Lubbe NO and Others v Millennium Style (Pty) Ltd and Others; Lubbe and Others NNO v Millennium Style (Pty) Ltd

• Jurisdiction: South Africa
• Citation: 2007 (6) SA 241 (SCA)

Lubbe NO and Others v Millennium Style (Pty) Ltd and Others;
Lubbe and Others NNO v Millennium Style (Pty) Ltd
2007 (6) SA 241 (SCA)

2007 (6) SA p241

Citation	2007 (6) SA 241 (SCA)
Case No	69/06
Court	Supreme Court of Appeal
Judge	Harms ADP, Brand JA, Cloete JA, Ponnan JA and Cachalia JA
Heard	February 23, 2007
Judgment	March 16, 2007
Counsel	A R Sholto-Douglas SC (with P B J Farlam) for the appellants; G E Morley SC (with A M Annandale) for the respondents

Flynote : Sleutelwoorde B

Intellectual property — Trade mark — Expungement of — Application for removal of trade mark from register — Trade Marks Act 194 C of 1993, s 24(1) — Locus standi — 'Interested person' — Who is — Determined at time of litis contestatio — Person in trade area covered by impugned trade mark in principle being interested party since having interest in register clear of objectionable registrations — Once party having legal standing, other party not able to destroy such standing — Applicant's choice no longer to rely on respondent's infringement of mark not D depriving respondent of standing as 'interested person'.

Intellectual property — Trade mark — Register — Purpose of — Court condemning practice of registering marks in order to stifle competition, rather than for statutory purpose. E

Intellectual property — Trade mark — Registrability of — Application not to be granted merely because not opposed or something similar not already on register.

Intellectual property — Trade mark — Registrability of — 'Distinctiveness' as criterion for registration or remaining on register — Whether mark distinctive — Whether indicating source of origin — Pattern or shape of shoe F sole — Typically regarded by purchaser as either ornamental or as part of design of shoe tread and seldom considered as source identifier — Shapes not registrable under Trade Marks Act 62 of 1963 — Calling shape 'device' not obviating exclusion — Design of sole not registrable — Mark liable to be expunged. G

Headnote : Kopnota

The trade mark register (the register) should not be used to stifle competition. The fact that there is no opposition to an application for registration or that there is not already something similar on the register does not mean that the application should proceed to grant. (Paragraphs [2] - [3] at 243I - 244A.)

Although devices, shapes and configurations are registrable under the Trade Marks Act 194 of 1993 (the Act), they need to be distinctive in H the trade mark sense, namely to indicate source of origin. Typically the pattern or shape of a shoe sole would be regarded by the purchaser as either ornamental or as part of the design of the shoe tread and it is seldom that it will be considered to be a source identifier. (Paragraph [9] at 245F - G.)

The question of whether a party is an 'interested person' entitled to apply for rectification of the register under s 24 of the Act is I determined at the time of litis contestatio and, once a party has legal standing, the other party cannot by its action destroy the first-mentioned party's standing. A person in the trade area covered by the impugned trade mark is in principle an interested party because such a person has an interest in having the register clear of objectionable registrations. (Paragraph [10] at 246B - D.) Appeal dismissed J

2007 (6) SA p242

Cases Considered

Annotations

Reported cases

Southern African cases

Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others 2006 (4) SA 275 (SCA) ([2006] 4 All SA 215): dicta in paras [8] - [9] and [14] applied B

Mars Inc v Candy World (Pty) Ltd 1991 (1) SA 567 (A): applied

Ritz Hotel Ltd v Charles of the Ritz Ltd and Another 1988 (3) SA 290 (A): applied

Weber-Stephen Products Co v Registrar of Trade Marks 1994 (3) SA 611 (T): dictum at 615G - I applied. C

Unreported cases

Foreign cases

Adidas-Salomon AG, formerly Adidas AG, Adidas Benelux BV v Fitnessworld Trading Ltd Case C-408/01 (ECJ) (23 October 2003): applied D

Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876 (30 June 2000): applied.

Statutes Considered

Statutes E

The Trade Marks Act 62 of 1963: see Juta's Statutes of South Africa 1994 vol 2 at 2-180

The Trade Marks Act 194 of 1993, s 24: see Juta's Statutes of South Africa 2006/7 vol 2 at 2-218.

Case Information

Appeal from a decision in the Natal Provincial Division (Msimang J) dismissing an application for an interdict based on trade F mark infringement and the grant of a counter-application to expunge those marks. The facts appear from the judgment of Harms ADP (the remainder of the Court concurring).

A R Sholto-Douglas SC (with P B J Farlam) for the appellants.

G E Morley SC (with A M Annandale) for the respondents. G

In addition to the authorities cited by the Court, counsel for the parties referred to the following:

adidas Sportschuhfabriken Adi Dassler Kg v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530 (T) H

Adidas Aktiengesellschaft and Another v Woolworths (Pty) Ltd 1999 BIP 431 (C)

Arsenal Football Club plc v Reed [2001] RPC [No 25]

Arsenal Football Club plc v Reed [2003] RPC [No 39] 696 (CA)

Arsenal Football Club plc v Reed (No 2) [2003] 1 All ER 137 (ChD) I

BALI Trade Mark [1969] RPC [No 14] 472 (HL) at 499 - 500

Beecham Group plc and Another v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another 2000 (2)...