Lubbe NO and Others v Millenium Style (Pty) Ltd. (69/06) [2007] ZASCA 10; [2007] SCA 10 (RSA) ; [2007] 4 All SA 692 (SCA) ; 2007 (6) SA 241 (SCA) (16 March 2007)

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[2007] ZASCA 10
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Lubbe NO and Others v Millenium Style (Pty) Ltd. (69/06) [2007] ZASCA 10; [2007] 4 All SA 692 (SCA); 2007 (6) SA 241 (SCA); 2007 BIP 133 (SCA) (16 March 2007)

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THE SUPREME COURT OF APPEAL
OF SOUTH AFRICA
Case number : 69/06
REPORTABLE
In
the matter between
:
ANDRIES PETRUS LUBBE NO
......................
First
Appellant
WILLEM PETRUS LUBBE NO
......................
Second
Appellant
HILTON SAVIN NO
......................
Third
Appellant
PAUL OLIVER SAUER MEAKER NO
......................
Fourth
Appellant
CORRIDA HOLDINGS (PTY)
LIMITED
......................
Fifth
Appellant
CORRIDA SHOES (PTY) LIMITED
......................
Sixth
Appellant
and
MILLENNIUM STYLE (PTY)
LIMITED
......................
First
Respondent
BRETT GEORGE HODGSON NO
......................
Second
Respondent
PULSE POLYURETHANE
MANUFACTURERS (PTY) LIMITED
......................
Third Respondent
GUY BOWMAN
......................
Fourth
Respondent
and in the matter of a
counter-application between:
ANDRIES PETRUS LUBBE
......................
NO
First Appellant
WILLEM PETRUS LUBBE NO
......................
Second
Appellant
HILTON SAVIN NO
......................
Third
Appellant
PAUL OLIVER SAUER MEAKER NO
Fourth Appellant
and
MILLENNIUM STYLE (PTY) LTD
......................
Respondent
CORAM :
HARMS
ADP, BRAND, CLOETE, PONNAN AND CACHALIA JJA
HEARD : 23 FEBRUARY 2007
DELIVERED : 16 MARCH 2007
Summary: Trade marks – expungement – devices and shapes
Neutral Citation: This judgment may be referred to as Lubbe NO v
Millennium Style [2007] SCA 10 (RSA)
JUDGMENT
HARMS ADP:
[1] This is a
trade mark case. Msimang J, sitting in the high court, dismissed an
application for an interdict based on trade mark
infringement of six
trade marks
1
that belong
to a Trust represented by its trustees. In response to a
counter-application for the rectification of the trade mark register
he ordered that the marks be expunged. He consequently dismissed the
infringement application having found in addition that there
could in
any event not have been any infringement. He granted leave in
relation to the expungement only but this Court extended the
scope of
the appeal by granting leave in relation to the infringement.
[2] There are
cyber-squatters and there are those who squat on the trade mark
register. Judged by the papers in this case the Trust
is an entity
that used the register to stifle competition and not for its
statutory purpose. The fact that there is no opposition
to an
application for registration or that there is not already something
similar on the register does not mean that the application
should
proceed to grant.
[3] This practice gives
intellectual property law a bad name. It also throws serious doubt on
whether this part of the law covers
anything intellectual.
Significantly, a few days before the hearing of the appeal the Trust
admitted that two of its marks did not
have the ability to
distinguish but nevertheless sought to prevent their expungement on
technical grounds. The reader may be surprised
to know that the
Registrar had registered the one (TM 1987/9450) in Part A of the
register in terms of the Trade Marks Act 62 of
1963, which meant that
the Registrar was at the time satisfied that the mark was
distinctive. Maybe I should surprise the reader
further by describing
this particular trade mark: it is a device for a shoe sole and the
device consists of a single transverse stripe
towards the end of the
heel. The other mark (TM 1998/14074) covered by the Trust’s
concession is simply the side view of a shoe
sole.
[4] But this
case is not really about trade marks. It is about the suppression of
competition. The appellants are upset because a
former employee went
into competition with them by making shoes that by virtue of their
design and construction and overall appearance
are ‘an almost
direct copy’ of a shoe made by or under licence from the Trust. As
said by the main deponent on behalf of the
appellants, Mr AP Lubbe,
their case is essentially a simple one: the trade marks are infringed
because the respondents use the distinctive
characteristics of the
appellants’ sole
construction
.
Their unfair competition case, it need be stated, fell apart in the
high court and no attempt was made to rebuild it.
[5] The appellants’ case
invited an attack on the five trade marks registered in Part A of the
register under the 1963 Act on the
ground that in each instance the
shape and configuration of a shoe sole was registered, something not
permitted by the 1963 Act.
The appellants responded vehemently by
stating that they were entitled to register the shape and
configuration of a sole as a trade
mark because it is a ‘device’.
[6] In cannot
be gainsaid that shapes were not registrable under the 1963 Act as
trade marks and calling shapes ‘devices’ made
no difference to
the conclusion. See
Weber-Stephen
Products Co v Registrar of Trade Marks
1994
(3) SA 611
(T) at 615G-I; cf
Koninklijke
Philips Electronics NV v Remington Products Australia Pty Ltd
[2000] FCA 876
para 16
.
But, submitted counsel for the appellants, we must ignore what the
appellants had said about the meaning of their trade marks because
what was indeed registered were devices, i.e., visual representations
or illustrations capable of being reproduced on a surface,
whether by
printing, embossing, or by any other means (s 2(1) ‘device’). To
explain the difference: the appellants’ case on
the papers was that
the transverse stripe referred to represents an indication that the
end of the heel is bevelled. Now the argument
is that the stripe is
simply a stripe printed or embossed on a sole. The argument becomes
odd if regard is had to TM 1988/05584.
It clearly shows an ordinary
heel of a shoe plus three stripes of no particular distinctiveness.
Counsel had to submit that what
was obviously intended to be a heel
was in reality the impression of a heel but that the use of a real
heel would also infringe.
[7] This
aspect of the case can be disposed of on two bases. The first is
this. The admission, disclaimer, memorandum, limitation
or condition
of each of these registrations begins with this statement:
‘
Die merk
bestaan uit die devies
van
die patroon van ‘n SOOL, wat toegepas word op ‘n SKOEISEL.’
Translated, it means that the
mark consists of a device of the design of a sole applied to
footwear. There is a big difference between
a device which has to be
applied onto a sole (which could have been registered) and a design
of a sole (which could not). The wording
confirms what the marks were
obviously intended to represent, namely the design of a sole, and how
the appellants impermissibly sought
to enforce them.
[8] Once the conclusion is that
these marks were not registrable under the 1963 Act, they have to be
expunged. Under
s 70
of the
Trade Marks Act 194 of 1993
, the validity
of the original entry of a trade mark on the register existing at the
commencement of this Act must be determined in
accordance with the
law then in force. Section 42 of the 1963 Act provided that (subject
to certain exclusions) trade marks registered
in Part A are to be
taken as valid in all respects after seven years. One exclusion was
if the trade mark offended against s 16 which,
in turn, prohibited a
registration ‘contrary to law’. The registration of the shape of
an article was at the time contrary to
law because only ‘marks’
as defined (which excluded shapes) could be registered.
[9] The
second basis relates to the trade mark value of distinctive shoe
soles and devices for soles. Under the 1993 Act devices,
shapes and
configurations may be registered as trade marks. But the mere fact
that they may be distinctive does not mean that they
are distinctive
in the trade mark sense, i.e. to indicate source of origin. Typically
the pattern or shape of a shoe sole would be
regarded by the
purchaser as either ornamental or as part of the design of the shoe
tread and it is seldom that it will be considered
to be a source
identifier. The respondents’ evidence to this effect was not and
could not be gainsaid in any meaningful way. Indeed,
if regard is had
to the fact the appellants have not in twenty years used any of these
marks as trade marks the conclusion becomes
irresistible. (I shall
refrain from asking why the marks were not attacked on the ground of
non-use.) See
Bergkelder
Bpk v Vredendal Koöp Wynmakery
[2006]
SCA 8 (RSA) para 8-9; c
f
Adidas-Salomon
AG v Fitnessworld Trading Ltd
Case
C-408/01 (ECJ) para 38-42. Attached to this judgment is a
representation of all these marks and it will be obvious from a mere
glance that not one of the devices has any trade mark significance
and that they would be perceived by the public as sole tread designs,
whether functional or aesthetic. Because these marks are accordingly
not capable of distinguishing in the trade mark sense they have
to be
expunged from the register. See
Bergkelder
Bpk
at
para 14.
[10] Turning
then to TM 1998/14074 which, as mentioned, consisted of the side view
of a shoe sole and which the appellants concede
was and is incapable
of distinguishing, the case of the appellants is that the mark should
not have been expunged because the respondents
are no longer persons
interested in the mark. This, according to the argument, is because
the appellants no longer rely on its infringement
and because the
respondents do not allege that they wish to use that representation.
This argument, which was eventually not persisted
in, can
nevertheless be disposed of in a few words. The question whether a
party is an ‘interested person’ entitled to apply
for the
rectification of the register under s 24 of the 1993 Act is
determined at the time of
litis
contestatio
and
once a party has legal standing, the other party cannot by its action
destroy the first mentioned party’s standing. The other
reason is
this: a person in the trade area covered by the impugned trade mark
is in principle an interested party because such a
person has an
interest in having the register clear of objectionable registrations.
Cf
Ritz
Hotel Ltd v Charles of the Ritz Ltd
1988
(3) SA 290
(A) at 307H-308E and
Mars
Inc v Candy World (Pty) Ltd
[1990] ZASCA 149
;
1991
(1) SA 567
(A) at 574C.
[11]
The question may fairly be
asked why such a simple case has reached this Court, especially after
Galgut DJP had already held at the
interlocutory stage that the
appellants do not have a prima facie case. In spite of the record of
some 650 pages it should not have,
but the complexity of the argument
presented below and in the heads of argument may provide part of the
answer.
[12] The
appeal is dismissed with costs, including those consequent upon the
employment of two counsel.
________________________
L T C HARMS
ACTING DEPUTY PRESIDENT
AGREE:
BRAND JA
CLOETE JA
PONNAN JA
CACHALIA JA
1
TM
1998/14074; 1987/9452; 1987/9449; 1988/5584; 1987/9450; and
1987/9451, all registered in Class 25 in respect of footwear.