Per Cooke J in Klisser's Farmhouse Bakeries Ltd v Harvest Bakeries Ltd 1989 RPC 27 at 29.
The first draw in the Lotto game took place on 11 March 2000. The Lotto game was launched on 2 March 2000,
and extensively advertised and promoted by the second applicant on behalf of the first applicant from 20 February
2000. The advertising and provision which took place was on a very extensive scale. The advent of the Lotto game
was advertised on television, in the press and
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other print media, on radio stations broadcasting locally and nationally and by way of publicity materials which were
handed out. Prior to the draw for the first Lotto game there was intensive interest amongst virtually all of the
members of the public in the Republic of South Africa, in the Lotto game and the manner in which it was to be
conducted. Consequently even before the first draw a considerable reputation and goodwill vested in the trade
mark Lotto enured to the benefit of the first applicant.
The extent of the promotion of the Lotto game is not in dispute. The challenge, such as it is, to the "goodwill"
which vests in the first applicant in it, is based on an attack of the inherent distinctiveness of the word "Lotto" it
being alleged that "the descriptive nature of the word "lotto" not only militates against the finding of an essential
requirement for an action of passing off, namely that it is indicative of a single source or provenance . . . (but also
postulates a finding that confusion anyway is not likely)".
The applicants have amply shown that the trade mark LOTTO has become distinctive as indicating that the
particular lottery game in connection with which that trade mark is used has a particular origin and that the use of
the mark LottoFun by the respondent is likely to deceive and thus cause confusion or injury, actual or probable, to
the goodwill of the applicant's business.
The respondent is knowingly selling or in any other way disposing of document or paying pertaining to the
national lottery in contravention of section 57(2)(c) of the Lotteries Act: his selling the lotto game tickets at a price
higher than that which is printed on the tickets, in contravention of section 57(2)(f )(i) of the Lotteries Act: his
selling the lotto game tickets on conditions not provided for in the rules of the lottery concerned, in contravention of
section 57(2)(f )(i) of the Lotteries Act: and is conducting, organising, promoting, devising or managing any scheme,
plan, competition, arrangement, system, game or device which directly or indirectly provides for betting, wagering,
gambling or any other game of risk on the outcome of the national lottery without authority by or under the Act or
any other law in contravention of section 57(2)(g) of the Lotteries Act.
In the circumstances the applicant succeeds and an order is granted in terms of prayers (1)(6) of the notice of
motion.
The expungement application
The applicant is OnLine Lottery Services (Pty) Ltd. The applicant trades as LottoFun.
The first respondent is the National Lotteries Board established in terms of section 2 of the Lotteries Act 57 of
1997 (the Lotteries Act). The second respondent is Uthingo Management (Pty) Ltd. The second respondent is the
sole and exclusive licensee authorised by the first respondent to conduct the national lottery. The third respondent
is the registrar of trade marks.
The first respondent is the registered proprietor of the trade mark LOTTO in class 36 (in respect of services for
and in connection with financial transactions).
The applicant seeks the rectification of the register of trade marks by the expungement therefrom of the LOTTO
trade mark.
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The second respondent is joined in the application in that it may have an interest in the relief sought. No relief is
sought against the second respondent save for costs in the event of opposition.
The third respondent is cited in view of the relief sought in the application and given the provisions of section 56
of the Trade Marks Act. (Section 56 of the Trade Marks Act provides that "in any legal proceeding in which the relief
sought includes alteration or rectification of the register, the registrar shall have the right to appear and be
heard . . .".) Costs are not sought against the third respondent. The third respondent has not intervened in the
application.
The applicant's business provides a service which enables orders to be placed for tickets in the South African
National Lottery using the medium of the internet or the short message service ("SMS") on a cellphone. The
applicant's business also, inter alia, provides generic lottery services.
The first and second respondents brought an application against the applicant for, inter alia, the infringement of
the LOTTO trade mark and passing off. The applicant seeks the expungement of the LOTTO trade mark inter alia a s
a defence to the interdict application but chose, instead of bringing a counterapplication in the interdict application
brought the present application separately.
In bringing the expungement application the applicant sought to stay the interdict application and also the
consolidation of the expungement with the interdict application. The applicant relies on evidence in the interdict
application for the purposes of the expungement application.