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[2010] ZAGPJHC 143
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South African Apartheid Museum at Freedom Park v Stainbank and Another (10152/08) [2010] ZAGPJHC 143; 2010 BIP 148 (GSJ) (23 February 2010)

IN
THE HIGH COURT OF SOUTH AFRICA
SOUTH GAUTENG HIGH COURT
JOHANNESBURG
CASE No.
10152/08
REPORTABLE
In the matter
between:
THE SOUTH
AFRICAN APARTHEID
MUSEUM AT
FREEDOM PARK
…...................................
Applicant
and
ARNOLD MICHAEL
STAINBANK
….................................
First
Respondent
THE
REGISTRAR OF TRADE MARKS
............................
Second
Respondent
____________________________________________________________
JUDGMENT
____________________________________________________________
WILLIS J:
[1]
The applicant seeks an order directing the Registrar of Trade Marks,
the second respondent, to expunge from the Trade Marks
Register,
trade mark Registration No 98/13337 THE APARTHEID MUSEUM in Class 35
entered in the name of the first respondent on one
or more of the
following grounds:
non-use as
contemplated by
section 27(1)
(b) of the
Trade Marks Act, No. 194 of
1993
, as amended (“the
Trade Marks Act&rdquo
;);
the mark is not
capable of distinguishing within the meaning of
Section 10
(2) (a)
read with
section 9
of the
Trade Marks Act, and
that the entry was
therefore wrongly made in and remains an entry wrongly remaining on
the Register in terms of
Section 24
(1) of the
Trade Marks Act;
the
use of the
mark by the first respondent, in relation to the services for which
it is registered, would be likely to cause confusion
within the
meaning of
Section 10
(2) of the
Trade Marks Act, and
therefore
constitutes an entry wrongly remaining on the Register within the
meaning of
section 24
(1) of the
Trade Marks Act.
The
second respondent has agreed to abide the decision of the court. The
first respondent accepts that the court has the power,
in terms of
the
Trade Marks Act, to
make an order as sought by the applicant.
[2]
It is difficult to convey an awareness of the sense of paradox,
pathos and passion that suffuses this case. At first blush it
has to
do with a trade mark, intellectual property, the law of competition:
technical issues that require finely calibrated conceptualisation
on
intricate topics. This case has to do with matters that, with august
detachment, the minds of the highest judicial
fora
,
not
only in South Africa but also the House of Lords and the Privy
Council, have been exercised. On the other hand, it has to do
with
apartheid. Unsurprisingly, apartheid is an issue which evokes strong
emotions. It is difficult to put into words precisely
why this should
be so. Nevertheless, in the 1970’s, there was a colloquial
expression widely used on the Cape Flats which
puts it well:
“Apartheid gets to you, man!” Indeed it does. Again, it
is difficult to describe quite how apartheid
“gets to you”.
With a legendary and characteristic expressiveness, it was someone,
again from the Cape Flats, who
explained, with unforgettable
forthrightness, why “apartheid gets to you”. He said:
“You keep bumping into apartheid,
man!” Always and
everywhere, black and white persons were exposed to their shared
humanity: they spoke to one another, they
worked together, often in
conditions of considerable intimacy. Conversely, their common
humanity was continually denied not only
in the facilities which they
used but also in their rights, privileges and opportunities, in the
way they lived and moved and had
their being. For their different
and, in many respects, contradictory reasons, blacks and whites
wanted to live as though apartheid
did not exist. Nevertheless, it
was ubiquitously present, from which there could be no refuge and
little solace. In this case,
therefore, an emotional issue
nevertheless has to be addressed in a technical and intellectually
disciplined way. Shortcomings
will be inevitable.
[3]
It is perhaps illustrative of the difficulties that attach to this
matter that I feel compelled to record that the first respondent
is a
“so-called coloured person”. Ordinarily, I should
consider it distasteful to refer to a person’s race in
a
judgment. A person’s race should be irrelevant in court
proceedings. Here it is impossible to understand the emotion, the

anger, the frustration and the resentments that permeate this
particular application, as well as related matters, unless one has
an
awareness of the fact of the first respondent’s race, more
particularly the history that has attached thereto. The first

respondent was a victim of apartheid in the extraordinary and
particular way that only “so-called coloured persons”

(that is persons of mixed race) were. One is embarrassed even to have
to use the expression “so-called coloured”. This

expression arose because the word “coloured” was
considered to be part of the apartheid lexicon. Nevertheless, to be

defined as a so-called “coloured” person presented its
own, singular and concrete realities. Much of the first respondent’s

case has been distinguished by a resort to hyperbole. I hope that I
have been able to manifest an adequate degree of understanding.
[4]
At the commencement of the proceedings, the first respondent made
application for the matter to be referred to oral evidence,

alternatively to trial. The applicant was prepared to take the risks
of seeking final relief in motion proceedings where there
are
disputes of fact according to the well-known principles in the
cases
of
Stellenbosch
Farmers’ Winery Ltd v Stellenvale Winery (Pty) Ltd
1
and
Plascon-Evans
Paints Ltd v Van Riebeeck Paints
.
2
I dismissed this interlocutory application. I trust that, it will
become readily apparent from what follows that this was the
correct
decision to have made: the disputes of fact are, ultimately,
irrelevant to the decision which has to be made. I have adopted
what
has been described as the robust, common sense approach referred to
in the well-known case of
Soffiantini
v Mould
.
3
[5]
On 29 July 1998 the second respondent registered the trade mark THE
APARTHEID MUSEUM in favour of the first respondent for a
period of
ten years. The mark has the registration number 98/13337 and was
issued in Class 35. It was subject to the qualification
that the
first respondent did not have the right to exclusive use of the words
“apartheid” or “museum”
apart from the mark.
These application proceedings commenced on 1
st
April, 1998 (i.e. before the trade mark expired) but it is common
cause that the first respondent has applied for renewal thereof
in
terms of
section 37
the
Trade Marks Act. Class
35 relates to
“Advertising; business management, business administration;
office functions; offering for sale and the sale
of goods in the
retail and wholesale trade”.
[6]
In 1990 the first respondent applied for and obtained a registration
of the same trade mark in class 41, being in respect of
“education
and entertainment” under the old Act (the Trade Marks Act No 62
of 1963). Class 41 now reads as relating
to “Education,
providing of training, entertainment; sporting and cultural
activities”. In 2002, the first respondent
brought an
application for an interdict against Akani Egoli (Pty) Ltd, which
carries on business as Gold Reef City and Casino,
for infringing his
trade mark. Akani Egoli (Pty) Ltd pointed out that it does not use
the trade name “The Apartheid Museum”
but that the
present applicant does so. The present applicant then bought an
application on almost identical grounds to the present
one. On 17
th
July, 2003, Southwood J, sitting in the then Transvaal Provincial
Division, granted the order on the grounds of non-use by the
first
respondent. Attempts by the first respondent to appeal against that
order have been unsuccessful. Southwood J’s judgment
has not
been reported in the law reports.
[7]
On 30 November 2007 the first respondent instituted an action against
the present applicant and five others under case number
2007/31005 in
this court in terms of which he claimed an interdict as well as the
sum of R350 million on the basis of their alleged
infringement of the
trade mark now in question. The bringing of this action seems to
explain why the present application has been
made.
[8]
Both the applicant and the first respondent made application for the
striking out of allegedly scandalous, vexatious and irrelevant
matter
in their opponent’s respective affidavits. I decided that, as
the applicant wished the matter to proceed by way of
motion
proceedings, it would be best to make progress and would expedite
matters if we were to assume that the first respondent
had succeeded
in all his applications for striking out and that the applicant had
been unsuccessful.
[9]
The applicant is a company registered in terms of section 21 of the
Companies Act, No 61 of 1973, as amended. It trades under
the name
“The Apartheid Museum.” The museum was launched in 2001.
This museum has, in recent years, become a well-known
institution. It
has been established near Gold Reef City, south of Johannesburg. The
first respondent has submitted that the applicant
is no more than a
“respectable front” for Akani Egoli (Pty) Ltd and Gold
Reef Resorts Ltd, the driving forces behind
Gold Reef City and the
casino there located. The first respondent has submitted that Akani
Egoli (Pty) Ltd and Gold Reef Resorts
Ltd they should be parties to
these proceedings. Furthermore, the applicant has submitted that
these two companies are the agencies
of certain business
personalities who are well known in Johannesburg as “the Krok
brothers”. Without putting too fine
a point on it, the first
respondent accuses the Krok brothers has having fraudulently and
dishonestly “stolen” his
idea of an apartheid museum. It
was submitted that there were no “clean hands” in the
bringing of this application.
Much emotion was put into describing
how disgraceful it has been that the Krok brothers, who allegedly
made their fortunes,
inter
alia
,
by selling skin-lightening creams to black persons, should have
established this museum to apartheid. In this regard, I was referred

to a witty article by one Hans Muhlberg, an attorney, titled “A
Dream Comes Apart”
4
in which the Krok brothers’ establishment of “the
Apartheid Museum” was likened to “cigarette companies

expanding into healthcare and life insurance”. It hardly needs
be said that certain journalists have loved the story. I
have been
referred to articles by these journalists as well. Be this as it may,
the applicant seems to have secured endorsement
across a fairly
respectable spectrum of opinion for this museum. The applicant has
also recruited the support of highly qualified
experts in the
establishment and operation of similar museums internationally.
Indeed, the museum appears to have drawn much of
its inspiration from
holocaust museums in different parts of the world. I accept and do
understand that there may be ideological
sensitivities when white
persons are perceived to be the driving forces behind a museum which
has apartheid as its focus. I also
accept that there may be
sensitivities in there being a close association between a museum to
apartheid, on the one hand and a
casino and entertainment complex, on
the other. If casinos are indeed “dens of iniquity”, the
close congruity between
a casino and an apartheid museum may offend
at least some persons. Nevertheless, except when it comes to the
enforcement of constitutional
rights, the courts cannot arbitrate
ideological disputes between members of the public. I cannot see that
any constitutional right
has been infringed by establishing “the
Apartheid Museum” and I was not referred to any.
[10]
At an early stage in the proceedings, I put it to Mr
Moosa
,
who has appeared for the first respondent, that the applicant clearly
has
locus
standi in iudicio
(the
right of a particular person to bring a matter to court for
adjudication), as an interested person, in terms of sections 24
and
27 of the Trade Marks Act. I received no satisfactory answer to this
proposition. I also suggested to him that apartheid forms
part of
the “collective consciousness” of all South Africans. If
this was so, then working from first principles, the
memory of it
was, in a certain sense, accordingly part of the
res
communes
.
That is to say this memory is “owned” by all the people
of South Africa, collectively. As part of the
res communes
,
the memory of apartheid would be
res
extra commercium
.
In other words, it could not be the subject of ownership by private
persons. As such, this memory was incapable of being “stolen”.

We did at least agree that apartheid was indeed part of the
collective consciousness of all South Africans. I shall deal later,

more fully, with the question of the so-called “theft of
ideas”. In summary, it seemed to me, almost from the very

beginning, to be nonsensical that anyone should have the right to
exclusive use of the words “the apartheid museum”.
[11]
Concerning the issue of the alleged purveyor of skin-lightening
creams being a promoter of an apartheid museum, I put it to
Mr
Moosa
,
by way of analogy,
that
there must surely be there is little scope for doubt that Cecil
Rhodes was not the most saintly person in South Africa’s

history. Nevertheless, few would question that it was “a good
thing” that he bequeathed Kirstenbosch, the campus for
the
University of Cape Town and the Groote Schuur estate to the nation
and that he endowed his world-renowned scholarships. I also
put it to
him that saintly virtue is not a necessary attribute in order to be a
successful applicant in the courts of South Africa.
We agreed on the
splendours of Kirstenbosch and the magnificence of the University of
Cape Town, but not much else concerning these
points.
[12]
Lastly, by way of introduction, I put it to Mr
Moosa
that,
if the first respondent does not like “the Krok brothers’
apartheid museum”, there ought to be nothing to
prevent him (or
any one else, for that matter) from setting up an alternative museum.
We settled this issue on the basis that I
would decide whether the
applicant had “stolen” the first respondent’s
rights to exclusive use of the words “the
apartheid museum”
in the trade mark and then, almost as a mirror image of this issue,
whether the first respondent’s
claim to have the right of
exclusive use of these words could be justified.
[13]
It might be thought that the easiest route for me to take would be
that of following the tracks of Southwood J in the related
matter. Mr
Salmon
,
who together with Ms
Van
Den Heever
,
has appeared for the applicant, seems to have thought so as well. My
difficulty lies in the fact that the registered trade mark
which has
been challenged in this application relates to a different class from
that which Southwood J had to consider. I agree
with Mr
Salmon
that
the first respondent has put before the court no evidence that he has
used the trade mark for “
business
management, business administration; office functions; offering for
sale and the sale of goods in the retail and wholesale
trade”.
He has, however, put forward some evidence that he has advertised
himself using this trade mark. I accept, as Mr
Salmon
argued, that the
onus
is
on the first respondent, in terms of section 27 (3) of the Trade
Marks Act, to establish that he has made relevant use of the
trade
mark. I accept, too, that the relevant use includes use within the
time period in terms of section 27 (1) (b) of the Act
(a continuous
five years of longer having elapsed with no
bona
fide
use
up to a date three months before the date of the application). Mr
Salmon
also referred me to the as yet unreported case of
On-Line
Lottery Services v National Lotteries Board
.
5
This case related, however, to registration in the class of
“financial services” and may not be directly relevant to

the point in issue. I also think that, taken in context,
there
is merit in the submission of Mr
Salmon
that “advertising” in class 35 means providing
advertising services for someone else rather than advertising one’s

own products or services. Nevertheless, Mr
Moosa
referred me to an unreported judgment of Eloff DJP (as he then was)
in
K
Mart (Pty) Ltd v K Mart Corporation and the Registrar of Trade Marks
6
where the learned judge seems to have taken the view that advertising
oneself qualified in this class. I accept that the learned
judge
decided this case under the old Act. Nevertheless, bearing the
well-known
Plascon-Evans
test in mind as well as Eloff DJP’s judgment in the
K
Mart
matter in mind, I shall side-step the “neat solution” of
following Southwood J in the related matter and consider
the further
grounds raised by the applicant. Moreover, the principle of “use
or lose” in section 27 can easily become
clouded by a familiar
legal dilemma as to the strictness with which a court should (a)
interpret the law and (b) exercise a discretion,
if such indeed
exists. In all the circumstances of this case, it would seem unwise
to make a final decision relating to this particular
ground relied
upon by the applicant.
[14]
The first respondent would have one believe that “the apartheid
museum” has been his very own, original idea for
several
decades and, accordingly, so the argument went, he should enjoy
exclusive use of the expression contained in the trade
mark. In the
related matter, Southwood J seems to have found this hard to believe.
I share his view. My reasons are as follows:
(i)
One has only to read the “Wind of Change” speech
7
of Harold Macmillan, the former British Prime Minister, delivered in
Parliament in Cape Town, fifty years ago on 3
rd
February, 1960, to be reminded that, at least by the 1960’s,
there was a fairly widespread view among well-informed and
well-educated people around the world that apartheid did not only
present insuperable moral obstacles for the white electorate of
South
Africa but was also antithetical to the inexorable forces of history:
it was doomed to fail (in other words, the end of apartheid,
was not,
as Mr
Moosa
submitted, something to be “foreseen” only with the
benefit of hindsight);
(ii)
Archaeological records and the literature which has been passed down
to us make it clear that, for thousands of years, human
beings have
been wont to record the significant events and passages in their
history (and apartheid is surely one of these);
(iii)
Museums have been part of the fabric of our lives since at least the
time when Ptolemy Soter built the famous building of
that name in
Alexandria, Egypt, thousands of years ago;
8
(iv) There are, as
the applicant has pointed out, other similar precedents, such as the
holocaust museums, in different parts of
the world.
Nevertheless,
whether I believe the first respondent or not is irrelevant to the
determination of the issue. For reasons which I
shall develop later,
what matters is not the originality of the mark but its
distinctiveness.
[15]
Mr
Moosa
submitted, at a certain stage in his argument, that “apartheid
is still alive and well in South Africa”. It seemed
that we
would never be able to agree on the degree of significance of the
events in South Africa, commencing with President F.W.
De Klerk’s
address in Parliament on 2
nd
February, 1990 and culminating in the assent to the Constitution on
16
th
December, 1996. In making this observation, I express no chagrin.
Inevitably, opinions will differ in this regard. I am, however,

confident that I am correct in my opinion that they were, at very
least, not irrelevant. Mr
Moosa
went on to submit that getting rid of apartheid entailed “more
than blacks being allowed to use the same lavatory seats as
whites”.
He submitted that the first respondent’s idea of a museum
could not be embodied in or confined to a physical
building. I have
understood Mr
Moosa
to have submitted that his client’s idea of an apartheid museum
was a “spiritual concept” whereas the applicant’s

was bereft of such nobility of thought. Furthermore, the service to
the public which the first respondent provided was wholly different

from that of the applicant. Let me say at once that I accept that an
apartheid museum should entail much more than “whites
only”
or “slegs blankes” signs gathering dust while they remain
on forlorn display in a building. I agree with
Mr
Moosa
that
the ending of apartheid involves much more than eliminating the petty
indignities which characterized it (if such indignities
can indeed
properly be described as “petty”). I am not sure,
however, that it can correctly be said that “apartheid
is alive
and well in South Africa”
9
.
Making such a statement seems to me to amount to attempting to
perform a conjuring trick that makes the pulling of rabbits out
of
hats appear banal. It is rather like saying “Louis XVI still
reigns in France” or “the English still rule
America”
or “the Tsars are still in power in Russia”. The
conjuring trick is performed by eliding the truth
that the legacy of
the past lives on, often for a long time and sometimes forever, with
the truth that the facts have changed.
The consequences of the reign
of the many kings Louis in France continue to live on as does the
backwardness of Tsarist rule, as
does the impact of English
imperialism and colonialism (of which the fact that this judgment has
been written in English is but
one small example). The longevity of
consequences does not, however, alter the fact of change.
Nevertheless, the more important
consideration, for the purposes of
deciding this case, is how do these differences in the idea of an
apartheid museum matter? More
than 2000 years ago, a Roman playwright
said
,
“
Quot
homines, tot sententiae
”.
10
As with concepts such as “the school library”, “the
church hall”, “the petrol station” and
“the
insurance company”, mention of the expression “the
apartheid museum” will conjure up different images
for
different people of what they should be, whether as an ideal or an
actual physical reality. These images may often include
varying
spiritual dimensions as well. Different conceptions of the words
embodied in a trade mark do not give rise to different
entitlements.
The subjective intentions of the providers of a service may be
different but this cannot alter the fact that words
are presumed to
have their ordinary meaning. One museum may differ from another but a
trader cannot lawfully call something a museum
if it is not
recognisably a museum. Even Mr
Moosa
seemed to relish a dictionary definition that a museum may contain “a
collection of curiosities”.
11
He seemed to have “whites only” signs in mind. Apartheid
may well mean different things to different people but the
word would
not have the wide currency which it does unless there is some
commonality or similarity in our understanding of its
meaning. I
suggest that the common denominator of almost everyone’s
understanding of the meaning of “apartheid”
is that it
refers to an organised system of racial segregation and
discrimination.
[16]
At the end of two days’ of argument, I had to remind myself
that the grant of a trade mark is not the
finis
of a morality play, much less a beauty contest. It needs also to be
borne in mind that, as their very name suggests, trade marks
are
tools of trade and not instruments of abstract expressionism.
[17]
Among lay people, infringements of rights to intellectual property
are often referred to as the “theft” of ideas.
Among
purists, however, using the expression that one person “stole”
the idea of another will induce an expression
akin to that made
famous in Edvard Munch’s painting
The
Scream
.
Of course, ideas cannot, in our law, be “stolen.”
12
During the course of argument, I freely used the expression of “the
theft of ideas” in order to facilitate an understanding
of the
issues for those in court to hear the matter. The “theft of
ideas” seems to me to have been a convenient metaphor
for the
more complex and correct concept of unlawfully making use of (or
infringing) the protected distinctiveness of a trade mark.
What
matters, as a matter of law, when considering the registrability of a
trade mark is the distinctiveness of the expression
contained in the
trade mark.
[18]
Section 9 of the Trade Marks Act provides 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 capable of distinguishing within the
meaning of section (1) if, at the date of application for
registration,
it is inherently capable of distinguishing or it is
capable of distinguishing by reason of prior use thereof.
Section
10 (2) of the Trade Marks Act provides that a mark which is not
capable of distinguishing within the meaning of section
9 shall not
be registered or, if registered, is liable to be removed from the
register.
In
the well-known case of
The
Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd
13
Lord Russell said:
A
word or words to be really distinctive of a person’s goods must
generally speaking be incapable of application to the goods
of anyone
else.
This
dictum was approved by Harms JA (as he then was) when delivering the
unanimous judgment of the Supreme Court of Appeal in
Beecham
Group plc and Another v Triomed (Pty) Ltd
(also known as “the Augmentin case”).
14
It is this quality of being “capable of distinguishing”
referred to in section 9 (1) of the Trade Marks Act which is
thus a
sine
qua non
for
the existence of a legally recognised trade mark. In simpler English,
one would say “distinctiveness” in preference
to “capable
of distinguishing”. In
Cadbury
(Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd
(widely
also known as “the
liquorice
allsorts
case”)
,
15
Harms JA, again delivering the unanimous judgment of the Supreme
Court of Appeal, said that: “It cannot be in the public

interest to have trade marks on the register that cannot perform the
basic trade mark function of distinguishing as set out in
s 9 (1)”.
16
In the
Beecham
Group v Triomed
case,
Harms JA referred with approval to Aldous LJ’s observations in
Philips
Electronics NV v Remington Consumer Products Ltd
17
that the more a trade mark describes the goods, the less likely it
will be capable of distinguishing those goods from those of
another
trader.
18
In summary: the more merely descriptive the words may be, the less
distinctive they are and the less likely it is that they made
be
registered as a trade mark.
[19]
In the
Cadbury
v Beacon Sweets and Chocolates
case,
Harms JA made it clear that,
although distinctiveness may be acquired by reason of prior use of
the mark
,
it is important always to bear in mind that it is requirement that
there should be distinctiveness in order to qualify for registration

as a trade mark which is determinative.
19
In other words, distinctiveness and not prior use is always the
criterion. Thus, prior use may contribute to distinctiveness but
does
not, in itself, create it. In English law, one would be inclined to
say that distinctiveness is a “condition precedent”
for
registration. Furthermore, previous advertising and selling under a
particular name does not, in itself, confer distinctiveness.
20
Above all, the distinctiveness must apply to the mark itself and not
the person who applies for its registration. It is also easy
to slide
erroneously into an understanding that it is registration itself
which confers the distinctiveness of the mark.
In
the
Cadbury
v Beacon Sweets and Chocolates
case,
in the same passage, Harms JA seems furthermore to caution against a
facile application of the principle widely known as “first

come, first served” when considering the question of trade mark
registrations. Being “first past the post” when
it comes
either to an application for registration or the actual registration
itself is often confused with “distinctiveness”
and is
inapposite. Put succinctly, prior use does not, in and of itself,
confer distinctiveness.
[20]
I turn now to consider whether the words “the apartheid museum”
have this quality of protectable distinctiveness.
Closely bound up
with this is the question of whether the mark “is inherently
capable of distinguishing” in terms of
section 9 (2) of the
Trade Marks Act. “Distinctive” is an adjective as is
“distinguishable”,
21
“distinguish” is a verb, having both a transitive and an
intransitive meaning,
22
and “distinguishing” a participial adjective.
23
All these words derive from the French word
distinguer
,
24
finding their way into the English language as a result of the Norman
Invasion (the English having experienced colonialism and
imperialism
at the hands of invaders from Normandy in France). The French word
distinguer
,
in
turn, derives from the Latin word
distinguere
,
25
(the
Gauls having experienced the colonialism and imperialism exercised by
the Roman Empire). It is my understanding of the Latin
that
distinguere
has,
at its roots, the words
de
(meaning
“aside or apart from” and
stare
(meaning
“to stand”).
Distinguere
means
“the making of something (or someone) to stand apart”.
Very etymologically, but it seems nevertheless correctly,
the enquiry
therefore is whether the words “the apartheid museum” in
the registered trade mark stand apart from the
ordinary, everyday use
which members of the public have adopted or are likely to adopt to
describe a similar service provided by
another trader? The question,
it seems to me, generates an obvious, direct and brusque answer:
“No”.
[21]
Furthermore, it seems to me that the answer is also to be found in
the
liquorice
allsorts
case
26
with which every lawyer is familiar. This case is regarded as one the
leading cases when it comes to considering what is required
when it
comes to distinctiveness in the use of words to describe a product.
In that case, the court had to consider the following
question: were
Beacon Sweets entitled to exclusive use of the words “liquorice
allsorts”? The Supreme Court of Appeal
found that liquorice
allsorts were a well-known type of confectionary consisting of a
mixture of black-and-white or brightly coloured
sweets containing
liquorice. Accordingly, Beacon Sweets were not entitled to exclusive
use of the words “liquorice allsorts”.
Significantly,
Harms JA said:
During
argument, counsel were unable to suggest an alternative name for the
product. If one considers that a trade mark performs
an adjectival
function in relation to the goods or services, the fact that another
noun for the product is not readily apparent
is a fair indication
that the term does not perform any function.
27
Similar
conclusions were reached in the
shredded
wheat
case (supra). When it comes to a trade mark, as it was with liquorice
allsorts and shredded wheat, so it is with an apartheid museum.
If
you want to set up a museum to apartheid, how else do you describe
it, other than as an “apartheid museum”? The
words
describe the product or service to be offered to the public.
Moreover, members of the public are likely, naturally and
spontaneously,
to adopt the words “the apartheid museum”
when referring to any museum established with a view to focusing on
apartheid.
[22]
Concerning the point of distinctiveness, a residual question arises
whether the use of the definite article “the”
in the
registered trademark, in any way alters the position. It seems to me
that the definite article “the” provides
particularity
rather than distinctiveness. For example, a trader may legitimately
wish to say “ours are
the
liquorice
allsorts where the secret is in the mix” or “ours is
the
shredded
wheat that makes breakfast a treat” or “Visit
the
apartheid
museum at Gold Reef City”. Registration of the words “the
liquorice allsorts”, “the shredded wheat”
and “the
apartheid museum” (i.e. of words containing the definite
article, “the”) would not constitute
a “sufficiently
capricious alteration” to justify exclusive use of the words,
to adopt the expression of Aldous LJ
in the
Philips
v Remington
case. This expression was approved by Harms JA in the
Beecham
v Triomed
case.
28
I accept that, in
The
Oxford Dictionary
,
the definite article “the” is defined as referring to a
“person, place or thing that is unique” and “unique”

is, in turn, defined as “being the only one of its kind; unlike
anything else”. “Uniqueness” is not, in
my view, to
be confused with “distinctiveness”. “Distinctiveness”
denotes, as we have seen, difference
or the standing apart from
others. On the other had, something may be unique to the point of
obscurity. Something can be unique
without being distinctive. It
seems to me that the words “the apartheid museum”,
without conjunction with other words,
are inherently incapable of
distinguishing one apartheid museum from another. Put more
pedantically, the words are inherently incapable
of distinguishing an
apartheid museum of the first respondent from an apartheid museum of
any other person.
[23]
Besides, as was said in the case of
Profitmaker
trade mark
:
“the honest trader should not need to consult the register to
ensure that common descriptiveness or laudatory words, or
not unusual
combinations of them, have been monopolised by others”.
29
To deny persons other than the first respondent the right to use the
expression “the apartheid museum” in their trading

activities would serve, at least indirectly, to discourage them from
setting up such museums. Section 27 of the Constitution enshrines

freedom of trade as a principle. Inasmuch as the spirit of the
Constitution must infuse all that the courts may do, this must

influence this court’s decision as well. Besides, much more
than freedom of trade is at stake. The history of the world,
of which
brief glimpses may be discerned in this judgment, reminds us that
human rights should never be taken for granted. As Edmund
Burke so
aptly said “The price of freedom is eternal vigilance”.
Quite apart from any other considerations, to the
extent that museums
of apartheid may serve to encourage a general awareness of the
importance of human rights, they are to be encouraged.
One would wish
to see more apartheid museums, especially in other centres of South
Africa. To summarise: I conclude that the words
“the apartheid
museum” lack the quality of being “capable of
distinguishing” one museum of apartheid from
another or, put
differently, lack sufficient distinctiveness to justify registration
as a trade mark. The applicant did not “steal”
the first
respondent’s idea of an apartheid museum.
The first respondent’s claim to have the right of exclusive use
of the words “the apartheid museum” cannot be
justified.
The registration of t
rade
mark registration no. 98/13337 “THE APARTHEID MUSEUM” in
Class 35 entered in the name of the first respondent must
be
expunged.
[24]
I shall now briefly address the final ground raised by the applicant:
the likelihood that the first respondent’s trade
mark will
cause confusion to the public in terms of section 10 (12) of the
Trade Marks Act. Mr
Salmon
submitted that the words “the apartheid museum” had
acquired a distinctiveness in the hands of the applicant. Mr
Salmon
conceded that there was a certain degree of tension between the
submission that the words have acquired distinctiveness in the
hands
of the applicant but, in regard to the second ground, that the words
were incapable of distinctiveness. I do accept, however,
that in
certain contexts, very ordinary words, generally of a descriptive
nature, may perhaps acquire a distinctiveness over time.

Nevertheless, even in such situations, it may well be that, even
here, some additional qualification or “sufficiently capricious

alteration” would be necessary to justify exclusive use.
Mindful of one of the “golden rules” for judges, I shall

refrain from expressing any final view on the matter. It is not
necessary in order to make a decision in this case. In regard to
this
third ground, I shall indeed follow in the footsteps of Southwood J
in the judgment referred to earlier and avoid deciding
the issue.
[25]
Mr
Salmon
has asked for the costs of two counsel. This application takes place
against a background of intense litigation, initiated by the
first
respondent, with large sums of money being claimed. In all the
circumstances, the costs of two counsel appear to be justified.
[26]
In the result, the following order is made:
The second
respondent is to rectify the register of trade marks by to expunging
therefrom trade mark registration no. 98/13337
“THE APARTHEID
MUSEUM” in Class 35 entered in the name of the first
respondent.
The
first respondent is to pay the costs of the application, including
the costs of two counsel.
DATED
AT JOHANNESBURG THIS 23rd DAY OF FEBRUARY, 2010
N.P. WILLIS
JUDGE OF THE
HIGH COURT
Counsel
for the Applicant:
Adv
.O.Salmon
(with him,
.N. Van Den Heever
)
Counsel
for the First Respondent:
Adv.
I.
Moosa
Attorneys
for the Applicant: Edward Nathan Sonnenbergs
Attorneys
for the First Respondent: Carls Attorneys
Date
of hearing: 15
th
& 16th February, 2010
Date
of judgment: 23
rd
February, 2010
1
1957
(4) SA 234
(C).
2
[1984] ZASCA 51
;
1984
(3) SA 623
(A).
3
1956
(4) SA 150
(E) at 154G.
4
(August
2003 )
The
Law of The Brand
1
5
(536/98)
[2009] ZA SCA 86
(7 September 2009).
6
(Case
no. 13942/86 delivered on 18 December, 1987 in the then Transvaal
Proviniial Division).
7
The
“Wind of Change” speech is easily accessible on the
internet. See, for example,
africanhistory.about.com/…/p/
wind_of_change
2.htm.
Accessed 17
th
February, 2010. The following excerpts from the speech, do, in my
opinion, illustrate my point:
“
The wind of change is
blowing through this continent…”
“…
whether we like
it or not…”
“
The struggle is
joined…”
“
Our justice is rooted
in the same soil as yours – in Christianity and in the rule of
law as the basis of a free society.”
“
Let me be very frank
with you, my friends.”
“
I hope you won’t
mind my saying frankly that there are some aspects of your policies
which make it impossible for us to
do this (give South Africa our
support and encouragement) without being false to our own deep
convictions about the political
destinies of free men…”
“
Nearly two thousand
years ago…St Paul proclaimed one of the great truths of
history – we are all members of one another.”
“
Today it is impossible
for nations to live in isolation from one another.”
“…
(quoting
John Donne) never send to know for whom the bell tolls; it tolls for
thee.”
“
I
hope – indeed, I am confident – that in another fifty
years we shall look back on the differences that exist between
us
now as matters of historical interest…”
“
Let
us remember
these
truths.”
I share the
view of Brian MacArthur, the editor of
The
Penguin Book of Twentieth Century Speeches
,
(second revised edition; London: Penguin Books. 1999) that
Macmillan’s speech was one of the great speeches of the
twentieth
century. In that book this speech is published along with
the Inaugural Addresses of Presidents Nelson Mandela and John F.
Kennedy,
Martin Luther King’s
I
Have a Dream
,
Franklin D, Roosevelt’s
The
only thing we have to fear is fear itself
and
various other speeches.
8
See,
for example,
The
Oxford Dictionary
.
9
I
may mention that in Nelson Mandela’s Inaugural Address,
appearing in
The
Penguin Book of Twentieth Century Speeches
(see
footnote 6 above), and to which I had the privilege of listening
while among the crowds gathered on the lawns of the Union
Buildings
on 10
th
May, 1994, he said “Never, never and never again shall it be
that this beautiful land will again experience the oppression
of one
by another and suffer the indignity of being the skunk of the
world”. These words suggest to me that Mandela, at
least,
considered apartheid to have been consigned to the rubbish bin of
history in 1994.
10
The
author was the Roman comic playwright, Publius Terentius Afer
(Terence) writing in
Phormio
.
The longer quote is: “
Quot
homines, tot sententiae
:
suo
quoique mos
”.
– “There are as many opinions as there are people: each
has his own correct way”.
11
Newnes
Family Dictionary
12
See,
for example,
R
v Cheeseborough and Another
1948 (3) SA 756
(T) at 756.
13
[
1938]
55 RPC 125
(PC) at 45.
14
2003
(3) SA 639
(SCA) at 648G. See also
Sportshoe
(Pty) Ltd v Pep Stores (SA) (Pty) Ltd
190 (1) SA 722
(A) at 729G.
15
[2000] ZASCA 2
;
2000
(2) SA 771
(A).
16
At
paragraph [7] (p777H-778A)
17
[1999]
RPC 809
(CA).
18
At
paragraph [17] of the
Beecham
v Triomed
case
19
At
paragraph [9]
20
At
paragraph [9].
21
See
The
Oxford Dictionary
22
Ibid
.
23
Ibid
.
24
Ibid
.
25
Ibid
.
26
Cadbury
(Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd
(supra).
27
At
779A.
28
At
paragraph [17}.
29
[1993] RPC 217
[CA] at 230, line 10
et
seq
.