First National Bank of Southern Africa Ltd v Barclays Bank plc and Another

• Jurisdiction: South Africa
• Judge: Harms JA, Zulman JA, Conradie JA, Jones AJA and Shongwe AJA
• Judgment Date: 03 March 2003
• Citation: 2003 (4) SA 337 (SCA)
• Hearing Date: 28 February 2003
• Docket Number: 118/2002
• Counsel: C E Puckrin SC (with him J N Cullabine) for the appellant. P Ginsburg SC (with him R Michau) for the respondent.
• Court: Supreme Court of Appeal

Harms JA:

[1] This appeal concerns applications by the appellant, First National Bank of Southern Africa Ltd (FNB), for the registration of the trade marks 'Premier' and 'Premier Package' in relation to cheques I and banking and credit card services. The respondent (Barclays), a British bank, opposed the applications. Eloff J, who had been appointed in terms of s 6(3) of the Trade Marks Act 194 of 1993 to perform the function of the Registrar to decide opposition proceedings, refused the J

Harms JA

applications for registration. An appeal to the Full Court [1] was dismissed and the present appeal is A an appeal of right. [2]

[2] The applications for registration predate the commencement of the 1993 Act and have to be disposed of under the provisions of the repealed Trade Marks Act 62 of 1963. [3] All further references in this judgment to 'the Act' will thus be references to the 1963 Act. B

[3] We have been informed that, whilst the appeal was pending, FNB applied to and obtained from the Registrar amendments to the scope of the goods and services to its applications. What those amounted to, we were not told. It is difficult to see on what basis the Registrar could have amended the applications whilst they were subject of an appeal. Rights of parties are usually frozen upon litis C contestatio. Since it was not argued it is not necessary to decide whether the procedure was valid; nevertheless, its propriety has to be questioned.

[4] It serves no purpose to give the detail of the applications in their original form because we have been requested to deal with them on a more restricted basis. FNB wishes this Court to uphold the appeal D and order the Registrar to register the following trade marks, [4] all applied for on 29 March 1995:

(a)

'Premier Package' in part B of the register, in class 36: in relation to banking and credit card services (B95/3928). E

(b)

'Premier' in part A, in class 16 in relation to cheques (95/3931); in class 36 in relation to banking and credit card services (95/3932); and, in class 42, in relation to marketing and merchandising services in relation to banking and credit cards (95/3933). In the alternative, the submission was that these applications should be allowed in part B. F

[5] FNB, originally known as Barclays National Bank, has historically close links with Barclays. These were severed during the period of disinvestment during the 1980s. Barclays National Bank at the time owned registered trade marks in classes 16 and 36 for 'Barclays Premier Card' and, in translation, 'Barclays Premier Kaart'. These G it undertook to assign to Barclays or instead at its own option cancel them. Barclays, in turn, was the proprietor of a registered trade mark 'Premier Barclays Cheque' but whether it was a word or a device mark, the papers do not state. In any event, FNB somewhat later sought to register a device mark consisting of the words 'Premier Cheque', which the Registrar thought was too close for comfort to the 'Premier H Barclays Cheque' mark. Confronted by the fact that its mark was vulnerable due to non-use,

Harms JA

Barclays consented to the cancellation of this registration and FNB exercised its option of cancelling the A 'Barclays Premier Card' trade marks.

[6] These otherwise irrelevant facts have been recited in order to dispose summarily of a point first raised on appeal by FNB, namely that Barclays is estopped, in the light of them, from opposing FNB's applications for registration of the marks now under consideration. B Apart from the requirement that estoppel must be raised in pleadings or application papers, something FNB did not do, the representation relied upon was at best that Barclays believed that the device mark was a valid trade mark. That representation has nothing to do with the validity of the word mark 'Premier'. Even if Barclays represented to C FNB at the time that it thought that the word mark would be registrable, there is no indication that FNB applied for registration because of the representation. In other words, FNB did not act to its detriment in reliance upon the representation. There is another point and that is whether estoppel could at all be invoked where the purity D of the register or public interest is involved, a point to which scant attention was given and which should not be decided in the absence of full argument. [5]

[7] Barclays based its opposition to the registration of the marks in issue on three grounds, namely that the word 'Premier' is laudatory and descriptive; that it is not 'distinctive' within the E meaning of s 10(1) and 12; and that the mark is reasonably required for use in the trade (s 10(1A)). The mark is said to be laudatory because the word 'premier', a corruption of the Latin 'primarius' blamed on the French, in its adjectival sense means (if I may be forgiven for stating the obvious) 'best or most important', 'first in importance, size or quality'. [6] F

[8] The Act provides for registration of trade marks in either part A (s 10) or part B (s 11) of the register. In order to qualify for registration in part A, the trade mark must contain or consist of a distinctive mark, meaning that it must be distinctive at the date of application. For registration in part B, the requirement is that the mark is capable, through use, of becoming registrable in G part A, meaning that it must be capable of becoming, through use, distinctive. 'Distinctive' is defined to mean

'adapted, in relation to the goods or services . . . to distinguish goods or services with which the proprietor . . . is or may be connected in the course of trade . . . from goods or services in the case of which no such connection subsists . . .'. H

(Section 12(1).) In determining whether a trade mark is distinctive in this sense, regard may be had to the extent to which it is inherently adapted to distinguish as well as to the extent to which, by reason of use or any other circumstance, it is or has become adapted to distinguish (s 12(2)). I

Harms JA

[9] Nothing in the Act prohibits the registration of 'laudatory epithets' but since Cozens-Hardy MR (Joseph Crosfield & Sons A Ltd's Application) [7] famously derided

'(w)ealthy traders [who] are habitually eager to enclose part of the great common English language and to exclude the general public of the present day and of the future from access to the enclosure'

and held that B

'an ordinary laudatory epithet ought to be open to the world, and is not, in my opinion, capable of being registered',

what at best may be a rule of thumb, is regarded by some as a rule of law. One can rightly question whether this is not a C

'further instance in this context of wrongly elevating into a general proposition of law observations made by Judges in their application of the law to the facts of the cases before them'. [8]

The suggestion that the registration of a trade mark excludes the public from using it is in any event hyperbolic. D

[10] Intellectual property laws and principles are not locked in a time capsule or a straightjacket and judicial...