Century City Apartments Property Services CC and Another v Century City Property Owners' Association

• Jurisdiction: South Africa
• Citation: 2010 (3) SA 1 (SCA)

Century City Apartments Property Services CC and Another v Century City Property Owners' Association
2010 (3) SA 1 (SCA)

2010 (3) SA p1

Citation	2010 (3) SA 1 (SCA)
Case No	57/09
Court	Supreme Court of Appeal
Judge	Harms DP, Lewis JA, Mhlantla JA, Hurt AJA and Wallis AJA
Heard	November 6, 2009
Judgment	November 27, 2009
Counsel	RW Tainton followed by S Laing (attorney) for the appellants.; RWF MacWilliam SC (with I Joubert) for the respondent.

Flynote : Sleutelwoorde B

Intellectual property — Trademark — Expungement - Mark serving in trade to designate geographical origin of goods or services — Trademarks relating C to name of commercial and residential development — Development so large and well known that having become geographical location and place name — Name might be used by other persons to designate geographical origin of their services — Trademarks to be removed from register — Trade Marks Act 194 of 1993, s 10(2)(b). D

Headnote : Kopnota

Century City Property Owners' Association (the Association) held several trademarks related to the name 'Century City'. The Association's aim was to protect the interests of stake-holders in the large commercial and residential development of the same name. The Association approached the High Court where it alleged that Century City Apartments Property E Services CC (the Letting Agency) was infringing its Century City trademarks and was also guilty of passing-off. The Letting Agency brought a counter-application in which it sought the removal of the Century City trademarks from the trademark register on the grounds that: Century City was a place name not capable of distinguishing the goods or services of one person; and that the name served to designate the geographical origin of goods or services. F

The High Court found that the Letting Agency had infringed the trademarks and that its usage of the name was likely to cause deception or confusion among the public. The High Court therefore dismissed the counter-application and interdicted the Letting Agency from: infringing the Century City trademarks; from passing off its business as being, or being associated with, G

2010 (3) SA p2

A the Association; and from using the name Century City in its name, website or trading style. On appeal to the Supreme Court of Appeal,

The counter-application — geographical origin

The Letting Agency's counter-application for the expungement of the Association's registrations relied on s 10(2)(b) of the Trade Marks Act 194 of 1993. B The section provided that a mark may not be registered, and a registered trademark is liable to be removed from the register, if it consists exclusively of a sign or an indication which may serve, in trade, to designate the geographical origin of the services. The factual basis of the argument was that Century City had become a geographical location that designated the geographical origin of services. (Paragraph [19] at 9G - 10A.)

C Held, that geographical names ought to remain available as indications of the geographical origin of the category of relevant goods or services. (Paragraph [29] at 13B - C.)

Held, further, that the provision on geographical names served a public interest, permitting all to use such descriptive signs freely, by preventing them from D being reserved to one undertaking alone because they have been registered as trademarks. (Paragraph [31] at 13E.)

Century City was a huge commercial and residential development, a city within a city, and had become an important landmark. The development had its own post office; public signs directed the public to Century City; and there was a Century City Service Station. Diners and restaurateurs would E describe a restaurant with reference to its location there. (Paragraphs [37], [38] and [40] at 15E - H and 16B - C.)

Held, accordingly, that Century City had become the name of a geographical location. The court found that the name may serve, in trade, to designate the geographical origin of services for various classes of registrations. Such services included entertainment, such as cinemas and a theme park; retail F merchandising services; the providing of food and drink; estate agencies; and real-estate management. (Paragraphs [45] and [46] at 17C - F.)

Blameworthy conduct

Held, that a party could not rely on an infringement, especially its own, to establish that a trademark had lost its efficacy under this provision. G Wrongful acts by third parties cannot in general destroy rights. This truism also applied to trademark rights. (Paragraph [49] at 19C - D.)

Held, however, that on the facts of this case it could not be doubted that the Association was responsible for the fact that Century City had become a geographical location and place name. It was the necessary consequence of the nature of the development. It followed that the registrations stood to be H revoked. (Paragraph [50] at 19E - F.)

The undesirability of the CC name of the Letting Agency

Held, that, in view of the finding on the registrations, the Association did not have a vested right in the name Century City, and its claim, that the Letting Agency's use of the name was undesirable, floundered. (Paragraph [52] at 19I.) I

Held, that, in any event, the names of the two corporations described their differences: the one was a property owners' association and the other was an apartment property-services close corporation. The only similarity was that both were linked to Century City. That in itself was insufficient to justify a conclusion that the business of the one was connected with the business of J the other. (Paragraph [53] at 19J - 20A.)

2010 (3) SA p3

Passing-off A

Held, that the objections that applied to the appropriation of a geographical location as a trademark applied to passing-off too. The Association's case based on passing-off failed on the same basis. It was difficult to conceive of a protectable reputation based purely on the name of a geographical location that was inherently descriptive of the origin of the particular service. (Paragraph [54] at 20C - D.) B

Appeal upheld and certain of the Century City trademarks revoked.

Cases Considered

Annotations

Reported cases C

Southern Africa

Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd [2001] 4 All SA 235 (A): referred to

Cambridge Plan AG and Another v Moore and Others 1987 (4) SA 821 (D): referred to

Commercial Auto Glass (Pty) Ltd v Bayerische Motoren Werke Aktiengesellschaft AG D 2007 (6) SA 637 (SCA) ([2007] 4 All SA 1331): referred to

First National Bank of Southern Africa Ltd v Barclays Bank plc and Another 2003 (4) SA 337 (SCA) ([2003] 2 All SA 1): dictum in para [10] applied

Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A) ([1997] 1 All SA 327): referred to

South African Football Association v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and Another E 2003 (3) SA 313 (A) ([2003] 1 All SA 274): compared

Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd 2007 (6) SA 263 (SCA): referred to.

Foreign

Australia F

Chancellor, Masters and Scholars of the University of Oxford t/a Oxford University Press v Registrar of Trade Marks [1990] FCA 175: referred to

Mid Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616: referred to

New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 (1991 RPC 144; 18 IPR 385): referred to G

Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA): referred to

England

10 Royal Berkshire Polo Club Trade Mark [2001] RPC 643: referred to H

Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch)([2004] RPC 41): dictum in paras [24] and [25] applied

David West t/a Eastenders v Fuller Smith & Turner plc [2003] EWCA Civ 48: referred to

Dunn's Trade-marks, In re (1889) 41 ChD 439: referred to

Eastman Photographic Materials Co Ltd's Application, Re; Eastman Photographic I Materials Co v Comptroller-General of Patents, Designs and Trademarks [1898] AC 571 (HL) (15 RPC 476): referred to

GE Trade Mark BS (General Electric Co v The General Electric Co Ltd) [1973] RPC 297 (HL) ([1972] 2 All ER 507): discussed

Inter Lotto (UK) Ltd v Camelot Group plc [2003] EWCA Civ 1132: referred to J

2010 (3) SA p4

Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159 ([2004] RPC 40): dictum in para [29] applied A

Ungar v Sugg [1892] RPC 113: referred to

Yorkshire Copper Works Ltd's Application 1953 (70) RPC 1 (CA): referred to.

European Patent Courts

Bellagio LLC's Application [2006] ETMR 79: referred to B

Cervecería Modelo, SA de CV v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 2005 WL 366940: referred to

LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ETMR 83: dictum in para [50] applied

Nordmilch eG v Office for Harmonisation in the Internal Market (Trade Marks C and Designs) (OHIM) [2004] ETMR 70: dictum in paras [45] and [55] applied

Peek & Cloppenburg KG's Application [2006] ETMR 33: dictum in paras [32], [34] and [38] applied

Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots-und Segelzubehör Walter Huber and Franz Attenberger [1999] ETMR 585: dictum in D para [26] applied.

Statutes Considered

Statutes

The Trade Marks Act 194 of 1993, s 10(2)(b): see Juta's Statutes of South Africa 2008/9 vol 2 at 2-217.

Case Information

E Appeal from the Cape Provincial Division (Davis J) on the infringement of a trademark.

RW Tainton followed by S Laing (attorney) for the appellants.

RWF MacWilliam SC (with I Joubert) for the respondent.

Cur adv vult. F

Postea (November 27).

Judgment

Harms, DP:

G [1] This appeal relates in the main to trademark infringement. The present respondent, Century City Property Owners' Association, a s 21 company, is the trademark...