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

• Jurisdiction: South Africa
• Citation: 2003 (4) SA 337 (SCA)

First National Bank of Southern Africa Ltd v Barclays Bank plc and Another
2003 (4) SA 337 (SCA)

2003 (4) SA p337

Citation	2003 (4) SA 337 (SCA)
Case No	118/2002
Court	Supreme Court of Appeal
Judge	Harms JA, Zulman JA, Conradie JA, Jones AJA and Shongwe AJA
Heard	February 28, 2003
Judgment	March 3, 2003
Counsel	C E Puckrin SC (with him J N Cullabine) for the appellant.; P Ginsburg SC (with him R Michau) for the respondent.

Flynote : Sleutelwoorde B

Intellectual property — Trade mark — Registrability of mark — Whether mark capable of distinguishing — Words 'Premier' and 'Premier Package' — Bank wishing to register mark in relation to cheques, and banking and credit card services — Words, though laudatory and descriptive and thus not inherently distinctive, having become distinctive through C use — However, mark reasonably required for use in trade — Mark not registrable in terms of s 10(1A) of Trade Marks Act 62 of 1963.

Intellectual property — Trade mark — Resgistrability of mark — Whether mark reasonably required for use in trade — Trade Marks Act 62 of 1963, s 10(1A) — Question objective one with emphasis on 'reasonable' — Some earlier cases having overstepped D reasonable bounds in deciding that mark deserving of s 10(1A) protection.

Intellectual property — Trade mark — Registrability of mark — Whether mark capable of distinguishing — Laudatory epithets — May acquire distinctiveness by use — Courts should not be quick to conclude that use, however substantial, having displaced common meaning and come to denote E mark of particular trader — Unease about distinctiveness of laudatory epithets having result that most such cases dealt with under provisions prohibiting registration of marks reasonably required for use in trade — Trade Marks Act 62 of 1963, ss 10(1A) and 11. F

Headnote : Kopnota

The appellant commercial bank's application for the registration of the trade marks 'Premier' and 'Premier Package' in relation to cheques and banking and credit card services was refused by the Registrar. The application was opposed by the respondent, a British bank. The appellant's appeal to a Full Bench was dismissed, and the appellant launched the present appeal to the Supreme Court of Appeal. G The application for registration predated the 1993 Trade Marks Act and accordingly fell to be disposed of under the repealed Trade Marks Act 62 of 1963 (the Act). The respondent based its opposition to the registration of the appellant's marks on three grounds, namely that the word 'Premier' was laudatory and descriptive; that it was not 'distinctive' within the meaning of s 10(1) and 12 of the Act; and that it was reasonably required for use in trade as intended in H s 10(1A). The Act provided for registration either in part A (s 10) or part B (s 11) of the register. In order to qualify for registration in part A, the mark had to contain or consist of a distinctive mark (as at the date of the application). For registration in part B, the mark had to be capable, through use, of becoming registrable in part A, meaning that it had to be capable of becoming distinctive I through use. 'Distinctive' was 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 . . . ' (s 12(1)). Distinctive marks were either inherently adapted to distinguish or could become adapted to distinguish by use (s 12(2)). J

2003 (4) SA p338

Nothing in the Act prohibited the registration of 'laudatory epithets' but it was held in Joseph A Crosfield and Sons Ltd's Application (1909) 26 RPC 837 (CA) that 'an ordinary laudatory epithet ought to be open to the world, and is not . . . capable of being registered'. In Joshua Gibson Ltd v Bacon 1927 TPD 207 a South African Court held that laudatory and for that matter descriptive words could acquire distinctiveness by use. On appeal,

Held, that epithets, laudatory or otherwise, were by definition adjectives while a trade mark, or at least a word mark, B being a name given by a particular concern to its goods or services, was generally not, though this did not mean that they could not be used adjectivally. The point was rather that it would be difficult to distinguish between, for example, 'perfect soap' and 'Perfect soap', whereas there would be no need to distinguish between 'perfection soap' and 'Perfection soap', and consequently 'Perfection' could be a perfectly good trade mark. (Paragraph [11] C at 344A - B/C.)

Held, further, that it was probably because of an underlying unease about laudatory epithets that most cases that referred to the dictum in the Crosfield case were decided under s 10(1)(a) or similar provisions by deciding that it was a 'mark which [was] reasonably required for use in the trade' and thus barred from registration. (Paragraph [12] at 344C - D.) D

Held, further, that the mark 'Premier' was not inherently distinctive as at the date of application, and could thus not be registered in Part A of the register. In 'premier cheque account', 'premier credit card service' or 'premier banking service' the intended trade mark performed a purely descriptive or adjectival function, and that was how the appellant had used or intended to use E it. (Paragraph [13] at 344D/E - 345A.)

Held, further, as to whether the mark had at the date of application become distinctive by reason of prior use, and for that reason entitled it to registration in Part A, that the mark had been used mostly, if not invariably, in connection with the appellant's obvious trade marks and as an adjective. It was also to distinguish the F appellant's services from one another: prime clients got the Premier product, others not. In this context it was remarked in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (Ch) at 302 that 'a common laudatory word is naturally capable of application to the goods of any trader' and that one had to be 'careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular G trader'. Accordingly, the appellant was not entitled to registration in Part A. (Paragraph [15] at 346C - H.)

Held, further, as to whether the mark was registerable in Part B, that the correct approach was the one in Premier Luggage and Bags Ltd v The Premier Co (UK) Ltd [2002] EWCA (Civ) 387, where it was held that the word 'Premier' 'could become distinctive H of origin as a result of use in relation to particular goods or services'. The appellant was consequently entitled to part B registration unless the mark was hit by the prohibition in s 10(1A) on the ground that it was reasonably required for use in the trade. (Paragraphs [17] - [18] at 347D - H.) I

Held, further, that in order to answer that question one had to enquire whether it would be reasonable for another bank to call its premier financial product 'Bank X premier cheque account' or even its 'premier financial product'. Confusion did not seem probable but, if 'Premier' was registered, Bank X's use could be infringing. The question was an objective one with the emphasis on 'reasonable'. (Paragraph [18] at 347I - 348A.) J

2003 (4) SA p339

Held, that all things considered, including those cases which had overstepped the mark in affording protection under s 10(1A) A or similar provisions, that the marks sought to be registered indeed fell foul of s 10(1A). (Paragraph [19] at 348C/D.) Appeal dismissed.

The decision in the Transvaal Provincial Division in First National Bank Ltd v Barclays Bank plc and Another confirmed.

Cases Considered

Annotations

Reported cases B

Beecham Group plc and Another v Triomed (Pty) Ltd [2002] 4 B All SA 193 (SCA): referred to

British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281: dictum at 302 applied C

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another 2000 (2) SA 771 (SCA): dictum in para [8] explained

Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) ([2001] 4 B All SA 242): dictum in para [5] applied

Distillers Corporation (SA) Ltd v SA Breweries Ltd and Another; Oude Meester Groep Bpk and Another v SA Breweries Ltd 1976 (3) SA 514 (A): dictum at 552H - 553C applied D

Eastern Cape Provincial Government and Others v Contractprops 25 (Pty) Ltd 2001 (4) SA 142 (SCA) ([2001] 4 B All SA 273): dictum in para [11] applied

Gerber Foods International v Gerber Products Co [2002] EWCA Civ 1888 (CA): referred to E

ITT Continental Baking Co v Registrar of Trade Marks 1980 (2) SA 127 (T): dictum at 129H applied

Joseph Crosfield & Sons Ltd's Application (1909) 26 RPC 837 (CA): dictum at 854 - 6 criticised

Joshua Gibson Ltd v Bacon 1927 TPD 207: applied

Pleasure Foods (Pty) Ltd v TMI Foods CC t/a Mega Burger and Another 2000 (4) SA 181 (T): dictum at 189I - J applied F

Premier Luggage & Bags Ltd v Premier Co (UK) Ltd [2002] EWCA Civ 387: approved and applied

Premier Motor Co (Birmingham) Ltd v Premier Driving School (Birmingham) Ltd [1962] RPC 222: distinguished

Standard Bank of South Africa Ltd v United Bank Ltd and Another 1991 (4) SA 780 (T): compared G

Trust Bank van Afrika Bpk v Eksteen 1963 (3) SA 402 (A): dictum at 411H - 412B applied.

Statutes Considered

Statutes

The Trade Marks Act 62 of 1963, s 10(1A), 11, 12: see Juta's Statutes of South Africa 1993 vol 2 at 2-148. H

Case Information

Appeal from a decision of a Full Bench of the Transvaal Provincial Division (Spoelstra J, Daniels J and Van der Westhuizen J). The facts appear from the judgment of Harms JA.

C E Puckrin SC (with him J N Cullabine) for the appellant.

P Ginsburg SC (with him R Michau) for the respondent. I

In addition to the authorities cited...