Premier Motor Company (Birmingham) Ltd and Premier Driving School (Birmingham) Ltd were confusingly
similar. This dictum can therefore hardly be dispositive of the issue presently under consideration.
[17] The correct approach is that of the Court of Appeal in Premier Luggage and Bags Ltd v The Premier Co (UK)
Ltd.22 It concerned the trade mark "Premier" used in relation to luggage. The mark had been used
extensively as a trade mark.
"I reject the submission, made on behalf of Premier UK in this Court, that the word "Premier" is incapable of being
or becoming distinctive of origin. In particular, I do not accept that the word "Premier", although plainly capable of
being used in a descriptive or adjectival sense (denoting primacy or superiority over other members of the class)
and so (absent use) devoid of any inherent distinctive character, cannot become distinctive of origin as a result of
use in relation to particular goods or services. "Premier" is not a word like "soap" which can only describe the
article to which it is applied see the observations of Mr Justice Jacob in the British Sugar case (British Sugar Plc v
James Robertson & Sons Ltd [1996] RPC 281) at pages 302 and 305 to which the judge referred. Nor is it a word
which, although once capable of being distinctive, has become solely descriptive through use see the examples
given in the Bach case (Bach and Bach Flower Remedies Trade Marks [2000] RPC 513) at paragraph 34 (at page
526)."
[18] FNB, consequently, was entitled to a part B registration unless hit by the prohibition contained in section
10(1A), namely that the mark is reasonably required for use in the trade. Counsel submits that without
evidence this ground of objection has to fail. That appears to be an overstatement. A court has to make a
value judgment and although evidence may in a particular case be useful, it can never be a sine qua non or
conclusive. In order to answer the question another question can usefully be posed: Would it be reasonable if
another bank (say, Standard Bank, since its name came up in the evidence) should wish to call its premier
financial product "Standard Bank premier cheque account" or even its "premier financial product"? Confusion
with FNB's premier
View Parallel Citation
cheque account does not seem probable but, as counsel accepted, if "Premier" is registered, Standard's use
could be infringing.23 The fact that no other bank has a present intention of using the word Premier does not
seem to be of any real relevance.
Page 10 of [2003] 2 All SA 1 (SCA)
The question surely must be an objective one with the emphasis on "reasonable".
[19] Webster and Page24 submit, correctly it seems, that the exclusion of marks reasonably required for use in
the trade affords adequate protection without applying the more elaborate tests that bar registration under
the 1938 British Trade Marks Act and, by implication, our 1916 Act. Blessed with the advantage of hindsight
one may indeed question the correctness of some of the older decisions on this issue. For instance, do
manufacturers of polish really require the word Marvel in their trade (as was the judgment in Joshua Gibson)? I
think not. Having said this and seeking little guidance in cases that appear to have overstepped the mark, I
am satisfied that the marks sought to be registered are indeed hit by section 10(1A).
[20] The appeal is dismissed with costs, including those consequent upon the employment of two counsel.
(Zulman, Conradie, Jones and Shongwe AJJA concurred in the judgment of Harms JA.)
For the appellant:
CE Puckrin SC and J Cullabine instructed by DM Kisch Incorporated, Pretoria
For the respondent:
P Ginsburg SC and R Michau instructed by Spoor and Fischer, Pretoria
Footnotes
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Spoelstra J, Daniels and Van der Westhuizen JJ concurring
Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA); [2001] 4 All SA 242 (A) para 5.
Trade Marks Act 194 of 1993 s 3(2) provides that
''[a]ll applications and proceedings commenced under the repealed Act shall be dealt with in accordance with the
provisions of that Act as if it had not been repealed.''
FNB did not pursue on appeal the refusal of the registration of Premier in class 9 (95/3930).
Cf Trust Bank van Afrika Bpk v Eksteen 1964 (3) SA 402 (A) at 411H412B; Provincial Government of the Eastern Cape
and others v Contractprops 25 (Pty) Ltd [2001] 4 All SA 273 (A); 2001 (4) SA 142 (SCA) at para 11.
Encarta World English Dictionary.
1909 RPC 837 at 854856.
Gerber Foods International Ltd v Gerber Products Co [2002] EWCA Civ 1888 (CA) at para 31 per Auld LJ. To be found
at www.bailii.org/ew/cases/EWCA/Civ.
Trade Marks Act 1905 (5 Edw VII c 15) section 9.
At 855 line 40.
1927 TPD 207 per Tindall J, Curlewis JP concurring.
Patents, Designs, Trade Marks and Copyright Act 9 of 1916 section 99. The British Act was replaced in 1938 by a new
Trade Marks Act (1 & 2 Geo VI c 22), which also contained limitations relating to the registration of a word having a
direct reference to the character or quality of the goods or being in its ordinary signification a geographical name. Our
1963 Act did not contain these limitations: Webster and Page South African Law of Trade Marks para 3.28.