the present enquiry see CocaCola Co of Canada Ltd v PepsiCola Co of Canada Ltd, 59 RPC 127 (PC) at p 1331.
2851) shows that, not only in popular parlance, but in trade parlance too, Meester is an ordinary, well known,
laudatory word, not inherently distinctive or characteristic of the goods in respect of which it is used."
What he said applies to the facts of this case.
[14] The second stage of the inquiry requires a determination of the question whether, at the date of application,
the mark had become distinctive because of prior use. If the answer is in the affirmative, FNB is entitled to
registration in part A. In this regard FNB principally relied upon two pieces of evidence. (Before us the
evidence of Prof Hughes, an expert in semantics was not relied upon.) The first is that of Mr John Bryant, a
director of Standard Bank of SA Ltd. The affidavit, sworn some five years after the application date, is of no
value to FNB, not only because it does not deal with the situation as at the relevant date on the contrary, it
is couched in the present tense but also because it says nothing of any moment. He says that he "is aware"
of the brand name "Premier"; he "understands" that it is used by FNB in respect of credit card and cheque
account facilities offered by FNB; he "believes" that the brand name is to the best of his "knowledge and
belief" well known in the banking industry; he associates it exclusively with FNB; and to the best of his
"knowledge and belief" so does Standard Bank. One has to concur
View Parallel Citation
with the Full Court that this hardly qualifies as a statement of fact. In addition, Bryant kept mum about
"Premier Package"; he says nothing of the goods mark,
Page 8 of [2003] 2 All SA 1 (SCA)
limiting himself to the service mark; and he fails to make allowance for the fact that exclusive use by one bank
of a mark does not make that mark distinctive in the trade mark sense.
[15] The next bit of evidence gives us the number of Premier cheque account and credit card accounts held by
customers and the debit or credit amounts reflected in them and also some advertising material. This evidence
appears to deal with the current position and does not purport to deal with the position at the relevant date.
The evidence, likewise, is of little moment.18 The mark, as far as I can see, was used mostly, if not invariably,
in connection with FNB's obvious trade marks and as an adjective. It was also used to distinguish FNB's
services one from the other: prime clients get the premier product; others do not. It is worth quoting Jacob J
in British Sugar PLC v James Robertson & Sons Ltd19 (the Treat case):
"I have already described the evidence used to support the original registration. It was really no more than
evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical
assumption that "use equals distinctiveness". The illogicality can be seen from an example: no matter how much
use a manufacturer made of the word "Soap" as a purported trade mark for soap the word would not be distinctive
of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a
trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by
him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a
trade mark. Examples from old wellknown cases of this sort of thing abound. The Shredded Wheat saga is a good
example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd in the Privy
Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd in the House of
Lords. In the former case Lord Russell said.
'A word or words to be really distinctive of a person's goods must generally speaking be incapable of
application to the goods of anyone else.'
It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that
one must be careful before concluding that merely its use, however substantial, has displaced its common
meaning and has come to denote the mark of a particular trader. This is all the more so when the mark has been
used in conjunction with what is obviously taken as a trade mark."
[16] The conclusion that FNB is not entitled to registration in part A brings one to the next inquiry, namely whether
it is entitled to registration in part B, which, as mentioned, requires a value judgment as to whether the word
"Premier" in the context of cheques, banking services and the like, can through use become distinctive.20 The
courts below
View Parallel Citation
did not deal with this aspect in so many terms but it appears that they thought not and that they were
influenced in their thinking by the following quotation from
Page 9 of [2003] 2 All SA 1 (SCA)
The Premier Motor Company (Birmingham) Ltd v Premier Driving School (Birmingham) Ltd:21
"The word 'Premier' which each of the companies concerned in this case bears as part of its name is a quite
ordinary word in very common use, as is disclosed, if evidence were necessary, by the fact that in a page in the
local telephone directory to which I was referred there are something like fifteen to twenty different concerns the
first word of whose style is PREMIER. Of course, it is a perfectly ordinary English adjective to apply to any business
and it is, I suppose, synonymous with the word 'leading', the leading motor company of Birmingham and the
leading driving school of Birmingham that is the connotation of the word 'premier'."
It was a passingoff case and the decision was an interlocutory one. The question was whether the names