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[2008] ZAWCHC 63
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Century City Property Owners Association (A Section 21 Company) v Century City Apartments Property Services CC and Others (17225/2005) [2008] ZAWCHC 63; 2008 BIP 267 (C) (26 November 2008)
IN THE
HIGH COURT OF SOUTH AFRICA
(CAPE
OF GOOD HOPE PROVINCIAL DIVISION)
Case No:
17225/2007
In the
matter between:
Century
City Property Owners’
Association
(A Section 21 Company)
Applicant
and
Century
City Apartments Property
Service
CC
First Respondent
The
Registrar Of Companies and
Close
Corporations
Second Respondent
Uniforum
SA
Third Respondent
In the
counter application between:
Century
City Apartments Property
Service
CC
Applicant
[In the counter application]
Century
City property owners’
association
(A Section 21 company)
First Respondent
[In the counter application]
The
Registrar of Trade Marks
Second Respondent
[In the counter application]
CORAM : D M
DAVIS J
JUDGMENT
BY : DAVIS J
FOR THE APPLICANT : ADV R W F MACWILLIAM
(SC) & ADV I JOUBERT
INSTRUCTED BY :
SPAMER & TRIEBEL INC
FOR THE FIRST
RESPONDENT : ADV R W TAINTON
INSTRUCTED
BY : ADAMS & ADAMS
DATE OF
HEARINGS : 03 NOVEMBER 2008
DATE
OF JUDGMENT : 26 NOVEMBER 2008
IN
THE HIGH COURT OF SOUTH AFRICA
CAPE
OF GOOD HOPE PROVINCIAL DIVISION
Reportable
Case No.: 17225/2007
In
the matter between:
Century
City Property Owners’
Association
(A Section 21 Company)
Applicant
and
Century
City Apartments Property
Service
CC
First
Respondent
The
Registrar Of Companies and
Close
Corporations
Second
Respondent
Uniforum
SA
Third
Respondent
In
the counter application between:
Century
City Apartments Property
Service
CC
Applicant
[In
the counter application]
Century
City property owners’
association
(A Section 21 company)
First
Respondent
[In
the counter application]
The
Registrar of Trade Marks
Second
Respondent
[In
the counter application]
JUDGMENT: 26 November 2008
DAVIS J:
[1] Century City is an imposing
development which dominates Northern Cape Town. Hugging the N1 road
way in an area called Montague
Gardens, it has become a significant
landmark in the broader Cape Town area.
[2] The main business of applicant is
to promote advance and protect the communal interest of all the
owners, lessees, occupiers
and visitors to Century City. First
respondent conducts trade as a real estate letting agency in Cape
Town, trading under the
name and style of Century City Apartments.
First respondent is also registered as a domain name incorporating
the trade marks
Century City, namely
centurycityapartments.co.za
.
It has also established a website on the internet in relation to
this domain and registration and has several other websites
on the
internet, allegedly which also make use of the trade mark Century
City.
[3] Applicant contends that the use by
first respondent of the trade mark Century City as part of its
corporate name, trading style,
domain name, registration and on its
internet websites amounts to trade mark infringement in terms of
section 34 (1) (a) and/or
(b) of the Trade Marks Act 194 of 1993
(‘The Act’) as well as constituting passing-off in terms
of the common law.
Applicant has approached this court for
interdictory relief to restrain first respondent from making use of
the trade mark Century
City as I have described it.
[4] Apart from defending the
application, first respondent has brought a counter application in
which it seeks rectification of
the trade marks registered in respect
of the applicant’s trade mark registrations for the mark
Century City on the following
basis:
1. Century City is a place name not
capable of distinguishing the services of applicant from the services
of other persons within
the meaning of section 9 (1) section 10 (2)
(a) of the Act.
2. Century City is a place name which
consist exclusively of a sign or an indication which may serve, in
trade, to designate the
kind or intended purpose and / or
geographical origin of applicant’s services as set out in
section 10 (2) (b) of the Act.
[5] In argument, Mr Macwilliam who
appeared together with Ms Joubert on behalf of the applicant,
correctly submitted that the fate
of the application could, in large
measure, be determined by the success or failure of the first
respondent’s counter application.
In that application, first
respondent seeks the removal from the trade mark register of the
trade mark ‘Century City’
in terms of section 24 (1) read
with sections 9,10 (2) (a) and 10 (2) (b) of the Act as entries which
wrongly remain on the register.
The case therefore turns on a name
– either deserving of protection under the Act or no more than
an indication of a geographical
location.
[6] Simple as the description of the
dispute may appear, it raises complex questions in a area of law.
This kind of dispute is
well known in intellectual property law and
is often illustrated in the class room with the following famous
example.
Warner Bros. Studio threatened the
Marx Brothers with legal action if they did not change the name of a
movie they were planning
called
A
Night in Casablanca
.
The irreverent Groucho Marx fired off this response to the studio
head, Jack Warner:
Dear Warner Brothers,
Apparently there is more than
one way of conquering a city and holding it as your own. For example,
up to the time that we contemplated
making this picture, I had no
idea that the city of Casablanca belonged exclusively to Warner
Brothers. However, it was only a
few days after our announcement
appeared that we received your long, ominous legal document warning
us not to use the name Casablanca.
It seems that in 1471, Ferdinand
Balboa Warner, your great-great-grandfather, while looking for a
shortcut to the city of Burbank,
had stumbled on the shores of Africa
and, raising his alpenstock (which he later turned in for a hundred
shares of common), named
it Casablanca.
I just don’t understand
your attitude. Even if you plan or releasing your picture, I am sure
that the average movie fan could
learn in time to distinguish between
Ingrid Bergman and Harpo. I don’t know whether I could, but I
certainly would like to
try.
You claim that you own
Casablanca and that no one else can use that name without permission.
What about “Warner Brothers”?
Do you own that too? You
probably have the right to use the name Warner, but what about the
name Brothers? Professionally, we were
brothers long before you were.
We were touring the sticks as the Marx Brothers when Vitaphone was
still a gleam in the inventor’s
eye, and even before there had
been other brothers—the Smith Brothers; the Brothers Karamazov;
Dan Brothers, an outfielder
with Detroit; and “Brother, Can You
Spare a Dime?” (This was originally “Brothers, Can You
Spare a Dime?”
but this was spreading a dime pretty thin, so
they threw out one brother, gave all the money to the other one, and
whittled it
down to “Brother, Can You Spare a Dime?”)
Now Jack, how about you? Do you
maintain that yours is an original name? Well it’s not. It was
used long before you were born.
Offhand, I can think of two
Jacks—Jack of “Jack and the Beanstalk,” and Jack
the Ripper, who cut quite a figure
in his day.
As for you, Harry, you probably
sign your checks sure in the belief that you are the first Harry of
all time and that all other
Harrys are impostors. I can think of two
Harrys that preceded you. There was Lighthouse Harry of Revolutionary
fame and a Harry
Appelbaum who lived on the corner of 93rd Street and
Lexington Avenue. Unfortunately, Appelbaum wasn’t too
well-known. The
last I heard of him, he was selling neckties at Weber
and Heilbroner.
Now about the Burbank studio. I
believe this is what you brothers call your place. Old man Burbank is
gone. Perhaps you remember
him. He was a great man in a garden. His
wife often said Luther had ten green thumbs. What a witty woman she
must have been! Burbank
was the wizard who crossed all those fruits
and vegetables until he had the poor plants in such confused and
jittery condition
that they could never decide whether to enter the
dining room on the meat platter or the dessert dish.
This is pure conjecture, of
course, but who knows—perhaps Burbank’s survivors aren’t
too happy with the fact that
a plant that grinds out pictures on a
quota settled in their town, appropriated Burbank’s name and
uses it as a front for
their films. It is even possible that the
Burbank family is prouder of the potato produced by the old man than
they are of the
fact that your studio emerged “Casablanca”
or even “Gold Diggers of 1931.”
This all seems to add up to a
pretty bitter tirade, but I assure you it’s not meant to. I
love Warners. Some of my best friends
are Warner Brothers. It is even
possible that I am doing you an injustice and that you, yourselves;
know nothing about this dog-in-the-Wanger
attitude. It wouldn’t
surprise me at all to discover that the heads of your legal
department are unaware of this absurd dispute,
for I am acquainted
with many of them and they are fine fellows with curly black hair,
double-breasted suits and a love of their
fellow man that
out-Saroyans Saroyan.
I have a hunch that his attempt
to prevent us from using the title is the brainchild of some
ferret-faced shyster, serving a brief
apprenticeship in your legal
department. I know the type well—hot out of law school, hungry
for success, and too ambitious
to follow the natural laws of
promotion. This bar sinister probably needled your attorneys, most of
whom are fine fellows with
curly black hair, double-breasted suits,
etc., into attempting to enjoin us. Well, he won’t get away
with it! We’ll
fight him to the highest court! No pasty-faced
legal adventurer is going to cause bad blood between the Warners and
the Marxes.
We are all brothers under the skin, and we’ll
remain friends till the last reel of “A Night in Casablanca”
goes
tumbling over the spool.
Sincerely,
Groucho Marx
The balance between an open society
coupled to a free exchange of information and ideas and intellectual
property rights deserving
of legal protection can often prove to be a
difficult problem. It is to that problem that the present dispute
compels us to turn,
first by way of the relevant legislation.
The applicable legislation
[7]
Section
24 – General power to rectify entries in register:
“
(1) In the event of …
an entry wrongly made in or wrongly remaining on the register …
any interested person may apply
to the court … for the desired
relief, and thereupon the court or the registrar, as the case may be,
may make such order
for making, removing or varying the entry as it
or he may deem fit.
…
.”
Section 9 – Registrable trade
marks:
“
(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 to
be capable of distinguishing within the meaning of subsection (1) if,
at the date of application
for registration, it is inherently capable
of so distinguishing or it is capable of distinguishing by reason of
prior use thereof.”
Section
15 – Registration subject to disclaimer:
“
If a trade mark contains
matter which is not capable of distinguishing within the meaning of
section 9, the registrar or the court,
in deciding whether the trade
mark shall be entered in or shall remain on the register, may
require, as a condition of its being
entered in or remaining on the
register-
that the proprietor shall disclaim
any right to the exclusive use of all or any portion of any such
matter to the exclusive use
of which the registrar or the court
holds him not to be entitled; or
that the proprietor shall make
such other disclaimer or memorandum as the registrar or the court
may consider necessary for the
purpose of defining his rights under
the registration:
Provided that no disclaimer or
memorandum on the register shall affect any rights of the proprietor
of a trade mark except such
as arise out of the registration of the
trade mark in respect of which the disclaimer is made.”
Section 10 (2) (a) and (b) –
Unregistrable trade marks:
“
The following marks shall
not be registered as trade marks or, if registered, shall, subject to
the provisions of sections 3 and
70, be liable to be removed from the
register:
…
a mark which-
is not capable of distinguishing
within the meaning of section 9; or
consists exclusively of a sign or
an indication which may serve, in trade, to designate the kind,
quality, quantity, intended
purposes, value, geographical origin or
other characteristics of the goods or services, or the mode or time
of production of
the goods or of rendering the services;
…
Provided that a mark shall not be
refused registration by virtue of the provisions of paragraph (2) or,
if registered, shall not
be liable to be removed from the register by
virtue of the said provisions if at the date of the application for
registration or
at the date of an application for removal from the
register, as the case may be, it has in fact become capable of
distinguishing
within the meaning of section 9 as a result of use
made of the mark.”
Respondent’s case in the
counter application
[8] Respondent conceded that the mark
‘Century City’ was properly registered in the name of
applicant in 1997 but at
that stage the development of Century City
had not taken place. When Century City was subsequently developed,
the name was initially
used by the developers. However, the name is
of a place and the name, has for many years, become the name of an
identified geographical
location. Briefly, this is the Casablanca –
type argument.
[9] Furthermore, applicant, according
to respondent, functions similarly to a body corporate in a sectional
title scheme, acting
on behalf of the property owners, comprising an
association, in matters such as maintenance of common areas,
management of an internal
shuttle service, storm water and effluent
management, security and the collection of levies from owners to fund
various activities.
It does not sell goods and services to the
general public or at all.
[10] Mr Tainton, who appeared on
behalf of first respondent, submitted that there was a complete
absence in the link between applicant,
the name Century City and the
general public in respect of the sale of goods and service in respect
of which the marks were registered.
Such a link, in his view, would
be essential as a step in proving that the general public regarded
Century City not as a place
name but as denoting particular services
or goods of applicant.
[11] Mr Tainton referred to the trade
mark certificates and the service and goods in respect of which the
marks were registered.
These include advertising and business
services, import and export services, business research planning,
insurance, financial
affairs, estate agencies, education,
entertainment, cinemas, theme parks, sporting and cultural
activities, retail, bars, bottle
stores, wholesale, male order and
merchandising and the provision of food and drink, hotels and
exhibitions. Mr Tainton submitted
that the general public,
interested in the goods and services in respect of which the trade
mark was registered, did not trade
with applicant at all but with
other parties located in Century City who sell their goods and
services. These would include parties
who trade in the provision to
the general public of the various designated services. The general
public, would therefore not
consider that services provided by the
traders located in Century City were at all connected to the property
owners association,
being applicant as opposed to the individual
traders with whom they contract. In his view, they would have been
unlikely even
to have heard of the property owners association. Mr
Tainton also referred to the website which was annexed to the
applicant’s
papers in which the following appeared:
“
Century City has become an
increasingly important commercial hub in the Western Cape and is home
to a growing number of international
and national companies as well
as smaller owner occupiers.”
[12] Mr Tainton therefore submitted
that this evidence put beyond doubt that the name Century City has
been employed as a name of
a place where companies and smaller
occupiers are located rather than constituting a reference to the
property owners association.
[13] Mr Tainton also sought to draw a
distinction between the Century City development and another central
development within the
Cape Town area, namely the Victoria and Alfred
Waterfront. In this connection he referred to an observation of
Desai J in
Victoria and
Alfred Waterfront v Police Commissioner, Western Cape
2004 (4) SA 444
(C) at 449 that the Waterfront, ‘is for all
practical purposes a suburb of Cape Town’. Mr Tainton
submitted that like
reasoning applied to Century City which was also,
for all practical purposes, a suburb of Cape Town.
[14] Mr Tainton placed further
considerable emphasis on the judgment in
Tigon
Mining and Finance Corporation Limited v South Tigon Mining Co Ltd
(1931) 48 RPC 526.
In that case, the plaintiff had altered its name
to Tigon Mining and Finance Corporation Limited. It appears that
the word
Tigon was derived from an animal said to have existed at
some time in the zoological gardens, being an off spring of a lion
and
a tigress. Having changed its name, plaintiff began to acquire
mining properties, particularly in Spain. The plaintiff formed
another company which acquired additional properties in a
neighborhood of Almeria in Spain. The properties contained ore from
which sulphur was extracted. The name Tigon became linked to the
mineral properties owned by the company; such that the ores from
the
mines on plaintiff’s property were generally known by the
description ‘Tigon’.
[15] The Court observed at 534 that
the mineral properties which that company owned:
“
Only apart of a bed of like
minerals which lies under adjoining property, and that bed of
minerals is in a valley, and the result
is that amongst mining
engineers the bed has become known as the Tigon bed, and the valley
containing the bed has become known
as the Tigon basin. No doubt
that has happened because of the expenditure by the plaintiff
companies through the Spanish company
of money upon its property but
it is undoubtedly what has happened.”
Thus, when plaintiff claimed an
injunction restraining defendants from using or carrying, on business
under the name ‘South
Tigon Mining Company Limited’, the
court held:
“
There is now, I think a
geographical significance in the name which has come to mean the bed
of sulphur bearing ore in Almeria South
Spain … [i]t seems to
me to be quite natural that a company which owns the minerals, being
part of what is now known as
the Tigon bed and lying to the south of
the part of that bed which was originally proved, should take as its
name the name which
the defendant company has taken, namely South
Tigon Mining Company Limited; and I cannot think, having regard to
the way in which
different parts of the mineral beds or reefs have
been named in the past, and having regard to the fact that those who
deal in
the shares of mining companies have been quite well
accustomed to companies which have one distinctive feature or common
feature
as their name, being distinguished from one another by adding
to that distinctive feature one of the points of the compass, anybody
would be likely to confuse, a far as share dealings are concerned, if
that be a relevant consideration, the shares of the Plaintiff
Company
with the shares of the Defendant Company.”
at 535
In short, Mr Tainton submitted that,
as had been the case with Tigon, so had the developers of Century
City been so successful that
the very location of their development
had now assumed a common usage which was indicative of the
geographical location of that
development or, to employ the words of
Desai J in the
Waterfront
case, Century City was now to be regarded as suburb of Cape Town.
[16] When respondent appended the
words ‘Century City’ to the word ‘apartments’,
this was a clear example
of how the mark Century City served to
designate the geographical origin of the apartments which first
respondent let. Accordingly,
Mr Tainton submitted that the word
mark was wrongly on the register and fell to be removed, pursuant to
section 10 (2) (b) of the
Act.
Applicant’s
response
[17] Mr Macwilliam submitted that,
under its trade mark, applicant provides a number of services
including the following:
1. Different levels of access control
to various areas within the development known as Century City.
2. The provision of public transport
within Century City.
3. The provision of security services
which have been outsourced to a private security company. The
security company’s vehicles
and uniforms depict, with the
consent of applicant, the Century City trade mark.
4. The approval of special events
staged on private or common areas within Century City, subject to
certain terms and conditions.
5. Enforcement of the traffic rules
and regulations and the employed of road blocks in Century City,
including clamping and the
issuing of fines as well as parking
control.
6. The setting down of design
requirements in respect of buildings and landscaping in Century City.
7. The control of signage used within
the development.
Furthermore, applicant policies the
use of the trade mark ‘Century City’, where this trade
mark is used in an unauthorised
manner. It then takes the necessary
action. Mr Macwilliam also submitted that since the inception of
the development, Century
City had been advertised extensively as part
of a marketing strategy Century City has been presented as a
prestigious development
from which every business would aim to trade
and where the owners thereof would be proud to live. The
development has been presented
as a distinctive integral whole, with
the different parts of the development complimenting each other.
Accordingly, Mr Macwilliam
submitted that significant value and
goodwill attached to the mark Century City. Somewhat acerbically Mr
Macwilliam observed
that this conclusion was obvious, given the
manner in which first respondent had sought to exploit the value of
the mark by using
the mark Century City in its name and trading
style.
[18] According to Mr Blackshaw, who
deposed to an affidavit on behalf of applicant, the trade mark
Century City does not attach
to the land on which the development is
situated. The trade mark was created long before the development
took place and its origin
was not linked to any characteristic of the
land itself. The trademark has always been separated therefrom.
Accordingly, the
trade mark attaches to the services rendered by the
applicant, its predecessors and it licensees. Furthermore, the
trade mark
did not consist of a sign or indication which described
the designated location geographical origin of the goods of services.
Without the services rendered by applicant, the land on which
Century City development was situated would simply be another part
of
the area called Montague Gardens. Accordingly, applicant contended
that Century City is not simply a geographical area, in
the sense of
a town, a suburb, or an area within a city but a development, albeit
large in scale, controlled by a private entity
and in respect of
which particular services were rendered by applicant utilising its
trade marks.
Evaluation
[19] As Mr Macwilliam correctly
submitted, the onus in respect of the counter application rests upon
the respondent to prove its
case in order to justify the relief
sought. That case can best be summarised by referring to two
paragraphs in the affidavit
deposed to by Mr Murphy, on behalf of
first respondent:
“
The mark
Century
City
is a geographical
place name and has become that due to the successful efforts of the
developers of the land on which Century City
stands. The mark
Century City
was initially, when the development was being planned and in its
early phases, a new name for a place that did not yet exist, a
place
that people had not yet bought property in, or based their business
in. As the developer came to exhaust itself of property
sales, and
as property and property usage began to fall naturally in the hands
of private owners, so the name Century City has
become common, and a
geographical place name, rather than a distinctive trade mark
indicating only one source of service.
The mark
Century
City
has become
incapable of distinguishing the services of the applicant or any
other person. It has become an indication of geographical
origin
and (in the case of real estate service particularly) an indication
of the kind or intended purpose of services. The mark
Century
City
can no longer
perform the function of a trade mark with respect to the services
listed on these trade marks of the applicant.”
[20] As observed, Mr Tainton placed
considerable emphasis on the
Tigon
case in support of his argument that Century City has now become no
more than a geographical place. Accordingly, whatever the
previous
registration, it now consist exclusively of a sign to designate
geography rather than distinguishing the goods or services
of a
particular person; in this case applicant.
[21] In argument before the Court, a
further decision cited by Mr Tainton in support of first respondent’s
case, requires
analysis, being
Nicks
Fishmonger Holdings (Pty) Ltd and another v Fish Dinner in Bryanston
CC and others
2005 BIP 46
(W). This case turned on an application to restrain the continued
alleged infringement of first applicant’s
trade mark ‘the
Fishmonger’ in respect of restaurants and the passing-off by
the respondent of their restaurant the
‘Bryanston Fishmonger’
as though it were part of applicant’s claim. Horowitz AJ
placed considerable emphasis
on the meaning of the word ‘fishmonger’
as is evident from the following passage:
“
I believe that it is
important to bare in mind the distinction, particularly because (at
the risk of repetition) the words ‘fishmonger’,
generally
speaking, is indicative of a trade or occupation, not of a particular
entity and, apparently in South Africa, of restaurants
which
specialise in fish dishes. One must therefore guard against allowing
a specific entity to monopolise such a word, even though
it may be
one in a phrase constituting a trademark.”
at 73
The learned judge then continued:
“
The more general the nature
of the words constituting a trademark, the greater the scope for the
owner thereof to allege an infringement
of the trademark and the less
a court should be inclined to hold that particular words are
‘identical, or deceptively or
confusingly similar’ to the
words constituting the registered trademark which it is alleged is
being infringed. Unless
there were compelling reasons to do
otherwise, I would be hesitant to hold in favour of a trademark
owner, whose trademark consists
of words of general description and
who invites, as it were, what superficially might appear to be
deception but is really nothing
more than the use by the alleged
wrongdoer of a word which might be intended to do no more than
describe the nature of the latter’s
business. It must be
remembered that the first applicant enjoys trademark rights in the
words ‘THE FISHMONGER’, not
simply the single word
‘FISHMONGER’. What the first applicant therefore seeks
to do is claim a monopoly in an English
word which is descriptive of
an occupation, merely because that word features as one word in a
trademark which the first applicant
owns. To my mind, ‘THE
FISHMONGER’ is general enough; ‘FISHMONGER’ alone,
the more so. In my view,
therefore, the respondents did nothing
wrong in appending that word to another word which indicates the area
in which the respondents
ply their trade. Whilst it may be that
restaurant diners might think that there is some connection or
association between the
first respondent’s restaurant and the
first applicant’s chain of franchise restaurants, that is not
necessarily the
result of unlawful conduct on the part of the
respondents: it could equally be that the words by which the first
applicant chose
to identify itself in the market-place, lend
themselves to confusion.”
[22] I have cited this passage in
full because it produces a measure of lucidity on the use of a
particular word within the context
of the Act, particularly a word
which is used in ordinary speech. In this case, however, the
argument turns on words which allegedly
connote a specific location.
Here there is assistance to be found in the case law.
[23] In
Cambridge
Plan AG and another v Moore and others
1987 (4) SA 821
(D) the court was seized with a matter in which
applicant had applied for an interim interdict based on its rights in
a trade mark
Cambridge Diet. Respondent submitted that the use of
the word ‘Cambridge’ in the confusingly similar mark, ‘Dr
Howard’s Cambridge Formula’, was an allusion to the fact
that it originated in Cambridge (at 844 A). Significantly,
Page J
held as follows at 844 F - G:
“
The reason that geographical
names are difficult to register and, if registered, are normally
registered subject to a disclaimer,
is because their presence on the
Register might otherwise embarrass or inconvenience traders wishing
to refer to a particular geographical
locality… In order to
avoid this result, however, a disclaimer of any right to the word
solely in its geographical connotation
is all that is necessary: and
this, in my view, is what the disclaimer in the present case means is
not intended to cover, and
does not cover a use of the word
‘Cambridge’ ‘in a connotation which is not
exclusively geographical’.
The use by the respondents in the
present case is not exclusively geographical but is intended to
identify the particular dietary
regimen developed by Dr Howard. The
fact that it is done by reference to Cambridge, does carry with it a
certain geographical
connotation but this is not the primary
connotation conveyed by the respondent’s use of the word.”
[24] It may be that the use of an
ordinary English word such as fishmonger or the name of an ancient
English city such as Cambridge
or an African city as Casablanca does
not provide any exclusivity of a kind which should enjoy protection
under the Act and therefore
should fall within the ambit of section 9
(1) thereof as opposed to section 10 (2) (b).
[25] By contrast, to both the
description ‘Cambridge’, ‘Casablanca’ or
‘Fishmonger’, in this
case the meaning of Century City
flows directly from the development of a piece of land located in
Montague Gardens. The meaning
of Century City is inextricably
linked to this particular development. The right that flows
therefrom emerged from the nature
of the development rather than from
a dictionary meaning or a geographical location. To return to the
case of Tigon. Here the
reef had become known by a particular name,
Tigon. Accordingly, the court refused to allow the plaintiff to
appropriate the name
of the entire location for itself. In the
present case, the development is a self contained complex. What is
being contended,
is that it has an exclusively geographical meaning
which, as I have concluded, is not the case because, to use the
description
employed by first respondent on its website, it is a
‘brand name’. At the very least, first respondent has
not discharged
the onus of showing that the registered mark should
fall within the ambit of section 10 (2) of the Act.
[26] That conclusion then leads to the
determination of the main application.
The
application
[27] First respondent defends its use
of Century City as follows:
1. Its use of Century City constitutes
the use of the name of its place of business and the use is
bona
fide
and consistent with
fair practice in terms of section 34 (2) of the Act.
2. Its use of Century City is a
bona
fide
description or
indication of the kind quality, quantity and/or intended purpose
value, geographical origin of its services pursuant
to section 34 (2)
(b) of the Act.
3. Its use of Century City in relation
to services of renting out real estate situated in Century City is
bona fide
and reasonable to indicate the intended purpose of such services in
terms of section 34 (2) (c) of the Act.
4. It use of the name ‘Century
City Apartments’ is not likely to deceive or confuse persons
interested in renting real
estate in Century City into believing that
first respondent’s business is actually that of applicant.
By contrast, under the earlier Act,
the 1963 Trade Mark’s Act, section 46 (b) provided that no
registration of a trade mark
shall interfere with;
(b) the use by any person of any
bona
fide
description of the
character or quality of his goods or service.
Section 34 (2) (b) of the Act thus
extends the scope of the earlier provision and provides a defense in
respect of a
bona fide
descriptionor indication of the geographical origin of the goods of
services in question provided that such use is consistent to
with
fair practice. In
Plascon
Evans Paints (Pty) Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A) Corbett JA (as he then was) said the following
regarding section 46 (b):
“
[i]t seems to me that what
the legislature intended to safeguard by means of the provisions of
the subsection is the use by a trader,
in relation to his goods, of
words, which are fairly descriptive of these goods, genuinely for the
purpose of describing the character
or quality of the goods: the use
of the words must not be mere device to secure some ulterior object;
as for example where the
words are used in order to take advantage of
the goodwill attaching to registered trademark of another.”
at
645 F - G
As the court further noted in
Standard
Bank of SA Limited v United Bank Ltd
1991 (4) SA 780
(p) at 806 G – E:
‘
[I]t is very difficult to
prove bona fide descriptive use when the use is as a trade mark
.
“
In his replying affidavit in the main
application, Mr Bradshaw notes that ‘Century City apartments’
is not a
bona fide
description of first respondent’s services as claimed by it but
rather it is employing the trade mark Century City as a distinctive
part of its name. On the property owner page of its website, first
respondent refers to ‘Century City Apartments’
as a brand
name. The mark ‘Century City Apartments’ is also
prominently used in a different colour from the rest
of the typing on
this webpage, The website then continues:
“
Welcome to Century City
Apartments – your specialist Cape Town self catering
accommodation supplier of over 40 furnished
Cape Tourism accredited,
up market, short term vacation and corporate accommodation rental
apartments, all situated within the
world famous secure Century City
precinct.”
Had the first respondent employed a
name such as ‘Murphy’s Apartments at Century City’,
that appellation would
at least have indicated that the apartments
were located within the geographical area of Century City as opposed
to ‘Century
City Apartments’ where the significant work
is done by the phrase ‘Century City’ as meaning something
beyond
a mere geographical location.
[28] Mr Tainton submitted that first
respondent’s use of the name Century City in the name ‘Century
City Apartments
Property Services CC’ was merely descriptive of
the apartments which it as an agent it leases on behalf of the
respective
owners of apartments in Century City. Thus, it would be
impossible to describe the geographical origin or other
characteristics
of the apartments more accurately then as ‘Century
City Apartments’. In his view, it would be nonsense to call
the
apartments ‘Murphy’s Apartments’ in that not
all the apartments belong to Mr Murphy and the essential
characteristics
and identifying unifying feature was that they are
‘Century City Apartments’.
[29] Mr Tainton’s submission
itself provides the indication to why this defence cannot be
sustained. The essential characteristic,
for which he contends, is
they are ‘Century City Apartments’ not that they are
necessarily located in Century City.
The descriptive power is
connoted in the words ‘Century City’. Hence this phrase
seeks to exploit the value which
is inherent in the trade mark
belonging to applicant. For this reason taken together with the
reasoning employed in the treatment
of the registered mark, first
respondent is not entitled to use the defenses as set out in section
34 (2).
Objection
to first respondent’s name as Close Corporation
[30] First respondent was incorporated
under its present name 28 February 2007.
Section 19
of the
Close
Corporations Act of 1984
provides that no new close corporations may
be registered under a name which is undesirable. Section 20 of the
Act is of particular
relevance in this connection.
“
(1) If within a period of
one year after the registration of a founding statement of a
corporation it appears to the Registrar that
a name mentioned in the
founding statement is undesirable, he or she shall order the
corporation concerned to change such name.
(2) Any interested person may -
...
(b) within a period of two years
after the registration of a founding statement apply to a Court for
an order directing the corporation
to change its name on the ground
of undesirability or that such name is calculated to cause damage to
the applicant, and the Court
may on such application make such order
as it deems fit.”
[31] Significantly, in Government
Gazette 978 of 1985 the Registrar issued a directive concerning the
names of companies and close
corporations. Of relevance is the
following passage:
“1. GENERAL
PRINCIPLES
Any name may be selected, provided
such name does not encroach on the rights of any person or existing
concern, or is a name which,
in the opinion of the Registrar, is
undesirable. In particular, a name will be considered to be
undesirable if –
it is identical or very similar
to a name already registered, but non-generic identical words in
names will, in exceptional
circumstances, be allowed with different
descriptive wording for subsidiary or associated companies;
…
words pertaining to a trade mark
are contained in a name which will be used in regard to a business
which relates to the class
of goods or services in which the trade
mark is registered while the applicant has no proprietary rights in
respect of such
trade mark, nor the consent of the said proprietor
to use words in a name;”
…
Whilst the directive has no statutory
effect, it provides some guidance as to the content of the phrase ‘on
the ground of
undesirability’.
The word undesirable cannot be bolted
to a specific definition. See
Peregrine
Group (Pty) Ltd and others v Peregrine Holdings Ltd and others
2001 (3) SA 1268
(SCA). In that case at para 7 Harms and Navsa JJA
approved of the approach adopted by J B Cilliers
(1998 THRHR 582
and
1999 THRHR 57
particularly at 68 – 69) where the learned author
said:
“
The merits to be considered
by the Court are whether, on a balance of probability and on the
evidence before it, the existing company
has such vested rights in
its name or particular words in its name that the registration of the
new company or the amended name
of another company is undesirable, or
whether the existing company or the amended name of another company
is undesirable, or whether
the existing company has shown not only
that confusion or deception is likely, but if either ensues it will
probably cause it damage.
This distinction clearly delineates the
two pillars of the protection against the similar company names under
the Companies Act
1973 (SA).”
[32] In this case, applicant has a
vested right in the name in that it was registered as its trade mark.
It is manifestly undesirable
for a name to be registered as the
description of another corporation which has no such vested right in
the name or the particular
words of the name. This use can only
cause damage to the corporation which has the vested right in the
name. I am also satisfied
that the inclusion of the trade mark
‘Century City’ in first respondent’s corporate name
is calculated to cause
damage within the scope of
section 20
of the
Close Corporations Act. This
conclusion is justified on the basis
that, in my view, there is a reasonable likelihood that first
respondent’s business
name may confuse or deceive the public
into believing that the first respondent’s business is or is
connected with applicant’s
business and that that confusion or
deception will probably cause damage to applicants business.
Webster and Page South African
Law
of Trade Marks
at para
16.5.
Passing-off
[33] The common law concept of passing
of was eloquently described in
Jennifer
Williams & Associates v Lifeline Southern Transvaal
[1996] ZASCA 46
;
1996
(3) SA 408
(A) as follows:
“
In its classic form it
usually consists in A representing, either expressly or impliedly
(but almost invariably by the latter means),
that the goods or
services marketed by him emanate in the course of business from B or
that there is an association between such
goods or services and the
business conducted by B. Such conduct is treated by the Law as
being wrongful because it results, or
is calculated to result, in the
improper filching of another’s trade and/or in an improper
infringement of his goodwill and/or
causing injury to that other’s
trade reputation. Such a representation may be made impliedly by A
adopting a trade name
or a get-up or mark for his goods which so
resembles B’s name or get-up or mark as to lead the public to
be confused or to
be deceived into thinking that A’s goods or
services emanate from B or that there is the association between them
referred
to above. Thus, in order to succeed in a passing-off
action based upon an implied representation it is generally incumbent
upon
the Plaintiff to establish, inter alia: firstly, that the name,
get-up or mark used by him has become distinctive of his goods or
services, in the sense that the public associate the name, get-up or
mark with the goods or services marketed by him (this is often
referred to as the acquisition of reputation); and, secondly, that
the name, get-up or mark used by the Defendant is such or is
so used
as to cause the public to be confused or deceived in the matter
described above. These principles are trite and require
no citation
of authority”.
See also
Caterham
Car Sales and Coachworks Limited v Birkin Cars (Pty) Ltd
[1998] ZASCA 44
;
1998 (3) SA 938
(SCA) at paras 15 – 16
[34] In this case, applicant must show
that the name or mark used by it has become distinctive of its goods
and services in that
the public associate the mark with the goods or
services marketed by it and, further, that the mark used by the first
respondent
is such that it will cause the public to be confused and
deceived. After all, the essence of the action for passing-off is
to
protect against deception as to the trade source or to a business
connection
Caterham Car
Sales,
at para 15. See
also
Premier Trading Company
(Pty) Ltd v Sportopia (Pty) Ltd
2000 (3) SA 259
(SCA) at 266 J - 267 C.
[35] In the present dispute, first
respondent has made use of the very trade mark in respect of which
applicant has acquired a reputation
and in which there is an
intrinsic value. The use of the word ‘apartments’ alone
does not distinguish the services
of first respondent from the
services of the applicant. By contrast, it implies that the
business of first respondent is but
a branch or a department of the
business of applicant or perhaps at an even more generous level to
first respondent, suggests a
very close connection to the business of
applicant.
[36] First respondent’s website
contains various references to Century City as well as a news clip
relating to the Century
City development in general.
Unquestionably, this creates the impression that the business of
first respondent is in someway
connected or endorsed by the
applicant. In my view, the use by the first respondent to the
trademark Century City is likely to
cause deception or confusion
among members of the public and its conduct therefore does amount to
passing-off under the common
law. In summary, first respondent has
infringed the distinctiveness of the trade mark of applicant, that is
the accessory right
to the distinctive mark. Neethling
Unlawful
Competition
at 162
THE
ORDER
[37] For all of these reasons
therefore, the following order is made:
1. The counter application is
dismissed with costs, such costs to include the cost consequent upon
the employment of two counsel;
2. The first respondent is interdited
and restrained from infringing, in terms of
section 34
(1) (a) and
(b) of the
Trade Marks Act No. 194 of 1993
, the applicant’s
trade mark registration nos. 1997/ 14283
Century
City
and 1997/ 14284 – 7
Century City
device by using, in the course of its trade, the trade mark
Century
City
, or any confusingly or
deceptively similar trade marks in relation to those services in
respect of which the applicant’s
trade mark is registered, or
any goods or services which are so similar to the services to which
the applicant’s trade mark
registrations relate that in such
use, there exists the likelihood of deception and confusion;
3. The first respondent is interdicted
and restrained from passing-off its business as being that of the
applicant, or being associated
with or endorsed by the applicant, by
making use of the trade mark
Century
City
or any confusingly or
deceptively similar marks;
4. The first respondent is interdicted
and restrained from utilising the trade mark
Century
City
as part of the first
respondent’s name or trading style or as part of any domain
name or website on the internet;
5. The first respondent’s close
corporation name is declared to be undesirable in terms of
Section 20
of the
Close Corporations Act of 1984
;
6. The first respondent is directed,
within ten days from the date of this Order, to apply to the second
respondent to change its
name to one not incorporating the trade mark
Century City
or any confusingly or deceptively similar trade marks;
7. The first respondent is directed
forthwith to transfer the domain name registration
centurycityapartments.co.za
and control over the domain name
centurycityapartments.co.za
to the applicant;
8. The first respondent is directed to
remove from all matter in its possession or under its control, and
from any websites on the
Internet under its control, the trade marks
Century City
,
or any confusingly or deceptively similar trade marks, where it is
used as part of the first respondent’s corporate name,
brand
name, trading style, domain or trade mark;
Alternatively
,
where the trade mark so applied is incapable of being removed from
the matter to which it has been applied, delivering up such
matter to
the applicant for destruction;
The first respondent is directed to
pay the costs of this application, such costs to include the costs
consequent upon the employment
of two counsel.
______________
DAVIS J