The matter began in the district court (DC) and ended up in the Supreme Court. The appellant in the Supreme Court was Stassen Exports and it had been ruled that their trademark was not an intellectual property rights infringement, as it was not similar to the Lipton’s trademark, as was contended by the latter.
That decision was made in the district court and upheld in the Court of Appeal because there was enough to go by to determine that no buyer would purchase the Stassen tea pack brand, being mistaken that it was the brand of the other party.
All would have ended well there, except that the Director General of Intellectual Property determined otherwise, and decided that the Appeal Court and DC judgements were made based on wrong facts and therefore he was entitled to prevent Stassens from using their trademark on their tea packs.
This position was overturned by the Supreme Court, on the basis of Res Judicata, which essentially means that once the Court has litigated an issue based on one set of facts, it cannot be re-litigated elsewhere to yield a different decision. Thereby hangs a legal tale, worthy of a clash of the titans.
The Supreme Court judgement noted among other things:
‘The contention accordingly was that, the Director-General (Intellectual Property Office) is not bound by the decision of a court in the manner an inferior court is bound by the decision of a superior court under the doctrine of stare decisis nor will he be estopped by reason of the doctrine of res judicata.’
In layman’s terms, this means that the question was whether the Director General of Intellectual Property was bound by the decision of the court, or whether he could make his own judgement based on recorded cases that he is aware of that do not necessarily have anything to do with the way the matter was decided in court.
that no public official can do that, i.e., make his own judgment ignoring court orders on the immediate matter under review, but on the other hand, it may be argued that this was an issue concerning intellectual property rights – and that the Director General had superior knowledge in deciding such matters.
The Court of Appeal judgement was not even appealed by Liptons in the Supreme Court.
But even without recourse to such appeal, it appeared that Liptons had their way and that the matter was decided in their favour by the Director General, though two courts had already decided the matter in favour of Stassens, the subsequent appellant in the Supreme Court.
Stassens appealed the decision of the Director General in the High Court. Accordingly, the learned Judge of the High Court had held that “…judicial precedent binds an inferior court or tribunal or any other person, whereas res judicata binds only the parties to the case with regard to the law that is applicable in relation to a particular issue. In the circumstances, it would be seen that the Director General of Intellectual Property, was bound to follow the judgements of the Supreme Court with regard to the determination of the issues before him in preference to the judgements of the Court of Appeal, on the same matter.”
The Director General had taken the high road, stating he was also following a court dicta but from a higher court, i.e., previous decisions on similar matters by the Supreme Court – even though such precedents he was following were not pertaining to the case under review regarding the Stassens trademark. High Court held with him. Liptons had prevailed through a public official despite two court decisions against them, leaving Stassens no option except to go before the highest Court.
In many ways, what the Supreme Court held when Stassens appealed this High Court judgement affirming the Director General’s position, was as if a re-statement of the obvious:
The Supreme Court decided: ‘It is however to be borne in mind that there is a vital factor which the second respondent had not taken into consideration at the time he made the decision in refusing the registration of the propounded mark of the appellant, viz., that previously the District Court as well as the Court of Appeal had considered the question of the alleged similarity between the Trade Marks of the appellant and the first respondent and both courts had been of the view that there had been no such similarity of the Trade Marks in question. As stated earlier, it is common ground that the dispute had arisen between the appellant and the first respondent. Considering the decisions of the District Court, which was affirmed by the Court of Appeal refusing the application made by the first respondent, what the second respondent by his order dated 12.11.2001 had done was to reverse the decisions of the District Court and the Court of Appeal.’
Such reversal went against the legal principle of res judicata, Court held.
However, res judicata may not apply in all instances particularly when new issues enter a contract or there is a continuing violation of a contractual obligation. Though the issue under review was not of a contractual nature, there could have been other reasons that could have excluded the application of res judicata.
However, Supreme Court held in judgement: ‘It is abundantly clear that the facts of this appeal has clearly shown that all the aforementioned conditions have been fulfilled as the dispute between the appellant and the first respondent was fully decided before the Court of Appeal on the identical questions, which later came up before the second respondent. Therefore the second respondent was bound by the decision given by the District Court and the Court of Appeal and there was no possibility or a necessity for the second respondent to have been a party before the District Court or the Court of Appeal.’
The appellant Stassens, it was held, is entitled to proceed with its application to register their Trade Mark. The second respondent – the Director General – was directed to consider the appellant’s application to register their Trade Mark in terms of the applicable law having in mind the plea of res judicata raised by the appellant on the basis of the judgements of the District Court dated 31.03.1992 and the Court of Appeal dated 08.10.1996.
When titans clash, it seems, smaller fry such as a Director General being a public servant, should be cautious about entering the fray.
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