Century City Property Owners' Association v Century City Apartments Property Service CC

• Jurisdiction: South Africa
• Judge: Davis J
• Judgment Date: 26 November 2008
• Docket Number: 17225/2007
• Court: Cape Provincial Division
• Hearing Date: 03 November 2008
• Citation: 2008 JDR 1420 (C)

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.

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[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

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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

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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

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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.

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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

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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

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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.

…."

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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...