From Century City to Sandton City: Aspects of geographical trade marks

• Pages: 1-12
• Published date: 22 January 2021
• Citation: (2020) IPLJ 1
• Date: 22 January 2021
• Author: Alberts, W.

FROM CENTURY CITY TO SANDTON

CITY: ASPECTS OF GEOGRAPHICAL

TRADE MARKS



Professor of Mercant ile Law, University of Johannesburg

ABST RACT

A name that is a geog raphical design ation may at times a cquire a second ary meani ng,

indicating t he origin of goods or s ervices. With r egard to retail se rvices it is well-

established , in South Afr ica and Europe that t hey qualify for p rotection – the ess ence

being the bri nging together, for the sake of conve nience goods for purchas e by the public.

However, a particula r problem has aris en in relation to shop ping complexes. Whi lst

European, but a lso British, law ha s protected such m arks, they have also c ome under

attack. Th e basis for the latter, in brief, is th at the names of the complexes have become

               

protection was no t granted to the mark ca nary wharf, as it , amongst others, was the n ame

of a political ward. The ma rks in other words no longer f unction as tr ade marks. This is sue

came to a head in t he judgment in the Centur y City case. In this matte r the trade marks

of a retail establ ishment were attacked on the g round that they have come to relat e more

to a place name tha n a trade mark. Havin g regard to the need for tenant s to describe their

businesses wh ilst using the na me, the principa l marks were expu nged. In applying t he

case to developments s uch as Sandton City, possible discer ning factors are investigat ed.

One might be single ow nership of the complex. An other interesti ng question is the impac t

of the situation whe re there is a pre-exist ing suburb, with the same n ame as the complex,

versus where the c omplex is built later on.

KEYWORDS: Trade mar k; Centur y City; Sandton City; ge ographical li mitations;

shopping complexes; Can ary Wharf; ret ail services; tena nt trade mark use

  

Geographical tra de marks are all arou nd us, but they are not always

recognised as such. Nor mally, a geographical description could be only, like

the Namib, describing a des ert. However, like another desert, t he Kalahari, it

eventually can acqui re a secondary meaning (an online book store), denoting

more than merely a geographical con notation/label. Geog raphical marks can

be discerned in va rious industr ies: overseas marks such as Amaz on, Seattle

Coffee Co, the BBC or Kentucky Fried Chicken; and local ma rks such as

Cape Town Fish Market, South African Air ways, Cape Times or Boston

BBQ. These marks are used in a di ffused man ner, along with other shops,

whereas the focus herein is on shoppi ng complexes that have a ‘one-off’

stand-alone trade for mat. While geograph ical marks in general have always

tended to be controversial, mar ks for shopping malls, due to their sui generis

nature, seem to i ntroduce an added edge. First , the position in the United

  

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SA PLJ 2020 indb 1 2020/12/01 5 09 PM

(2020) IPLJ 1

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