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[2008] ZAWCHC 314
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Century City Property v Century City Apartments Property Services CC and Others (17225/2007) [2008] ZAWCHC 314 (12 December 2008)
JUDGMENT
IN
THE HIGH COURT OF SOUTH AFRICA
("CAPE OF GOOD HOPE PROVINCIAL
DIVISION)
CASE NO
:
17225/2007
DATE
:
12
DECEMBER 2008
In
the matter between:
CENTURY
CITY PROPERTY
Applicant
and
CENTURY
CITY APARTMENTS PROPERTY
SERVICES
CC AND TWO OTHERS
Respondent
JUDGMENT
DAVIS,
J
This
is an application for leave to appeal against a judgment of this
Court on 26 November 2008. Ordinarily in an application of
this kind
there would be no necessity to engage in a further analytical
approach to the dispute. However I have been provided with
extraordinary careful heads diligently prepared by Mr
Tainton
who
appears on behalf of the applicant in the counter application and the
applicant in this case whom I shall continue, for the
purposes of
this judgement, to refer as the applicant.
In
essence Mr
Tainton's
submission is that there is a reasonable prospect that another Court
could come to a different conclusion to this Court regarding
the
counter application. What is clear in this case is that, as the
parties agreed when the matter was first heard before this
Court, the
entire dispute, as set out in the principal judgment, can be resolved
by the determination of the counter application.
If the counter
application fails, in effect, the blame of the dispute resofves
itself.
Crisply
the question is whether a party such as the applicant is entitled to
make use of the word "Century City
1
'
in terms of the trade with which it engages, namely the renting of
property within a divestment called "Century City".
Mr
Tainton
submits that the case needs to be examined within the context of the
history pertaining to the trademark "Century City".
The
nature of the trade of the original proprietor
o
f
the
mark Century City was that of a property developer whose stock in
trade was property, it acquired the land, developed and build
the
entire concept, and then sold it off for substantial profit to
thousands of persons who now own property in Century City.
According
to Mr
Tainton
,
any of the owners of property in Century City conducting business on
their property may legitimately and naturally wish to use
the name
Century City in trade in respect of their businesses, the same way as
traders owning property in other geographical locations
may wish to
do. The name of the place from which goods are sold and services are
rendered can be described accordingly: A service
station may
legitimately and naturally wish to call itself Century City Service
Station, a restaurant John Dorey Century City,
a pharmacy Century
City Pharmacy, an auto dealer Century City Auto.
Considerable
emphasis was given to comparative law, particularly the problem of a
geographical location as opposed to a preservation
of a right in the
form of a trademark. Thus in
Ctarke
Equipment Co v Registrar of Trademarks
[1964] HCA 55
the question was whether the mark considered, apart
from the effect registration, is such that by its use the applicant
'is likely
to attain his object of thereby distinguishing his goods
from the goods of others'. Mr Tainton went on to develop the
distinction
as follows: it can occur that the use of a place name
constitutes a 'fancy name' and therefore is dislocated from the
geographical
origin of the goods and services. To again cite the
decision in
Clarke
Equipment Company
which decision was followed thereafter
in
re
Chancellor
Masters and Scholars of the University of Oxford
/ University t/a Oxford University Press v The Registrar of
Trademarks
[1990] FCA 175
;
"It
is well settled that a geographic name when used as a trademark for a
particular category of goods may be saved by the
nature of the goods
or by some other circumstance in carrying its
prima
facie
geographic
signification and that for that reason it may be held to be adapted
to distinguish the applicants goods. Where that is
so it is because
to an honest competitor the idea of using that name in relation of
such goods or such circumstances would simply
not occur ... This is
the case for example where the word is applied to relevant goods is
in effect a fancy name such as 'North
Pole' in connection with
bananas."
According
to Mr
Tainton
,
the significant fact which determines whether a geographical name is
in lerentiy adapted to distinguish the goods or services
of a
particular trader at a materia) time is whether other traders may
legitimately require to use the name in trade
in
respect
of such goods and services.
Fundamentally,
the point being made in this case is that Century City is, in effect,
primarily as it has developed, a significant
geographical space
within the greater Cape Town area and accordingly traders would wish
to use that name in the manner in which
I have set it out before.
Again,
to cite the
Clarke
Equipment
judgment;
"But
the probability that some competitor without any impropriety may want
to use the name of a place on his goods must ordinarily
increase in
proportion to the likelihood that goods of the relevant kind will in
fact emanate from that place... A descriptive
word is tn tike case;
the more apt the word is to describe the goods the less inherently
apt it is to distinguish them as the goods
of the particular
manufacturer.
1
'
Mr
MacWilliam
who appeared together with Ms
Joubert
on behalf of the respondent (both in the counter application and in
this application) submitted that it was important to bear in
mind
that the trademark had been correctly registered in the first place,
and that with a counter application, the onus shifted
to the
applicant to justify the basis of its counter application. The
trademark existed before the various property owners had
bought their
property. It was the very basis of the manner in which property
subsequent to the development of Century City had
been acquired and
there was no basis, on the facts of this case, to ignore a trademark
correctly registered or, to put it in the
converse, as Mr
MacWilliam
urged
upon me, there was no evidence to justify the conclusion that the
applicant had discharged the onus of showing that Century City,
as it
exists today, is primarily a geographical location.
In
this connection Mr
MacWilliam
referred to the judgment in
Mid
Sydney (Pty) Limited v Australian Tourism Co Limited and Others
[1998]
FCA 1616
and in particular to the following passage;
"In
reality Touraust's submissions about character or quality and about
the geographical reference do not represent separate
arguments: The
point of putting the matter either way is that the words "Chifley
Tower" denate a connection with the
Chifley Tower so that
others providing similar services an i having a connection with
Chifley Tower (particularly tenants of
areas within the Chifley
Tower) might properly wish to use the name in relation to their
services The evidence showed, it was
said, that the Chifley Tower
formed part of the stated or advertised address of tenants with
offices within the building and
that the building has a very large
office tower was one in which a great number of firms carried on
business of providing services
of various kinds.
We
rather doubt that
any
indication
is
to be found in the judgment of
Kitto,
J
in
Clarke
Equipment
that
he would have regarded a large privately owned office building as
analogous to a large and important industrial town or district
or to
a small town or district which is a seat of manufacture of goods of
a particular kind. To say that is not conclusively
to answer
Touraust's submission. But it does suggest that it may not be so
simple a matter as to say that as in a large town
so in a large
office building there will be found numerous traders who may wish to
describe their goods and services by reference
to their place of
business.
MID
acquired a building approaching completion, chose a name for it, at
about the same MID applied for the first of its registered
marks in
relation to property management services intending no doubt to
provide those services principally, if not exclusively,
in relation
to the building. The Chifley Tower is not part of the common
heritage in the sense that a town, suburb or municipality
is.
Chifley Plaza perhaps might answer that description but
the registered trademark does not incorporate that expression.
There is no public policy against MID treating those who have come
to occupy space within its building as to the way in which
they use
its name in connection with the goods they produce or services they
provide. That being so, it is not easy to see ....
why any separate
public policy of the kind identified by
Kitto.
J
should apply so as to deprive the name selected by MID of a capacity
to distinguish, in circumstances where there coufd be no
legitimate
reason for persons other than those carrying on businesses within
the Chifley Tower to use its name in connection
with their goods and
services".
Mr
MacWilliam also referred to a judgment of
Schwartzman,
J
in
Permont
Global Limited and Another v Warner Projects CC
(case number 05/1255) in which, in relation to a question of a
'upmarket apartment block", the name of the apartment block
could be justifiably protected by way of a trademark. As the learned
judge said;
"As
a developer of the property the respondent is in the course of
building an upmarket apartment block that it will market
and sell as
sectional title units. Once it has sold alJ the units the Respondent
will have no further involvement in the completed
development. For
purposes of the application this fact is relevant. In addition to
building apartments that will be sold as sectional
titJe units it is
common cause that the Respondent's apartment block will, in addition
to providing accommodation, provide purchasers
with concierge
services, meeting rooms a fully equipped business as a centre,
laundry services and the like that to quote the
Applicant's heads of
argument fall "within the broad penumbra of exhibition
facilities, convention facilities and services
of a personal nature
rendered to meet individual requirements' ... Moreover and in the
marketing side of the individual units
a development that includes
the other services and benefits referred to the Respondent is at the
very least engaging in providing
"merchandising services."
Mr
MacWilliam
submitted that the services were provided by the respondent could be
considered within the same category and hence the broader
development of Century City fell within the same categorisation as
Chifley Towers as set out in the judgment of
Mid
Sydney
(supra).
There
is of course powerful merit in all of these arguments and that is
the basis upon which this Court came to its conclusion.
However,
there are two questions which do require some further answers. The
first is whether this huge development, described
by the respondent
in its papers as a "prestigious address from which every
business would aim to trade", "a "250
hectare city
within a city at the heart of the greater Cape Town metropole which
combines offices with residential, retail and
leisure", now
falls within the primary category of a geographical location which
then would then not provide a justification
for the kind of
protection afforded to ft in this judgment
The
second question arises from a submission of Mr
Tainton
that when the activities of the resp-ondent are examined, could it
be said that Century City has either become a 'fancy name'
which is
necessary for the nature of the services which so provided, or, as
Mr
Tainton
submitted, does Century City not differ from Chifley Towers, because
it is owned by thousands of different parties. It thus cannot
be
equated with an apartment block, but, for all practical purposes, is
a suburb of Cape Town, part of the common heritage and
a place from
which services of the nature reflected in the certificates emanate,
from a number of traders, owning property in
Century City or their
tenants.
There
is a further issue, tangenttaliy raised in relation to the
Casablanca example but which was not
argued
before
me, albeit that it is worthy of consideration. The effect of the
judgement in
Laugh
it Off Promotions CC vs SAB Internationa
l
2005(8) 8CLR 743 (CC) may well be construed to strike the balance
between trade and protection differently from the approach
adopted
by this Court.
In
short, the question for determination is not simply about a
geographical location. It is concerned with whether geographical
locations can be so privatised as to provide, in perpetuity, the
kind of trademark protection which respondent has sought.
When
the case is viewed in this context, it takes on a more complicated
nuance. In the light of the authorities which I have set
out fairly
exhaustively, another Court may welt come to a different conclusion.
For all the reasons that I have already set out,
LEAVE
TO APPEAL IS GRANTED
to the Supreme Court of Appeal. Costs are to stand over.
DAVIS,
J