services by any proprietor thereof or any person permitted to use the trade mark as contemplated in
section 38 during the period concerned;
(c)
. . ."
Schmulian the deponent of the applicant's affidavit alleges that the applicant is an interested person within the
meaning of section 24 and section 27 of the Trade Marks Act, which is denied by the deponent of the respondents'
affidavit, Dr Monamodi. The points made by the respondents are found in the interdict application that the applicant
cannot have a lawful interest in the LOTTO trade mark. The applicant argues that a trade mark proprietor may not
seek to prevent the use of its registered trade mark by an entity that is conducting its business unlawfully in other
respects in addition to the infringement of the trade mark. On the other hand the respondents argue that for a
person to be "an interested person" for the purposes of the Act the relevant "interest" must be a lawful one. See
South African Football Association v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and another 2003 (3) SA 313
(SCA) paragraph 8, at 230G231A.
In seeking the expungement of the LOTTO trade mark on the basis that the entries of that trade mark in the
register of trade marks are entries "wrongly remaining" on the register in terms of section 24(1), the applicant
requires that section to be read with "section 9 and/or section 10(1) and/or section 10(2)(a) and/or section 10(2)(b)
and/or section 10(2)(c) and/or section 10(4)". However, there is no reference in the applicant's affidavits to sections
10(2)(a)(c).
Section 9 of the Trade Marks Act and the parts of section 10 of the Act relied on by the applicant reads as follows:
"9.
10.
Registrable trade marks
(1)
In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a person in
respect of which it is registered . . . from the goods or services of another person . . .
(2)
A mark shall be considered to be capable of distinguishing within the meaning of subsection (1) if, at the date
of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by
reason of prior use thereof.
Unregistrable trade marks
The following marks . . ., if registered, shall . . . be liable to be removed from the register:
(1)
A mark which does not constitute a trade mark;
(2)
A mark which
(a)
is not capable of distinguishing within the meaning of section 9; or
(b)
consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality,
quantity, intended purpose, value, geographical origin or other characteristics of the goods or services,
or the mode or time of production of the goods or of rendering of the services; or
Page 635 of [2007] 1 All SA 618 (T)
(c)
consists exclusively of a sign or an indication which has become customary in the current language or in
the bona fide and established practices of the trade;
(3)
. . .;
(4)
a mark in relation to which the applicant for registration has no bona fide intention of using it as a trade mark,
either himself or through any person permitted or to be permitted by him to use the mark as contemplated by
section 38;
. . .
Provided that a mark . . . shall not be liable to be removed from the register by virtue of [the provisions of paragraph
(2)] . . . if . . . at the date of an application for removal from the register . . . it has in fact become capable of
distinguishing within the meaning of section 9 as a result of use made of the mark."
Section 10(2)(a) is simply a restatement of the requirements of section 9 that for a trade mark to be registrable it
must be capable of distinguishing the goods or services of a person in respect of which it is registered from the
goods or services of another person and that the proviso to section 10 simply makes it clear that a trade mark may
become capable of distinguishing through use.
Section 10(2)(b) and (c) describe two specific instances where marks are in effect deemed to be not capable of
distinguishing within the meaning of section 9. The proviso to section 10 makes it clear that even such marks may
become capable of distinguishing, and may thus be unobjectionable, through use.
The applicant's case is that the entries of the LOTTO mark on the register are entries wrongly remaining on the
register for the purposes of section 24(1) of the Trade Marks Act in that that mark does not constitute a trade mark
as required by section 10(1) and is therefore liable to be removed.
The Supreme Court of Appeal, dealing with an objection to a mark in terms of section 10(1) of the Trade Marks Act
in Beecham Group plc and another v Triomed (Pty) Ltd2 2003 (3) SA 639 (SCA), held that:
"In essence, the test is whether Beecham used or proposed to use the shape of the tablet [that is the mark in question] 'for
the purpose of distinguishing' it from tablets sold by others or whether the function of the shape is to distinguish these
tablets from other tablets." (At 646C, paragraph 9.)
The court went on to hold, in this context, that:
"Whether such a mark is distinctive is another matter because, conceptually, the question whether a mark is capable of