[4] It serves no purpose to give the detail of the applications in their original form because we have been
requested to deal with them on a more restricted basis. FNB wishes this Court to uphold the appeal and order
the Registrar to register the following trade marks,4 all applied for on 29 March 1995:
(a) "Premier Package" in part B of the register, in class 36: in relation to banking and credit card services
(B95/3928).
(b) "Premier" in part A, in class 16 in relation to cheques (95/3931); in class 36 in relation to banking and
credit card services (95/3932); and, in class 42, in relation to marketing and merchandising services in
relation to banking and credit cards (95/3933). In the alternative, the submission was that these
applications should be allowed in part B.
[5] FNB, originally known as Barclays National Bank, has historically close links with Barclays. These were severed
during the period of disinvestment during the 1980's. Barclays National Bank at the time owned registered
trade marks in classes 16 and 36 for "Barclays Premier Card" and, in translation, "Barclays Premier Kaart".
These it undertook to assign to Barclays or instead at its own option cancel them. Barclays, in turn, was the
Page 4 of [2003] 2 All SA 1 (SCA)
proprietor of a registered trade mark "Premier Barclays Cheque" but whether it was a word or a device mark,
the papers do not state. In any event, FNB somewhat later sought to register a device mark consisting of the
words "Premier Cheque", which the Registrar thought was too close for comfort to the "Premier Barclays
Cheque" mark. Confronted by the fact that its mark was vulnerable due to nonuse,
View Parallel Citation
Barclays consented to the cancellation of this registration and FNB exercised its option of cancelling the
"Barclays Premier Card" trade marks.
[6] These otherwise irrelevant facts have been recited in order to dispose summarily of a point first raised on
appeal by FNB, namely that Barclays is estopped, in the light of them, to oppose FNB's applications for
registration of the marks now under consideration. Apart from the requirement that estoppel must be raised
in pleadings or application papers, something FNB did not do, the representation relied upon was at best that
Barclays believed that the device mark was a valid trade mark. That representation has nothing to do with the
validity of the word mark "Premier". Even if Barclays represented to FNB at the time that it thought that the
word mark would be registrable, there is no indication that FNB applied for registration because of the
representation. In other words, FNB did not act to its detriment in reliance upon the representation. There is
another point and that is whether estoppel could at all be invoked where the purity of the register or public
interest is involved, a point to which scant attention was given and which should not be decided in the
absence of full argument.5
[7] Barclays based its opposition to the registration of the marks in issue on three grounds, namely that the word
"Premier" is laudatory and descriptive; that it is not "distinctive" within the meaning of sections 10(1) and 12;
and that the mark is reasonably required for use in the trade (section 10 (1A)). The mark is said to be
laudatory because the word "premier", a corruption of the Latin "primarius" blamed on the French, in its
adjectival sense means (if I may be forgiven for stating the obvious) "best or most important", "first in
importance, size or quality".6
[8] The Act provides for registration of trade marks in either part A (section 10) or part B (section 11) of the
register. In order to qualify for registration in part A, the trade mark must contain or consist of a distinctive
mark, meaning that it must be distinctive at the date of application. For registration in part B, the requirement
is that the mark is capable, through use, of becoming registrable in part A, meaning that it must be capable of
becoming, through use, distinctive. "Distinctive" is 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 . . ."
(Section 12(1)). In determining whether a trade mark is distinctive in this sense, regard may be had to the
extent to which it is inherently adapted to distinguish as well as to the extent to which, by reason of use or
any other circumstance, it is or has become adapted to distinguish (section 12(2)).
Page 5 of [2003] 2 All SA 1 (SCA)
View Parallel Citation
[9] Nothing in the Act prohibits the registration of "laudatory epithets" but since CozensHardy MR (In the matter
of an Application by Joseph Crosfield and Sons Ld)7 famously derided
"[w]ealthy traders [who] are habitually eager to enclose part of the great common English language and to
exclude the general public of the present day and of the future from access to the enclosure"
and held that
"an ordinary laudatory epithet ought to be open to the world, and is not, in my opinion, capable of being
registered",
what at best may be a rule of thumb is regarded by some as a rule of law. One can rightly question whether