Reportable
Case No 274/99
In the matter between:
LEVI STRAUSS & CO
Appellant
and
COCONUT TROUSER MANUFACTURERS (PTY) LTD
Respondent
Court:
HARMS, SCHUTZ, FARLAM, MTHIYANE JJA, and CHETTY AJA
Heard:
4   MAY 2001
Delivered:
17 MAY 2001
Subject:
Trade marks: determination under s 17(3) of the Trade Marks Act 62 of
1963.
JUDGMENT
HARMS JA/

HARMS JA:
[1] This appeal concerns a determination of the rights of competing
applicants for the registration of  trade marks under s 17(3) of the Trade Marks Act
62 of 1963.  During 1986, the appellant (“Levi Strauss”), a well-known clothing
manufacturer based in the United States of America, began marketing men's clothing
under the trade marks Dockers (as a word mark) and Dockers with a wings device.
Starting in 1987 it began registering them worldwide.  Before reaching the South
African market and prior to the filing of registration applications in this country, Mr
Chaiman Nathoo, a local businessman who was aware of the use of these marks by
Levi Strauss overseas, filed an application on 12 September 1988 for the registration
(no 88/8163) of the mark Dockers simpliciter in class 25 in relation to articles of
clothing excluding footwear.  Nearly a year later, on 9 August 1989, Levi Strauss filed
two applications (nos 89/7138 and 89/7139), also in class 25 and relating to, i a,
clothing, for its said marks.

[2] The Registrar of Trade Marks was subsequently called upon to
determine the rights of these two parties under s 17(3) which read as follows:
“Where separate applications are made by different persons to be registered as proprietors respectively
of trade marks that so resemble each other that the use of such trade marks in relation to goods or
services in respect of which they are respectively sought to be registered would be likely to deceive or
cause confusion, the registrar may refuse to register any of them until the rights of those persons have,
upon application in the prescribed manner, been determined by him, or have been settled by agreement
in a manner approved by him.”
The parties duly filed their statements of case and supporting affidavits and after
argument the Registrar ruled in favour of Levi Strauss by accepting its applications and
directing that they be advertised in the Patent Journal.   By the time of the hearing Mr
Nathoo had been replaced by the present respondent (“Coconut”) as the applicant for
the registration of the first-mentioned trade mark under circumstances to which I shall
return.  In any event, there was an appeal by Coconut and a cross-appeal by Levi
Strauss to the Full Court of the Transvaal Provincial Division.  The appeal was upheld

and the cross-appeal dismissed (by Du Plessis, Southwood and Van der Westhuizen
JJ). The net effect of the order was that the Coconut  application was accepted.
Hence the present appeal by Levi Strauss.
[3] A number of matters need not detain us.  First, the application has to be
decided under the 1963 Act and not under the current Trade Marks Act 194 of 1993
(see its s 3(2)).  Second, Levi Strauss has a right of appeal to this Court without any
leave (Cowbell AG v ICS Holdings Ltd, an as yet unreported judgment of this Court).
Third, all things being equal, the first application for a trade mark in South Africa has
in these circumstances priority (at least under the 1963 Act) and the fact that Mr
Nathoo intentionally copied a foreign trade mark is per se of no consequence
(Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A) 746F-H).  Fourth, the
Registrar's ratio in upholding Levi Strauss's claim to preference was patently wrong
and based upon an incorrect understanding of the evidence relating to use.
[5] In spite of the fact that Mr Nathoo “trading as Milord Clothing

Industries” alleged in his application form that he proposed to use the Dockers trade
mark in respect of clothing, it transpired during the exchange of evidence that this
claim was false.  His explanation was that he was a director of Coconut  and it was
this company which traded as Milord Clothing Industries; because he was a principal
shareholder, he wrongly equated himself with the company; and he was under the
bona fide impression that he could give instructions to file the application in his name.
Because Mr Nathoo never had the intention to use the trade mark, he could not have
claimed to be its proprietor and, once again, all things being equal, Levi Strauss's
applications were then entitled to precedence (Valentino Globe BV v Phillips and
Another 1998 (3) SA 775 (SCA)).
[6] Aware of his Achilles heel and conscious of the fact that Levi Strauss had
raised the issue pertinently and had stated that in its view the matter could not be
rectified, Mr Nathoo surreptitiously and without notice to Levi Strauss, applied to the
Registrar for a substitution of Coconut  for himself as applicant for the trade mark and

the Registrar, without notice to Levi Strauss, granted the substitution.  Apart from the
unprofessional conduct in approaching the Registrar in this manner, the application to
substitute Mr Nathoo was, as the Full Court noted, irregular in almost every possible
respect.
[7] How did the Registrar substitute the one for the other as applicant?
Reliance was placed by counsel upon s 49(7) and 56 (2) which permitted the
substitution of an applicant for the registration of a trade mark.  Assuming that the
substitution was in terms of these provisions, it could only have been effected ex nunc
and not ex tunc.  Since, generally speaking, a claim to proprietorship in a registered
trade mark arises by way of an application for registration provided the applicant used
or has an intention to use the mark (s 20(1)), the date of application for registration
determines the date of the vesting of the right.  Prior or existing use is only relevant
in the event of competing claims of proprietorship.  Mr Nathoo never had the intention
to use the mark and never used it.  Coconut, likewise, had not used and had no

intention of using the mark, at least not at the time of Mr Nathoo's application.  In
other words, the substitution could not have had any retrospective effect and Coconut
could not have been in a better position or possessed of greater rights than Mr Nathoo.
This much was conceded during argument.  Any other conclusion would make
nonsense of the registration system and the requirement of proprietorship.   The
question thus still remained whether Mr Nathoo as first claimant to proprietorship had
the intention to use the trade mark at the date of his application, a question not
affected by the substitution.   In view of his concession that he did not have that
intention, the only issue raised by him, namely that his application was first in line and
that the first filing date determined the outcome of the case, became a non-issue.
[8] The Full Court came to a different conclusion.  It assumed that the
Registrar had acted under s 20(9) which provided that the Registrar may permit an
applicant to amend his application upon such terms as the Registrar may think fit. It
proceeded to hold that this would include a substitution of the applicant because

substitution is a form of amendment; amendments are effective retrospectively;
therefore, this change of applicant operated retrospectively;  and since Coconut  was
now the first applicant to file an application, its application had to be accepted in
preference to those of Levi Strauss. The underlying assumptions and the reasoning
are, in my view, flawed.
[9] In order to read the right to substitute into s 20(9), the Full Court relied
upon reg 56 of the Trade Marks Regulations 1971, without having regard to the
principle that a statute may not be interpreted by reference to subordinate legislation.
By reading into s 20(9) a right to substitute different from those explicitly mentioned
in s 49(7) and 56(2), the Full Court overlooked the principle that general provisions
do not override specific provisions.
[10] Assuming that s 20(9) was nevertheless applicable, I turn to the
statement that substitution is a form of amendment, in reliance upon Herbstein & Van
Winsen The Civil Practice of the Supreme Court of South Africa 4th ed 418.  That

may be so in the context of pleadings in litigation (although vital distinctions remain
between a so-called substitution which is no more than the correction of a misnomer,
and a true substitution of parties: cf Du Toit v Highway Carriers and Another 1999
(4) SA 564 (W) and compare Uniform Rule 15 with rule 28).  An application for the
registration of a trade mark, however, is not a pleading but a formal act which creates
rights effective against the public.
[11] The further finding, namely that amendments of pleadings are
retrospective, may as a matter of procedural law be generally true, but that does not
mean that it is true as a matter of substantive law.  Amendments of pleadings cannot
create rights.  They cannot, for instance, resuscitate a prescribed claim or defeat a
statutory limitation as to time (Dumasi v Commissioner, Venda Police 1990 (1) SA
1068 (VSC) 1071C-D).  In this regard the judgment in Associated Paint & Chemical
Industries (Pty) Ltd t/a Albestra Paint and Lacquers v Smit 2000 (2) SA 789 (SCA)
is instructive.  Company A issued a summons claiming payment.  Later notice of

intention to amend the name of the plaintiff from company A to company B was
given.  Both A and B were registered companies.  Prescription had in the meantime
run and the amendment was refused, an order confirmed on appeal.  The ratio of the
judgment was this (par 18 of the judgment):
“In the present case a summons was served on the defendant whereby the plaintiff [A] claimed payment
of the debt. It subsequently transpired that the plaintiff [A] was not the defendant's creditor.  . . .  It is
common cause therefore that a debtor-creditor relationship between the defendant and the plaintiff [A]
never existed. Consequently the summons did not constitute a process whereby the creditor [B]
claimed payment of the debt. The running of prescription in respect of the debt was accordingly not
interrupted by service of the summons on the defendant.”
If the proposed amendment could have had retrospective effect as a matter of
substantive law, the conclusion would have been different.   By parity of reasoning,
the substitution of Coconut did not transform the original application into an application
in which Coconut claimed proprietorship by virtue of an intention existing on 12
September 1988 to use the trade mark.  An amendment cannot create jurisdictional

facts (in this case an intention to apply for registration and an intention to use) which
do not otherwise exist.  To summarise, even if the substitution can be equated with the
amendment of a pleading it did not, as a matter of substantive law, retrospectively
confer upon Coconut rights which Mr Nathoo did not possess.
[12] Having come to the conclusion that the Registrar was called upon to
decide the competing claims to proprietorship without regard to the substitution, it
becomes unnecessary to decide whether the substitution was void or voidable and
whether the Registrar was competent to decide such issues.  A further consequence
is that since Mr Nathoo's intention was the jurisdictional fact and because he did not
have the required intention at the relevant time, Levi Strauss is entitled to precedence.
Counsel, however, raised two other matters in this regard.   He submitted that Levi
Strauss could not succeed because it did not place sufficient evidence before the
Registrar of its intention to use the marks at the date of its applications.   In this regard
he drew a comparison between the facts of this case and those of Victoria's Secrets

at 754F-H.  I do not intend to analyse the facts for the simple reason that the question
of Levi Strauss's intention was never a matter in contention.  As is required, its
application forms contain the allegation of the necessary intention.  Neither in Mr
Nathoo's statement of case nor in any of his evidence was the allegation disputed, not
even by implication.  All that was raised was the question of Levi Strauss's prior use
of the marks, something never relied upon by it.  Levi Strauss was therefore not called
upon to deal with the matter and the Full Court was not entitled to base part of its
reasoning thereon.
[13] Counsel further argued that the evidence establishes that Coconut  is
entitled to the mark because of its use of the mark antedating Levi Strauss's
applications.   For this he relied on a bald statement in Mr Nathoo's affidavit that the
company caused small quantities of Dockers T-shirts to be imported into South Africa
“from about 1988".   The year 1988 is convenient because it is before 9 August 1989,
the date of the Levi Strauss applications.  But, “from about 1988" does not necessarily

mean during 1988 or even before Levi Strauss's date in 1989.  In addition, the
opposition to Levi Strauss's applications was never premised upon prior use by
Coconut .  When asked for discovery, Mr Nathoo declined to produce any documents
relating to importation or sales because they were, having regard to the issues in the
case, irrelevant.  The belated attempt during argument to amend the statement of case
at the conclusion of argument in this Court cannot change the nature of the case and
make issues out of non-issues.  Lastly, Coconut never intended to use the mark as its
proprietor; at best it was used as result of an implied licence from Mr Nathoo.
Whether such use can found a claim to proprietorship is unclear.
[14] It follows that the appeal has to succeed.  I have not dealt with the
dismissal with costs of Levi Strauss's cross-appeal by the Full Court.  The object of
the cross-appeal was to undo the findings of the Registrar in relation to the substitution.
The cross-appeal was out of order because the Registrar was not called upon nor did
he make an order in this regard.  However, because of the improper manner in which

the substitution had been obtained, I do not intend ordering Levi Strauss to pay these
costs.  In the result:
(1)
the appeal is upheld with costs, including the costs of two counsel;
(2)
the order of the Court a quo is set aside and substituted with an order dismissing
the appeal and cross-appeal and ordering the appellant (Coconut) to pay the
costs.
L T C HARMS
JUDGE OF APPEAL
Agree:
SCHUTZ JA
FARLAM JA
MTHIYANE JA
CHETTY AJA