Evidence - the basics revisisted
29/12/2000

Nature of evidence


Substantive law lays down what has to be proved and by whom and rules of evidence relate to the manner of its proof.

Evidence in application proceedings is furnished on affidavit while evidence in action proceedings is given by oral evidence. In certain instances, evidence in application proceedings may be furnished orally, for eg. where disputes of fact arise and the matter or the issues in dispute are referred to oral evidence. Where statutes provide in particular instances that evidence in trials may be given on affidavit, the requirement of oral evidence will be overridden by the other statute.

Section 53 of the Trade Marks Act provides that parties before the Registrar of Trade Marks are deemed to be parties to civil proceedings for the purpose of the High Court Act. Normally evidence before the Registrar of Trade Marks is on affidavit but he may refer a matter to oral evidence where disputes of fact arise.

As in trade mark matters application proceedings are predominantly used, this article will deal to a greater extent with the evidence required in affidavits.

The general rule is that a party must make out his case in his founding affidavit. The question is whether , having regard to the whole of the founding affidavit, the allegations it contains are sufficient to warrant a finding in favour of the applicant. The applicant must clearly identify the portions of annexures on which he wishes to rely as annexures are not automatically incorporated into the pleadings.

In the answering affidavit, the respondent must set out which of the applicant's allegations he admits and which he denies and to set out his version of the facts. It must be remembered that failure to deal at all with an allegation by the applicant amounts to an admission of such allegation.

When preparing answering affidavits, it is important not to furnish too much detail regarding any shortfalls in the applicant's founding affidavit which may give the applicant the opportunity to rectify and supplement the evidence accurately in the replying affidavit.

The applicant is not entitled to introduce new evidence in the replying affidavit unless such evidence only arose after the filing of the founding affidavit and is relevant to the issues in question.

The rule with affidavits is generally "less is more" and " when in doubt, leave it out".It is also important to be aware of the manner in which documents are referred to in the papers as well as documents that are specifically referred to in annexures that have been incorporated into the affidavit .Any specific reference to a document will render the document subject to discovery in terms of rule 35(12) of the Uniform Rules of Court.

It is essential to lodge supporting documentation as far as possible. The probative value of sweeping , bald statements for eg . "the applicant's trade mark is extremely well known" is rather useless. Without substantiating proof to that effect, the statement will not assist in proving that the mark is well known. If annexures are attached, it is not necessary that they be originals as long as originals are available for inspection, if necessary.

It is of utmost importance to ensure that all the essential averments in respect of the cause of action or defence are accurately and completely contained in the affidavit. It is always best to quote in the papers the section of the Act upon which reliance is made. It must then be ensured that the necessary evidence in respect of every essential averment has been dealt with.

Relevance and admissibility


Section 2 of the Civil Proceedings Evidence Act no.25 of 1965 provides that evidence must be relevant to be admissible. Relevance , according to Hoffman and Zeffert, is a matter of reason and common sense according to everyday standards of reason prevailing at the time of a particular case. It is a matter of degree and a fact will generally be regarded as relevant to another fact if there is a logical connection between the two. Although the court should have regard to all relevant evidence it may exclude it if its probative value is outweighed by danger of confusion of the issues, undue delay, unnecessary cumulative issues and any other prejudicial factor. Although some statements in the papers may be found to be irrelevant and therefore inadmissable, the insertion of such facts in an affidavit will result in a judge necessarily having to read them. Often a statement will only be found to be irrelevant if the opponent takes objection and , even then , the court has already considered the papers. Such statements, although they should not be admissible, create a certain atmosphere in the papers and may sway a court's ultimate decision.

Best evidence rule


The rule provides that the best evidence that the nature of the case will allow must be submitted. Therefore, the contents of a document cannot be proved except by production of the document itself. There is some leniency to the rule, for example, there is no preclusion from presenting oral evidence about a thing if the thing itself could have been produced. This will be dealt with in greater detail under " documentary evidence".

Rule against hearsay


Section 3 of the Law of Evidence Act , 45 of 1988 stipulates the provisions regarding hearsay evidence.

Section 3(4) defines hearsay evidence as " evidence, whether oral or in writing, the probative value of which depends upon the credibility of any person other than the person giving such evidence".

In terms of sub-section (1), hearsay evidence may be admitted in three instances, namely:
  • where the opponent agrees to the admission thereof;
  • the person upon whose credibility the probative value of such evidence depends testifies;
  • the court is of the opinion that such evidence should be admitted in the interests of justice having regard to the following factors:
    • nature of the proceedings
    • nature of the evidence
    • purpose of the evidence
    • probative value of the evidence
    • reason why the evidence is not given by the person upon whose credibility the probative value of such evidence depends
    • prejudice
    • any other factor, ie court has a wide discretion to admit evidence which is clearly hearsay.

Section 3(2) provides that if the evidence is inadmissable for some other reason besides being hearsay, it may not be admitted on the grounds of sub-section(1).

The Act now also clarifies what hearsay is and problems regarding implied hearsay assertions are removed. The evidence must be written or oral.

The Act also provides that section 3 is subject to any other law.

Part VI of the Civil Proceedings Evidence Act, 25 of 1965 enables a court dealing with documentary evidence to receive hearsay evidence and to give the evidence such weight as it deems fit having regard to all circumstances from which an inference can be drawn regarding the accuracy of the statement.

The general rule is that the court still has a wide discretion to allow hearsay evidence if it is reliable and necessary.

Parole evidence rule


This rule consists, in essence, of two parts:
  • the extent to which a document recording a legal act is conclusive as to its terms; and
  • the extent to which proof of extrinsic facts may affect the meaning to be given to those terms.

The Parol Evidence rule lays down that no evidence outside of the document may be led to add to, vary or contradict the terms contained in the document. In other words, the document is the sole memorial of the transaction. The theory is that if a contract has been reduced to writing, the words contained in the document express the intention of the parties and are conclusive as to the terms of the transaction which it is intended or required by law to embody.


In some instances extrinsic evidence is admitted, for eg. evidence may be adduced to show that words have been used in a special or technical sense or to identify persons or objects in a document. This is also dealt with in greater detail under "documentary evidence".

Estoppel


These are the rules that preclude a party from asserting or denying a particular fact. Estoppel always operates as a defence or a counterclaim.

There are essentially two types of estoppel - estoppel by judgment and estoppel by representation.
  • Estoppel by judgment:

This is self-explanatory. It refers to matter that has already been adjudicated.

  • Estoppel by representation:

The representation or conduct must have been of such a nature that it could reasonably have been expected to mislead or induce in the representee a belief in the existence of certain facts. The representation may be made orally, in writing, by conduct or by act of omission but must be unequivocal. Silence or an act of omission may amount to a representation if there was a duty to speak or act, for example, if a person knowingly stands by and allows someone to represent himself as the owner of his property.

Documentary and real evidence

Documentary evidence


Documentary evidence plays an important role in the law of evidence. As specified by the Parol Evidence Rule, a document has a strong probative value because its contents are generally conclusive proof of the intention of the parties. Precisely due to such conclusiveness and the fact that documents can be falsified, the Legislature has established in statute rules particular to this type of evidence.

Part VI of the Civil Proceedings Evidence Act deals with this aspect. A document is defined very widely as including "any book, map, plan, drawing or photograph". This includes virtually anything that contains written or pictorial proof of something. It excludes, however, items on which information can be stored like audio and video tapes. Therefore, it is necessary to distinguish between a real document and the product of a video camera and so forth.

The rules regarding documents depend on the type of documents in question.
Private documents
In other words, not a public document. These include contracts, correspondence of natural or juristic persons and the like. Rule35 of the Uniform Rules of Court makes provision for the discovery of documents. If the documents are not discovered, they may not be used for the purposes of trial without the court's consent.
Authenticity
A document must be proved to be authentic .In other words, that it is what it purports to be. If authenticity is not proved the document will be inadmissable. Even if it is proved, however, the document will not necessarily be admissible, for example, if the contents constitute hearsay.
Proof of Authenticity
A document may be proved by:
  • the author or person who signed it
  • a witness who saw the document being drawn up or signed
  • a person who can identify the handwriting (an expert or a person who recognises the writing)
  • a person who found the document in the opponent's possession
  • a person under whose control the document is.

Presumptions with regard to authenticity
In the common law, a presumption exists that a document at least 30 years old is authentic. This period has been reduced by section 37 of the Civil Proceedings Evidence Act to a period of 20 years. This still does not make the evidence admissible and all other rules of evidence must be complied with.
­ A certified copy of an official document sufficiently proves its authenticity
Exceptions where a document need not be identified or authenticated
  • when the document is discovered by the opponent and must be presented by him at the hearing
  • where authenticity is admitted by the opponent
  • where judicial notice may be taken of a document
  • where, in terms of statute, a document is admissible by mere production.

There are specific provisions in Rule 63 of the Uniform Rules regarding authentication of foreign documents and this will be dealt with later.

Documents subject to stamp duty cannot be admitted as evidence unless they have been properly stamped in terms of the Stamp Duties Act or the penalty is paid and the document stamped.
Primary and Secondary Evidence
As already indicated, the Best Evidence Rule provides that , where the contents of a document must be proved, the document must be submitted as evidence. The document is the primary evidence of its contents and any other evidence is secondary. It is also necessary to differentiate the contents of the document from facts that are mentioned in the document. The facts mentioned can be proved by evidence outside of the document.
Exceptions to the Best Evidence Rule
  • Admissions by the opponent result in those facts not being in dispute
  • Judicial notice, for example, of the contents of a government gazette
  • Secondary evidence in certain circumstances, for example, that the original has been lost or destroyed
  • Where it is impossible or inconvenient for the original to be presented, for example, writing on a wall/tombstone/signage.
  • ­
  • Where the original is in the possession of a third party and he refuses to submit it.
  • Official documents Section 34(2)(b) of the Civil Proceedings Act provides that it is within the discretion of the court to accept a copy proved to be a true copy of the original Where other statutory provisions provide exclusions
  • Secondary evidence may be proved by a copy of a document or oral evidence.

Admissibility
The document must still comply with all the remaining rules of evidence regarding admissibility. There are, however, exceptions to the hearsay rule particular to documentary evidence, for example, the exception that official documents are admissible by mere production. Section 3(1)(c) of the Law of Evidence Amendment Act provides the court with a discretion to allow hearsay in the interests of justice.
Public Documents
A public document is a document prepared by a public official as part of his duties for public use and to which the public has access. It is important to distinguish public documents from private documents as a public document falls under the exceptions to the hearsay rule and its contents may be proved by mere production.

Real evidence


These are things which are examined by the court as means of proof. This type of evidence must be supplemented by the testimony of witnesses. It includes photographs, films, video and sound recordings.

Computer evidence


There are three major problems with proving computer evidence:
  • hearsay
  • authenticity
  • reliability

The Computer Evidence Act , 57 of 1983 provides for authentication of computer generated documents. An affidavit must accompany the documents identifying and describing the print-outs. The affidavit must certify that the computer was:
  • correctly and completely supplied with the required data and instructions for the purpose for which the information recorded in the computer print-out was produced;
  • unaffected in its operation by malfunction, interference, disturbance or interruption.
  • The deponent must be qualified to give testimony. He must have knowledge of and experience in computers and examination of the records and facts regarding the operation of the computer.
  • Section 3 of the Law of Evidence Amendment Act provides the court with a discretion to allow hearsay. The law of Civil Proceedings Evidence Act does not apply to computers, only documents.
  • Regard must also be had to the provisions of the Electronic Communications and Transactions Act No 25 of 2002 with regard to the admissibility and evidential weight of data messages.

Opinion
The general rule is that a witness's opinion is deemed to be irrelevant and , therefore, inadmissable. A witness may state the facts but not the inferences which he has drawn from those facts. In practice, lay opinion is sometimes regarded as prima facie evidence depending on whether it's challenged or not.

Expert evidence


Opinion of expert witnesses is admissible whenever, by reason of their special knowledge and skill, they are better qualified to draw inferences than the judicial officer. The expert must have sufficient skill, training or experience. His qualifications must be measured against the evidence he has to give. Therefore, persons in the trade giving evidence in infringement matters or in rectification proceedings must have knowledge of the relevant trade and have sufficient experience and skill in it. In actions, it must be remembered that notice must be given of the intention to use an expert's testimony.

In trade mark matters, applicants often try to rely on expert evidence to show how words are likely to be pronounced or trade mark matter perceived. This is especially so in a country like South Africa which has 11 official languages and many diverse cultures. In opposition and infringement cases, expert testimony as to how a word mark is likely to be pronounced, although it may be admissible, has been found by our courts to have little probative value on its own. The position in the trade is more relevant. Therefore, any expert evidence should always be supported by those who have a knowledge of the relevant trade.

Similarly, evidence of experts regarding how members of the public will perceive and understand a trade mark, particularly a device mark, to the effect that the public will be deceived or confused is of limited value. It is trite that the issues of deception or confusion and similarity of marks are matters for the Registrar or the court to decide.

In Reckitt and Colman SA (pty) Limited v Johnson & Son SA (pty) Limited 1993 2 SA 307(A) the court found that the evidence of psychologists and linguistic experts was unhelpful, if not inadmissable, and that it tended to disguise opinion as statement of scientific fact.

However, in Adcock Ingram Laboratories Limited v Druggists/Lennon Limited 1983 2 SA 350 (T) Van Reenen J found that in cases where special qualifications, experience and training are required before a person may be engaged in the relevant trade, the court needs the expert guidance on certain issues. Also, in Upjohn Company v Merck 1987 3 SA 221 (T) the court said that expert evidence by persons dealing in the trade is required in respect of goods of a kind not normally sold to the general public for consumption or domestic use but in a specialised market consisting of persons engaged in a particular trade. That case related to veterinarians. The principle would also apply to pharmacists, doctors and so forth.
Witnesses in the relevant trade can give admissible evidence regarding the reaction of members of the public who know the existing mark and encounter the offending mark. A witness who is not an expert may say that he normally buys the product and that he was or would be confused but not that it is likely that other purchasers will be deceived or confused.

Facts to which evidence in unnecessary


No evidence is required to prove facts of which courts take judicial notice or which have been formally admitted for the purpose of trial.
Judicial notice
Section 1(1) of the Law of Evidence Amendment Act provides that any court ( this would include the Registrar whose position is equivalent to that of a single judge in the High Court) may take judicial notice of the law of a foreign state and of indigenous law insofar as such law can be ascertained readily and with sufficient certainty. Sub-section (2) provides that a party may still adduce evidence of the substance of a legal rule. Besides where the court has a statutory duty to do so, judicial notice may be taken of the following:
  • notorious facts or facts capable of being immediately ascertained from accurate sources for example, of celebrities, important companies, dictionary definitions
  • common law- from reported decisions and treaties
  • maps

Formal admissions
Admitted in pleadings or orally at trial.

Authencity


Rule 63 of the Uniform Rules requires certain procedures with regard to authentication of affidavits executed outside the Republic for use in SA. Affidavits executed in countries that are members of the Hague Convention need only be signed by a notary public whose signature is confirmed by an apostil certificate. Furthermore, Rule 63 provides that in the United Kingdom of Great Britain and Northern Ireland, Zimbabwe, Lesotho, Botswana and Swaziland it is sufficient for the affidavit to be executed before a notary public. Similarly, affidavits deposed to in South Africa for use in other countries must comply with authentication requirements.

In respect of proceedings before the Registrar, the requirements for authentication are limited. In terms of regulation 59(1) , an affidavit is deemed to be sufficiently authenticated at such foreign place by signature and seal of a notary public. The Registrar may accept as sufficient authentication an affidavit which is shown to the satisfaction of the Registrar to have been actually signed by a person purporting to have signed such affidavit. No other document filed with the Registrar in terms of the regulations is required to be authenticated unless the Registrar specifically directs so.

Authority to act


Generally, it is not a formal requirement to attach proof of authority to act unless such authority is challenged by the other side. It is, however, important that the deponent is sufficiently and properly authorised to depose to the affidavit and to act on behalf of the company in the event that the authority is challenged.

Burden/onus of proof


This is the duty which one or the other of the parties has of finally satisfying the court that he is entitled to succeed on his claim or defence. The incidence of the burden in each issue is a matter of substantive law. Therefore any rule of law which attaches legal consequences to a fact must provide for which party is supposed to prove the fact. This onus is determined by the pleadings and does not shift.

The onus of proof must, however be distinguished from an evidentiary burden which consists of the following:
  • A burden to combat a prima facie case made by the opponent or evidence in rebuttal.

This burden can shift in the course of proceedings in respect of different issues in the pleadings and depending on the degree of evidence provided by the other party.

To illustrate the difference, take the example of trade mark infringement: the onus or burden of proof is to show infringement. If the respondent's defence is for instance, S34(2)(a)- bona fide use of a name, the evidentiary burden is on the applicant to show that the defence is not valid, for example, that the use is not bona fide. If the applicant makes out a prima facie case, the evidentiary burden will again shift to the respondent to show that the use is bona fide. At all times, however the onus still rests on the applicant.
  • The duty of a litigant who is to begin to adduce evidence in order to escape certain procedural consequences.

Normally, where the applicant/plaintiff bears the onus of proof, it will also have the duty to begin to adduce evidence. However, there may be circumstances where an admission on the papers creates a prima facie case that places the evidentiary burden on the respondent/defendant and therefore the duty to begin will shift, for example, where a presumption applies.

Cautionary rules

  1. Like police traps, it has been said that inquiry agents or private investigators, because they are paid to obtain evidence, may have a motive for favouring the client. There is case-law to the effect that evidence of private investigators should be carefully scrutinised. Although no rule requires corroboration, it is always best to attach supporting affidavits by persons in the trade.
  2. There is also case-law (William Grant& Sons Limited v Cape Wine & Distillers Limited 1990 3 SA 897 (C) ) where the court held that expert evidence must be regarded with a measure of caution because the court is not in a position to verify the expert's conclusions and must be aware of the tendency of experts to be partisan.

Consideration of other statutes


Some statutes provide loopholes that make the adducing of evidence much simpler. The following are only two such examples:
Section 26 of the Copyright Act
Because of the international nature of copyright and the costs of establishing ownership of copyright in an action, the Copyright Act contains special provisions. Section 26(12)(b) provides that in any proceedings regarding the alleged infringement of copyright in a work, evidence to prove:
  • subsistence of copyright, and
  • title of any person in respect of copyright (by ownership or license) may be adduced by way of affidavit. The mere production of the affidavit is prima facie proof of the relevant facts. Although the court has the discretion to subpoena the deponent to give oral evidence, that is unusual.

Section 22 of the Law of Civil Proceedings Evidence Act
Whenever any fact ascertained by any examination or process requiring a skill in bacteriology, chemistry, physics, astronomy or pathology is or may become relevant, an affidavit by someone in the service of the state or province or of the South African Institute for medical research or of a university in the RSA will, on mere production, be admissible as evidence.

The Trade Marks Act 194 of 1993

Prima facie ecidence in the Trade Marks Act

  1. S49- the register is prima facie evidence of any matters inserted in it.
  2. S50(1)-a certificate by the Registrar as to any entry, matter or thing which he is authorised by the Act to make is prima facie evidence of the entry having been made and of the contents thereof.
  3. S50(2)-certified copies of extracts from the register will be admitted in evidence in al courts/proceedings without further proof or production of originals.
  4. S51- the fact that a person is registered as the proprietor of a trade mark is prima facie evidence of the validity of the original registration and of all subsequent assignments and transmissions.

Infringement


Consideration must be given to the type of infringement that the applicant/plaintiff is relying on and it must be ensured that all essential averments have been dealt with. In considering infringement, regard must be had to the questions:
  • is there infringement?- S34 or 35
  • is there a defence? -S34(2), S27(5),S36, waiver, estoppel, defensive registration under S70(2), possibility of S14
  • is the applicant's/plaintiff's trade mark valid?- has it been used(S27)
  • is it distinctive( S24 & S10)

With regard to the requirement of "unauthorised use" in infringement proceedings, it is sufficient to show a reasonable apprehension of use for the purpose of an interdict ( Searles Industrials (Pty) Ltd v International Power Marketing (Pty) Ltd 1982 4 SA 123(T) ( Jordache case) where an advertisement constituted an apprehension of intention to sell).

S34(5) provides that before a proprietor can institute proceedings for infringement, he must give notice of the proceedings to all registered users who may then intervene. Therefore, it may be alleged in the pleadings that the necessary notice has been given.
Relief:S34(3)
The requirements for relief sought must be alleged and proved. As interdicts are the most common form of relief, the requirements will be dealt with briefly. The following must be proved:
  • a clear right or prima facie right;
  • if only a prima facie right exists, it must be shown that there is a reasonable apprehension of irreparable harm if an interdict is not granted. It was held in Smith and Nephew Ltd v Mediplast Pharmaceutical Sales CC 1999 (2) SA 646 ( D & CLD) at 654J and 655A-E that where a suitable undertaking is given to stop the offending conduct, there is no longer a reasonable apprehension of harm and an interdict is not justified. The Court held that there is no onus or requirement in terms of Trade Mark Law or common law on an infringer of a trade mark to do more than stop the offending conduct;
  • that the balance of convenience favours the granting of an interdict. The balance of convenience determines who is likely to suffer the greater damage because of the granting of the interdict - the plaintiff if refused or the defendant if granted? (Eriksen Motors (Welkom) Ltd v Protea Motors, Warrenton and another 1973 (3) SA 635 (AD) ) Considerations here are the difficulty in quantifying damages and loss of reputation. When seeking an interdict for interim relief, a party will normally give an undertaking that it will be liable for damages if the other side is successful, which may be supported by a bank guarantee; and
  • that the applicant has no other satisfactory remedy.

Oppositions


Once again, the essential averments must be alleged and proved.

The onus of establishing that a trade mark qualifies for registration rests on the applicant for registration and the forum is always before the Registrar on affidavit. However, in terms of regulation 19(2), where an application cannot properly be decided on affidavit, the Registrar may refer it to the High Court or hear oral evidence in respect of disputed issues.

With regard to extensions of time, Regulation52(2) provides that an interested person may apply formally for an extension. As a point of law, an extension should only be granted if good cause can be shown.

In oppositions, the date that is normally relevant is the date of application for registration. However, the Registrar may have regard to all the relevant facts including use after the date of application, for example the applicant may rely on use after the date of filing to show that, notwithstanding use there has been no confusion or deception.

In the Registrar of Trade Marks v Wassenaar 1957 4 SA 513(A) ( Ronpha case), which was a registrability case, the Registrar looked at use after filing and found that the mark had lost its distinctiveness and become generic.

Rectification


The essential averments must be alleged and proved.

The Act provides that "any interested person"has locus standi to apply for rectification in terms of sections 24, 26 and 27. Under the old Act, the requirement was "a person aggrieved" (Ritz Hotel Ltd v Charles of the Ritz Ltd 1988 3 SA290 (A), Danco Clothing (Pty) Ltd v Nu-care Marketing Sales and Promotions (Pty) Ltd 1991 4 SA 850 (A), Mars Incorporated v Candy World (Pty) Ltd 1991 1 SA 567 (A)). The requirement that the applicant must be an interested person is generally aimed at preventing frivolous or vexatious attacks on trade marks. Anyone who has a real commercial interest which is being impeded, threatened or hampered by a registered mark should be able to establish that he is an interested person. What is generally required is a financial interest which is not negligible. In the recent case of South African Football Association v Sandton Woodrush (Pty) Ltd and another 2002 (2) SA 236 (T), it was held that the change of wording from "person aggrieved" in section 33(1) of the 1963 Act to "interested person" in section 24 of the 1993 Act was not of any real significance. It was clear from cases in which the term "persons aggrieved" had been considered in the past that it referred to persons who were " in some way or the other interested in having the mark removed from the register" or who had a " genuine and legitimate competitive interest in the trade to which the offending mark relate(d)". The Court found that the same considerations still apply as they did in terms of the 1963 Act.

There is an option as to the forum in which the matter is instituted, ie before the Registrar or before the court, except where proceedings are already pending before the court in which case the matter must be instituted before the court. Proceedings are brought on application and, in proceedings before the court, the Registrar must be joined as an interested party.
Rectification in terms of section 24
The onus is on the applicant for rectification. This section is used in conjunction with section 10.
  • Entry wrongly made:

The relevant date is the date of the making of the entry. It is necessary to prove on the facts existing at that date that the entry was made without sufficient cause. Regard must be had to section 70 which provides that the law in force at the date of the entry must be applied. It is permissible for the proprietor to place evidence before the court that the trade mark was distinctive at the date of application. The proviso to section10(2) is also important in this regard. If a mark has become capable of distinguishing through use even though it was not distinctive at the date of application, it is not liable to be removed.
  • Entry wrongly remaining:

The primary reason for this ground is that the mark has become deceptive or lost its distinctiveness ( Pleasure Foods(Pty) Ltd v TMI Foods CC 2000 4 SA 181 (T)(Mega-case) and Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and another 2002 2 SA 771 (SCA) ( Liquorice Allsorts -case)). The relevant date is the date of application for rectification. Therefore, the law applicable is the 1993 Act.
Rectification in terms of section 27
It is important to remember that the court still has a general discretion. The section provides that a court may remove the mark.

Section 27(3) provides an important shift in onus. The onus of proving relevant use in terms of section 27(1)(a) and(b) rests on the proprietor (under the old Act, the attacker had to prove non-use).

With regard to section 27(1)(a), section 19(2) provides that the establishment of a body corporate to which a trade mark has been assigned shall be sufficient proof of a bona fide intention to use the trade mark. The onus here would ,therefore, rest on the applicant for rectification.

Section 27(5) provides that section 27 does not apply to well known marks .

It is prudent to include in the application a copy of the letter of demand to the other side. This could have an impact on costs if the proprietor/respondent ignores the letter and is then able to show satisfactory use. A costs order may then be prayed for on the basis that the applicant would not have instituted proceedings had he been informed of the respondent's rights after sending the letter of demand.

An important issue is that section 27(1)(b) provides that the five year period is calculated from the date of issue of the registration certificate. It is therefore necessary to attach to the application a copy of the extract from the register to show the date of the issue of the certificate.
Bona fide use for the purpose of sub-sections (a) and(b) must be for the purpose of furthering the proprietor's interest in the trade. If it is only possible to show token use every five years to protect the mark from attack on the basis of non-use, such use will not amount to bona fide use.

The Act has a few references to what constitutes use where use is required to be proved. Before instituting proceedings or if proceedings are instituted against the client, regard should be had to these provisions.

Section 31(1) provides that use of an associated registered trade mark or a mark with additions or alterations not substantially affecting its identity is equivalent to the required use.

Section 34(2) provides that use of the whole of a registered trade mark is deemed to be use of a part of that trade mark which is registered.

Section 38(2) says that permitted use is deemed to be use by the proprietor.

Finally, section 64 says that regard may also be had to use of a mark on goods for export.

Unlawful competition


This aspect will not be dealt with too comprehensively. In unlawful competition, the yardstick is the boni mores. Regard must be had to:
  • statutes
  • established remedies, for example, passing off
  • morals of the market place
  • inherent sense of fair play and honesty
  • importance of a free market and strong competition in economic system
  • are the parties competitors
  • conventions with other countries

­ASA


That concludes a broad exploration of the Law of Evidence. Much of what is contained in this article is information that is known to and applied by practitioners already. However, it is of assistance to go back to basics every now and then for, after all, the Law of Evidence is the foundation upon which litigation is built and a firm grasp of the different facets of that Law is required to contribute to a stable and successful practice.




The firm practises directly in several Southern African countries and through long-established associates in others.