In consideration of the expungement application the court will have regard to material contained in the interdict
application.
By way of background to the disputes between the parties the following is relevant. The functions of the first
respondent are inter alia to ensure that the National Lottery provided for in the Lotteries Act is conducted with due
propriety and to ensure that the interests of every participant in the National Lottery are adequately protected. The
second respondent was, in August 1999, granted the sole licence, in accordance with the Lotteries Act, to conduct
the National Lottery. The licence will endure until 31 March 2007.
The second respondent has since not later than 20 February 2000 been conducting a game as part of the
National Lottery, in terms of the licence issued to it by the Minister of Trade and Industry, using the LOTTO trade
mark, as a permitted user thereof. Subsequent to the licence being granted to it, the second respondent devised
the Lotto game rules which are the rules that apply to the Lotto game. The Lotto game is played by persons from all
walks of life ranging through the full spectrum of the South African population. The second respondent sells the
Lotto game tickets countrywide via a network of authorised retailers and retail outlets. The relationship between
the second respondent and the retailer is governed by a written agreement. A detailed probity check is conducted
in respect of all applicants who apply to become retailers. The second respondent authorises as retailers only those
applicants whom it can trust to ensure transparency, integrity and fairness in the entire process.
The second respondent was recorded as a registered user of the LOTTO trade mark as registered under number
1991/02702 for all the services to which that registration applied on 10 January 2003 and such recording of the
second applicant as a registered user persists. The second respondent has at all times
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used the LOTTO trade mark strictly under the direction and control of the first respondent.
The LOTTO trade mark with which this application's concerned was originally registered only under number
1991/02702. In terms of a notice published in the Patent Journal of May 1997 certain amendments were effected to
the specification of goods and services. Lottery Services had previously fallen into class 36 but were, in terms of the
abovementioned notice reclassified into class 41. The first respondent applied for, and was granted, an amendment
to the specification of services, the effect of which was that the existing trade mark under number 1991/02702 was
amended to reflect trade mark registration in class 41 for the specification of services for which the marks are
presently registered.
In the interdict application it was the respondents' case that without the authority of the respondent, the
applicant, trading as LottoFun, conducts a business which enables members of the public to order and purchase
tickets for the Lotto game, which forms part of the National Lottery, via the Internet and via sms service provided by
cellular telephone networks, and that in the conduct of its business the applicant is infringing the LOTTO trade
mark; is passing off its business and services as being those of the first respondent or as being connected in the
course of trade with the first respondent; is contravening certain of the provisions of the Lotteries Act and is
competing unfairly with the respondents. The first respondent is also bringing the interdict application in order to
fulfil its obligations in terms of Lotteries Act to ensure that the interests of every participant in the National Lottery
are adequately protected.
Pursuant to a written objection by the first respondent to the applicant's original name "Lottofun (Pty) Ltd", the
applicant changed its name to its present one in about March 2002. The applicant has always traded as "Lottofun"
"OnLine Lottery Services (Pty) Ltd".
The applicant seeks the expungement of the LOTTO trade mark from the register of trade marks under two
separate provisions of the Trade Marks Act; section 24(1) and section 27(1)(b). Fundamentally in terms of section
24(1) the applicant's case is that the entries of the LOTTO trade mark on the register "wrongly remain" on the
register within the meaning of that section. Section 24 of the Trade Marks Act reads as follows:
"24.
General power to rectify entries in register
(1)
In the event . . . of any entry . . . wrongly remaining on the register . . ., any interested person may apply to
the court . . . for the desired relief, and thereupon the court . . . may make such order for . . . removing . . .
the entry as it . . . may deem fit.
(2)
The court . . . may in any proceedings under this section decide any question that may be necessary or
expedient to decide in connection with the rectification of the register."
Section 27(1)(b) of the Trade Marks Act provides as follows:
"27.
Removal from register on ground of nonuse
(1)
Subject to the provision of section 70(2), a registered trade mark may, on application to the court, or, at the
option of the applicant and subject to the provisions of section 59 and in the prescribed manner, to the registrar
by any interested person, be removed from the register in respect of any of the goods or services in respect of
which it is registered, on the ground either
Page 634 of [2007] 1 All SA 618 (T)
(a)
. . .;
(b)
that up to the date three months before the date of the application, a continuous period of five years or
longer has elapsed from the date of issue of the certificate of registration during which the trade mark
was registered and during which there was no bona fide use thereof in relation to those goods or