Ritz Hotel Ltd v Charles of the Ritz Ltd and Another

• Jurisdiction: South Africa
• Judge: Corbett JA, Hoexter JA, Smalberger JA, Nestadt JA and Nicholas AJA
• Judgment Date: 21 March 1988
• Citation: 1988 (3) SA 290 (A)
• Hearing Date: 22 February 1988
• Court: Appellate Division

Nicholas AJA:

The parties C

Charles of the Ritz Ltd is a company registered in the United Kingdom. It is a wholly owned subsidiary of Charles of the Ritz Group Ltd of New York, a corporation registered in the United States of America ('the US company'), which is a manufacturer and distributor internationally of cosmetics and perfumery products. It has a number of other subsidiaries D which operate in various parts of the world as well as licensees and distributors. The US company has a technical services division, whose function it is to ensure that quality of all Charles of the Ritz products wherever they are manufactured: it lays down formulae and specifications, approves the sources and quality of raw materials used E in manufacture, and approves the containers and packaging in which products are marketed.

Companies belonging to the Charles of the Ritz group use the trade marks 'Charles of the Ritz' and 'Ritz', which originated in the United States of America. These have a history extending back to 1910, when the F Ritz-Carlton Hotel opened in New York. There Charles Ritz conducted a hairdressing business in which he sold a range of cosmetic preparations on which he used the word Ritz as a trade mark. In 1919, Charles Jundt purchased Ritz's business, including the goodwill and the right to use the trade mark 'Ritz' in relation to cosmetics. Jundt was at first known to his customers as Mr Charles, but they later began to refer to him as G 'Charles of the Ritz'. In 1926 Jundt adopted 'Charles of the Ritz' as a trade mark for his cosmetic products. In 1928, there was founded Charles of the Ritz Incorporated (a predecessor of the US company), which acquired Jundt's cosmetics business, including the rights in the trade marks 'Charles of the Ritz' and 'Ritz'.

H The following trade marks are registered in the name of Charles of the Ritz Ltd in part A of the South African register of trade marks:

(1)

Trade mark registration No: 650/46

Trade mark: Charles of the Ritz

Class and goods: Class 3 (iv): 'Perfumed soap, cosmetics, dentifrices; perfumery, including toilet articles, preparations I for the teeth and hair; oils for toilet purposes'

Date of registration: 15 March 1946

Registered user: African Sales Co (Pty) Ltd (recorded on 9 March 1962);

(2)

Trade mark registration No: 491/55 J

Trade mark: Ritz

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A Class and goods: Class 3(iv): 'Creams, lotions, preparations for the skin, oils, pastes and powders, all being non-medicated toilet preparations, lipsticks, toilet rouge, cosmetic rouge boxes, eyebrow pencils, eye-black, eye-shadow, nail varnish, nail varnish removing preparations and astringent lotions for toilet purposes'

Date of registration: 18 February 1955 B

Associated with No 650/46

Registered user: African Sales Co (Pty) Ltd (recorded on 9 March 1962)

(3)

Trade mark registration No: 65/2279

Trade mark: Charles of the Ritz C

Class and goods: Class 25(iv): 'Clothing'

Date of registration: 7 June 1965

Associated with No 650/46 and No 71/0325

(4)

Trade mark registration No: 71/0325

Trade mark : Charles of the Ritz D

Class and goods: Class 26(iv): 'Wigs, toupees, false hair, hair pieces and hair tresses, all for wear'

Date of registration: 26 January 1971

Associated with No 65/2279

(5)

Trade mark registration No: 71/1336

Trade mark: Charles of the Ritz E

Class and goods: Class 3(iv): 'False eye-lashes, false finger nails, perfumes, non-medicated toilet preparations, cosmetic preparations, dentifrices, depilatory preparations, toilet articles (not included in other classes), shampoos, soaps and essential oils'

Date of Registration: 1 April 1971

Associated with No 650/46 and No 65/2279. F

The Ritz Hotel Ltd, which is a company registered in the United Kingdom, owns and operates the Ritz Hotel at 15 Place Vendóme in Paris. This is a luxury establishment with an international reputation. Its emblem is the following:

H I Since about December 1965, the Ritz Hotel Ltd has offered for sale in the 'gift shop' in the hotel in Paris goods which bear its emblem, including soap, shampoo, hair conditioner, scarves, ties, bathrobes, bedroom slippers, playing cards, stationery, food and beverages.

The gift shop consists of a long hallway which extends from the main J Place Vendóme lobby of the hotel to the rear lobby at the entrance from

Nicholas AJA

A Rue Cambon, and in which the items for sale are displayed inside glass-enclosed cases on either side. The salesperson in charge is stationed at a small desk in the middle.

The Ritz Hotel Ltd has obtained registration in South Africa of its emblem as a trade mark as follows:

1.

Trade mark registration No: 80/6893 B

Trade mark: Hotel Ritz and crest device

Class and goods: Class 25(iv): 'Ready-made clothing or clothing made-to-measure for men, women and children, knitted wear and knitted goods, lingerie, underwear, dresses, skirts, trousers, shirts, ties, scarves, belts, gloves, hats, shoes and slippers, C rain coats, socks, stockings, tights'

Date of registration: 21 October 1980

Associated with No 80/6894

2.

Trade mark registration No: 80/6894

Trade mark: Hotel Ritz and crest device D

Class and goods: Class 26(iv): 'Lace and embroidery, ribands and braid, buttons, press-buttons, hooks and eyes, pins and needles, artificial flowers'

Date of registration: 21 October 1980

There are pending two applications for registration of trade marks, E namely (i) application No 80/6882, for registration of the Hotel Ritz and crest device in class 3 in respect of:

'Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps, perfumes, perfumery, toilet waters, deodorants, essential oils, beauty preparations, costmetics, creams, powders, make-up, toilet-milks, F lotions, toilet-soaps, shampoos, toothpastes, bath salts, bath oils';

and (ii) application No 84/6465, for the registration of the trade mark 'Ritz' in class 25(iv) in respect of

'Articles of clothing including boots, shoes and slippers; parts and accessories for all the aforegoing.'

G Application No 80/6882 is being opposed by Charles of the Ritz Ltd on two grounds: (a) that the applicant has not used and does not intend to use the trade mark 'Hotel Ritz' and crest device in relation to all the goods in respect of which registration is sought; and (b) that the applicant's mark so nearly resembles the opponent's registered trade H marks Nos 650/46, 491/55 and 71/1336 that use of such mark in relation to the goods in respect of which registration is sought, and use of the opponent's marks in relation to the goods in respect of which the latter marks are registered, will be likely to deceive or cause confusion.

The Application to the Transvaal Provincial Division

I Alleging that it was a person aggrieved by the registrations in the name of Charles of the Ritz Ltd, the Ritz Hotel Ltd made an application to the Transvaal Provincial Division of the Supreme Court for an order authorizing and directing the Registrar of Trade Marks to expunge and/or remove from the register of trade marks all of those trade mark J registrations. This relief was claimed

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(a)

A in terms of s 36(1)(b) of the Trade Marks Act 62 of 1963 ('the Act') on the ground that up to a date one month before the application a continuous period of five years or longer elapsed during which the trade mark was a registered mark and during which there was no bona fide use thereof in respect of any of B the goods in respect of which it was registered; and

(b)

in terms of s 33(1), on the ground that the respective entries made in the register were entries wrongly remaining on the register, inasmuch as the use of them offended against the provisions of s 16(1) in that such use would be likely to deceive or cause confusion. C

Charles of the Ritz Ltd opposed the application both on the ground that the Ritz Hotel Ltd was not a 'person aggrieved' and on the merits.

The application was heard by MacArthur J, who held that the Ritz Hotel Ltd was a person aggrieved in respect of all five registrations; that in relation to marks 650/46, 491/55 and 71/1336 (which will be referred to collectively as 'the class 3 marks') these had been in use by Charles of D the Ritz Ltd during the relevant period; that marks Nos 65/2279 and 71/0325 had not at any time been used in South Africa in relation to goods in respect of which they were registered; and that it had not been shown that the use of the class 3 marks was likely to deceive or cause confusion. The learned Judge accordingly granted an order authorizing E and directing the Registrar of Trade Marks to expunge and/or remove from the register of trade marks registration No 65/2279 'Charles of the Ritz' in class 25(iv), and No 71/0325 'Charles of the Ritz' in class 26(iv), but made no order in regard to the class 3 marks. He considered that in the final result both parties had achieved substantial success and accordingly made no order as to costs.

F With the leave of the Court a quo, the Ritz Hotel Ltd now appeals to this Court against the failure of the Court a quo to order the expungement of the class 3 marks, and against the order relating to costs; and Charles of the Ritz Ltd cross-appeals against the part of the judgment ordering the expungement of trade marks Nos 65/2279 and 71/0325.

G (In what follows I shall be referring to the Hotel Ritz Ltd as 'the appellant', and to Charles of the Ritz Ltd as 'the respondent'.)

'Person aggrieved '

In an application to rectify the register, whether under s 33(1) or under s 36(1) of the Act, it is a prerequisite that the applicant should H be a 'person aggrieved'. The question here is merely one of locus standi, and it must be approached on the assumption...