this is not a
"further instance in this context of wrongly elevating into a general proposition of law observations made by
judges in their application of the law to the facts of the cases before them."8
The suggestion that the registration of a trade mark excludes the public from using it is in any event
hyperbolic.
[10] Intellectual property laws and principles are not locked in a time capsule or a straightjacket and judicial
expositions should be read in context. What was the Master of the Rolls dealing with? It was an application
for the registration of the trade mark "Perfection" for soap. In England9 at the time a trade mark had to
contain or consist of certain essentials, for instance, it had to be an invented word or otherwise a word
having no direct reference to the character or quality of the goods and not, according to its ordinary
signification, a geographical name or a surname. If it was, for instance, not invented or had a direct reference
to the character or quality of the goods, even though it was distinctive, it could not be registered unless the
Board of Trade or a court, in the exercise of a discretion, allowed the application to proceed. Counsel in that
case conceded that the mark had a direct reference to the quality of the goods. In order to establish that the
mark was distinctive, reliance consequently had to be placed on extensive use of the mark. The court found
that the mark had not been used as a trade mark but only as an adjective10 in either "Perfection Soap" or
"Crosfield's Perfection Soap". Against that background and finding that the word had not acquired
distinctiveness through use the court, in the exercise of its discretion, refused to permit the application for
registration to proceed.
[11] The true scope and effect of the judgment was fully perceived by as early as 1927. In Joshua Gibson Ltd v
Bacon,11 a case decided under the then existing South African12 equivalent of the mentioned English
provision, the
Page 6 of [2003] 2 All SA 1 (SCA)
court found that laudatory and for that matter other
View Parallel Citation
descriptive words can, by use, acquire distinctiveness, albeit that it may be difficult to prove.13 Epithets,
laudatory or otherwise, are by definition adjectives because they are descriptive and a trade mark, at least a
word mark, is as a general rule not an adjective.14 It is the name given by a particular concern to its goods
or services. That does not mean that it cannot be used adjectivally. The point is rather this. Take the word
"Perfect" for soap: how does one distinguish between "perfect soap" and "Perfect soap"? But "Perfection"
does not cause the same problem: there is no need to distinguish between "perfection soap" and "Perfection
soap" and consequently "Perfection" can be a perfectly good trade mark.
[12] It is probably because of an underlying unease about the "doctrine" of laudatory epithets that most cases
that refer to the CozensHardy dictum were eventually decided under section 10(1)(a) or a similar provision,
namely that it was a "mark which is reasonably required for use in the trade".15 There is an absolute
prohibition against registering such a mark. The fact that under the 1993 Act use of a mark for certain
descriptive purposes16 may provide a defence against infringement does not affect the prohibition.
[13] After that perambulation I turn to the first stage of the inquiry: Was the mark "Premier" inherently distinctive
as at the date of application,
View Parallel Citation
entitling it to registration in part A of the register? I think not and I did not understand FNB to argue
otherwise. In "premier cheque account", "pre
Page 7 of [2003] 2 All SA 1 (SCA)
mier credit card service" or "premier banking service" the intended trade mark performs a purely descriptive or
adjectival function. As I understand FNB's evidence, that is primarily how it used or intends to use it. This
appears from the evidence of Mr Unser who stated that:
"By virtue of the definition of PREMIER, particularly in its adjectival form, the abovementioned facts relating to the
use and distinctiveness of the Applicant's FIRST trade mark has relevance."
Trollip JA, in dealing with the mark Meester in Distillers Corporation (SA) Ltd v SA Breweries Ltd and another;
Oude Meester Groep Bpk and another v SA Breweries Ltd,17 said this:
"Now Meester is not a coined or invented word, inherently adapted to distinguish the goods to which it relates. It is,
like its English equivalent, Master, an ordinary, well known word to be found in any dictionary. As a noun it
ordinarily connotes a superior person of knowledge, experience, competence, skill, or authority; therefore, when
used in a trade mark in relation to goods, normally it impliedly lauds the quality of those goods. The same
commendation is usually conveyed when it is used adjectivally of a person; and when so used of a thing, that the
thing is made by a 'master'. It is understandable, therefore, that the word is often used as part of a trade mark.
Evidence was adduced for Breweries indicating that some 50 trade marks on the register contain Master or
Meester as part of the mark, in many cases the right to the exclusive use of the word being disclaimed. In
International Harvester Company's Application, (1953) 70 RPC 141, the hearing officer, in giving judgment,
mentioned that 'in the past few years' the Register in England had received some 300 applications for registering
compound words as trade marks which terminated in 'master'. All the above information (which is admissible for