First National Bank of SA Ltd v Barclays Bank plc and another
[2003] 2 All SA 1 (SCA)
Division:
Supreme Court of Appeal
Date:
14 March 2003
Case No:
118/02
Before:
Harms, Zulman, Conradie JJA, Jones and Shongwe AJJA
Sourced by:
PR.Cronje
Summarised by:
J.Tyrrell
Parallel Citation:
2003 (4) SA 337 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
[1] Trademarks Laudatory words Not automatically precluded from registration Test is whether words are inherently
distinctive or have become distinctive through use.
[2] Trademarks Registration Distinctive "Premier" or "premier package" Capable of becoming distinctive through
use Reasonably required for use in trade Not capable of registration.
Editor's Summary
The Appellant had been unsuccessful in applying to register the trademarks "Premier" in relation to cheques, and
"Premier Package" in relation to banking and credit card services. The First Respondent, a British bank with which
the Appellant had close ties, had opposed the application.
The Appellant had sought registration of the marks in part A of the register (trademarks consisting of distinctive
marks) alternatively, in part B (marks which are capable of becoming registrable in part A through use).
The First Respondent opposed registration of the trademarks on the grounds that
(i) the marks in issue consisted of laudatory and descriptive words (here the First Respondent relied on In
re Joseph Crosfield and Sons 1909 RPC 837);
(ii) the marks were not "distinctive" within the meaning of sections 10(1) and 12 of the Act; and
(iii) the marks were reasonably required for use in the trade and therefore could not be registered, in terms
of section 10(1A) of the Act.
Held The applications fell to be dealt with under the Trade Marks Act 62 of 1963, as they predated commencement
of the 1993 Act.
Notwithstanding the Joseph Crosfield case (supra), the fact that a word used was laudatory did not prevent its
registration as a trademark (Joshua Gibson v Bacon 1927 TPD 207 followed). The issue was whether the laudatory
words had become distinctive.
The Court considered whether the marks were inherently distinctive as at the date of application for registration.
In the present matter the words performed a purely descriptive or adjectival function, and the Appellant intended to
use them primarily for this purpose. The words were therefore not inherently distinctive and therefore not capable
of registration in part A of the register.
Turning to consider whether the words had, through use, become distinctive, the Court held that it could not rely
on an affidavit sworn by a director of Standard Bank. The affidavit had been sworn five years after the application
date and did not purport to deal with matters as they stood at the date of application.
Page 2 of [2003] 2 All SA 1 (SCA)
Nor was the affidavit couched in the language of a statement of fact but rather of belief and opinion. Evidence
regarding the number of premier accounts held, as well as advertising material related thereto, could also not be
relied upon. This evidence also concerned the present circumstances and not the position at the material time (that
is, the application date).
The word "premier" could become distinctive through use (Premier Luggage and Bags Ltd v The Premier Co (UK) Ltd
[2002] EWCA Civ 387 followed). Therefore, the marks could be registered in part B of the register unless they were
reasonably required for use in the trade. This enquiry concerned a value judgment. The Court considered whether
another bank could reasonably seek to identify its premier financial product through use of the word "premier" and
concluded that this would be reasonable. The words were therefore reasonably required for use in the trade and
the marks could not be registered as a result.
Appeal dismissed with costs.
Notes
For Trade marks see LAWSA Reissue (vol 29), paras 1306)