on its own circumstances but if we examine the decided cases we find that many of
them fall into definite classes which have common features.’

[24] In Williams t/a Jenifer Williams & Associates and Another v Life Line Southern
Transvaal,12 Corbett CJ said the following:
‘Passing-off is a species of wrongful competition in trade or business. In its classic form it
usually consists in A representing, either expressly or impliedly (but almost invariably by the
latter means), that the goods or services marketed by him emanate in the course of business
from B or that there is an association between such goods or services and the business
conducted by B. Such conduct is treated by the law as being wrongful because it results, or is
calculated to result, in the improper filching of another’s trade and/or in an improper
infringement of his goodwill and/or in causing injury to that other’s trade reputation. Such a
representation may be made impliedly by A adopting a trade name or a get-up or mark for his
goods which so resembles B’s name or get-up or mark as to lead the public to be confused or
to be deceived into thinking that A’s goods or services emanate from B or that there is the
association between them referred to above. Thus, in order to succeed in a passing-off action
based upon an implied representation it is generally incumbent upon the plaintiff to
establish, inter alia: firstly, that the name, get-up or mark used by him has become distinctive
of his goods or services, in the sense that the public associate the name, get-up or mark with
the goods or services marketed by him (this is often referred to as the acquisition
of reputation); and, secondly, that the name, get-up or mark used by the defendant is such or
is so used as to cause the public to be confused or deceived in the manner described above.
These principles are trite and require no citation of authority.’

[25] Cochrane has failed to establish any conduct by Jumalu which is treated by our
law as wrongful. It failed to establish the acquisition of reputation element and the
misrepresentation element of its passing-off claim. As I have demonstrated, Jumalu’s
trade mark for its goods and its get-up do not resemble Cochrane’s. It uses the words
‘clear view’ exclusively together with the words ‘Clamberprufe’ or ‘clear view
aesthetics’ to describe the kind of its security steel fencing and its characteristic of
having a clear view aesthetic. A representation that the security steel fencing marketed
by Jumalu emanates in the course of business from Cochrane or that there is an

12 Williams t/a Jenifer Williams & Associates and Another v Life Line Southern Transvaal 1996 (3) SA
408 (SCA) paras 22-24.

association between such goods and the business conducted by Cochrane has not
been established. The name, get-up or mark used by Jumalu is not such or is not used
to likely cause the public to be confused or deceived as to origin or association.

[26] Equally apposite to Cochrane’s alternative passing-off claim is the caution re-
affirmed in this Court recently in the case of Open Horizon Ltd v Carnilinx (Pty) Ltd,13
where Ponnan JA held that:
‘[25] In any event, the appellant relies for its unlawful competition claim on the identical trade
marks relied on for its trade mark infringement relief. The unlawful competition relief that the
appellant seeks is premised on the factual assertion that the respondent is using ‘confusingly
similar infringing marks’, thereby imitating the appellant’s PACIFIC range of products. Having
determined that the marks are not confusingly similar for the purposes of trade mark
infringement, how, it must be asked, can they be confusingly similar for the purposes of the
alternative claim based on unlawful competition.
[26] In Blue Lion Schutz JA had occasion to repeat the caution sounded by him some 16-years
earlier in Payen Components. He did so in these terms.
“. . . concerning the illegitimacy of using some general notion of unlawful competition to create
an ersatz passing off with requirements (in the alternative) less exacting than those required
by the common law. . . .”
He added;
“. . . Some of the restraints that the common law places on the passing off action (the one
relevant to this case is the need to prove the likelihood of deception and confusion) are
important in preventing the creation of impermissible monopolies. . . .”
I daresay, this is precisely the kind of matter that Schutz JA cautioned against.’

[27] It follows that, like the trade mark infringement claims under subsections
34(1)(a) and (c) of the Act, the passing-off claim must also fail.

[28] As a result, the appeal is dismissed with costs.

________________________
P A MEYER
ACTING JUDGE OF APPEAL

13 Open Horizon Ltd v Carnilinx (Pty) Ltd [2022] ZASCA 75. (References omitted.)

Appearances

For appellant:
O Salmon SC

Instructed by:
Rademeyer Attorneys, Randburg, Johannesburg

C/o Honey Attorneys, Bloemfontein

For respondent:
G Kairinos SC
Instructed by:
Jurgens Bekker Attorneys, Alberton, Johannesburg

C/o Rossouws Attorneys, Bloemfontein
THE SUPREME COURT OF APPEAL OF SOUTH AFRICA

MEDIA SUMMARY OF JUDGMENT DELIVERED IN THE SUPREME COURT OF
APPEAL

From:
The Registrar, Supreme Court of Appeal
Date:
22 June 2022
Status:
Immediate

The following Summary is for the benefit of the media in the reporting of this case and
does not form part of the judgments of the Supreme Court of Appeal
Cochrane Steel Products (Pty) Ltd v Jumalu Fencing (Pty) Ltd (166/2021) [2022] ZASCA
100 (22 June 2022)

Today the Supreme Court of Appeal (SCA) delivered a judgment dismissing, with costs, an
appeal against a decision of the Gauteng Division of the High Court of South Africa,
Johannesburg (the high court).
The appellant, Cochrane Steel Products (Pty) Ltd (Cochrane), had sought an order interdicting
and restraining the respondent, Jumalu Fencing (Pty) Ltd (Jumalu), from infringing its ‘CLEAR
VU’ trade marks in terms of ss 34(1)(a) and (c) and 34(2)(b) of the Trade Marks Act 194 of
1993 (the Act) as also, for interdictory relief based on passing-off. Cochrane and Jumalu are
direct competitors in manufacturing and installing physical perimeter security barriers. The
basis of Jumalu’s opposition to the relief claimed by Cochrane was that the words ‘clear view’
are disclaimed elements of Cochrane’s registered trade marks. In addition its use of those
words on its advertising billboards and website is bona fide and descriptive in relation to its
fencing products and their characteristics. Other competitors within the security barrier
industry also use the words ‘clear view’ to describe their fencing products. Cochrane’s ‘CLEAR
VU’ trade marks were registered subject to the following identical disclaimers:
‘The Registration of this mark shall give no right to the exclusive use of the words “clear” and “view”
separately and apart from the mark. The registration of this mark shall not debar others from the bona
fide descriptive use in the course of trade of the words “clear view” and view.’

The SCA held that the words ‘clear’ and ‘view’ are ordinary and well-known words to be found
in any dictionary, and so is the phrase ‘clear view’. As a noun, the word ‘view’ ordinarily
connotes ‘the ability to see something . . . from a particular place’ and as a verb ‘look at or
inspect’. As an adjective the word ‘view’ ordinarily connotes ‘transparent’, ‘having good
visibility’ and ‘free of any obstruction’. Therefore, when the word ‘clear’ is adjectively used with
the noun ‘view’ in a mark in relation to goods, they normally laud a characteristic of those
goods. They are non-distinctive words and, also on the evidence before the SCA, commonly
used descriptively in relation to fencing products. Jumalu’s billboard depiction reveals that
‘ClamberPrufe’ is the dominant mark used in the sense of ‘any sign capable of being
represented graphically, including a device, name, signature, word, letter, numeral, shape,
configuration, pattern, ornamentation, colour or container for goods or any combination of the
aforementioned’ as defined in s 1 of the Act. The words ‘CLEAR VIEW FENCING’ below the
mark ‘ClamberPrufe’ in a much smaller font is clearly used in a descriptive sense; a key
characteristic of the fence is that whilst it serves as a barrier, it does not obstruct sight.
‘JUMALU’ is the company that manufactures and installs the ‘ClamberPrufe’ fencing, and its
telephone number and e-mail address are provided at the bottom of the billboard. On its
website, Jumalu uses the words ‘Jumalu’, ‘Clamberprufe’ and ‘clear view’ in proper context.
The words ‘clear view’ are used exclusively together with the words ‘Clamberprufe’ or as ‘clear
view aesthetics’. Both are descriptive use. In conjunction with the word ‘Clamberprufe’, it
describes what type of fence ‘Clamberprufe’ is - a clear view fence – or it describes the
aesthetics of the fence – it has a clear view aesthetic. The SCA concluded that the use of the
words ‘clear view’ by Jumalu on its billboards and website is therefore undoubtedly descriptive
use when considered in the proper context of the billboard or the website.
Cochrane’s last arrow in its bow in its attempt at obtaining infringement relief under ss 34(1)(a)
and (c) of the Act, was its contention that Jumalu’s use of the words ‘clear view’, even if
descriptive, is not bona fide as contemplated in the second endorsement. In essence, what
Cochrane contended was that Jumalu is not using the words ‘clear view’ to describe its
ClamberPrufe fence and its unobstructed view characteristic but rather to capitalise on the
reputation of the Cochrane’s ‘CLEAR VU’ mark. The only factual basis upon which it sought
such an inference to be drawn was that in 2015 Jumalu had on its website used Cochrane’s
mark by using the words ‘CLEARVU’ and ‘INVISIBLE WALL’ (which were at that stage not
registered trade marks) to describe its fencing products. As a result, Cochrane had to address
a cease and desist demand to Jumalu. However, the SCA held that Jumalu had complied with
Cochrane’s demand, altered its website and never used the marks ‘CLEARVU’ and
‘INVISIBLE WALL’ again. An inference that Jumalu’s use of the words ‘clear view’, even if
descriptive, is not bona fide as contemplated in the second endorsement and in s 34(2)(b) of

the Act, could therefore not reasonably have been drawn. The words ‘clear view’ were
disclaimed when Cochrane’s trade marks under consideration were registered. By not
disbarring others from using those words, the entry in effect disclaims Cochrane’s right to the
exclusive use thereof.
The SCA concluded, therefore, that Jumalu’s use of the words ‘clear view’ to describe the kind
of its security steel fencing and its characteristic of having a clear view aesthetic does not
infringe Cochrane’s registered trade mark ‘CLEAR VU’. Jumalu’s use is not likely to mislead
or deceive as to the origin and is thus protected. It follows that the high court correctly
dismissed Cochrane’s infringement claims under ss 34(1)(a) and (c) of the Act.
Turning to Cochrane’s passing off-claim, a reputational cause of action under the common
law, the SCA held that Cochrane had failed to establish any conduct by Jumalu which is
treated by our law as wrongful. It had failed to establish the acquisition of reputation
element and the misrepresentation element of its passing-off claim. Jumalu’s trade
mark for its goods and its get-up do not resemble Cochrane’s. It uses the words ‘clear
view’ exclusively together with the words ‘Clamberprufe’ or ‘clear view aesthetics’ to
describe the kind of its security steel fencing and its characteristic of having a clear
view aesthetic. A representation that the security steel fencing marketed by Jumalu
emanates in the course of business from Cochrane or that there is an association
between such goods and the business conducted by Cochrane had not been
established. The name, get-up or mark used by Jumalu is not such or is not used to
likely cause the public to be confused or deceived as to origin or association.
The SCA concluded that, like the trade mark infringement claims under subsections 34(1)(a)
and (c) of the Act, the passing-off claim must also fail.
~~~~ends~~~~