41 registration may serve, in trade, to designate the geographical origin of the services listed.
[47] Considering that there are probably hundreds of commercial enterprises that offer the services mentioned on
the class 42 registration like retail merchandising services and providing of food and drink, Century City may
serve, in trade, to designate the geographical origin of these services. As to class 36, it includes also services
that are hit by section 10(2)(b), more particularly, estate agencies, real estate management, and letting of
real estate. There are many property owners in Century City who wish or
Page 424 of [2010] 2 All SA 409 (SCA)
may in future wish to market their properties or have them managed and may wish to engage estate agents
for this purpose. They might wish to use Century City as the name of the location with which they have a
business connection in the sense that that is where the origin of their services is located. The same would
apply to "management services" in class 35. In fact, the Association alleged that "through its licensees and
permitted users it has an extensive reputation in the Century City trade marks in the field of residential and
business developments, selling and letting of real estate, and the provision of related services", which
indicates that the name is required to indicate the geographical origin of these services.
Blameworthy conduct
[48] I therefore conclude that the name marks in classes 35, 36, 41 and 42 were hit by the prohibition in section
10(2)(b). But that is not the end of the matter. The Association relied on the principle derived from GE Trade
Mark [1973] RPC 297 (HL); General Electric Co v The General Electric Co Ltd [1972] 2 All ER 507 (HL) as adopted
by this Court in Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A), [1997] 1 All SA 327 (A),
View Parallel Citation
namely, that a trade mark can lose its distinctiveness only through the "blameworthy" conduct of the trade
mark owner. Since this Court declined to define "blameworthy" in Luster (supra) (at 26BE) it is necessary to
revert to GE as a point of departure. GE was decided under the 1938 UK Act and Luster was decided under
the comparable provision in our 1963 Act. The main issue to decide was whether a trade mark that was
distinctive at the time of its registration could be removed from the register because of a subsequent loss of
distinctiveness. This depended on an interpretation of the 1938 Act, more particularly the meaning of the
phrase "any entry wrongly remaining on the register", and the House of Lords held in the affirmative.6 The
same problem does not arise under section 10 of our current Act the wording is clear. The subsidiary
question was: when would a court exercise its discretion against the trade mark owner? The House in effect
held on an interpretation of the Act that if a trade mark became confusing the trade mark owner would
become disentitled to the protection of the law if there had been blameworthy conduct on its part.7 T h e
minority in the High Court of Australia
Page 425 of [2010] 2 All SA 409 (SCA)
adopted this reasoning in New South Wales Dairy Corporation v Murray Goulburn Cooperative Co Ltd 1991 RPC
144, and this Court quoted one of the minority judgments with approval. It is not without interest to note that
HiBred Corn Company v HyLine Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 52 did not adopt the reasoning in GE
(supra) in relation to its comparable identical provision.
[49] The 1994 UK Act differs in this regard materially from its predecessor and from our 1993 Act. There is also no
counterpart of section 16(1) of our 1963 Act. Section 3(1)(c) of the UK Act prohibits the registration of trade
marks in the same terms as our section 10(2)(b) but in contrast it does not deal simultaneously with marks
already on the register. They are dealt with in section 46(1)(d) which provides that the registration of a trade
mark may be revoked if "in consequence of the use made by the proprietor or with his consent" it is liable to
mislead the public
View Parallel Citation
"particularly as to the nature, quality or geographical origin" of the goods or services. This appears to mean
that "blameworthiness" of the trade mark owner in the sense described has become a statutory requirement
in the UK. GE accordingly no longer represents law under this Act (D Kitchen et al Kerly's Law of Trade Marks
and Trade Names (14ed) (2005) at paragraph 10119). Jeremy Phillips (op cit) does not even refer to the GE
case in this context and neither work refers to the Australian judgment.
[50] Nothing in our statute is to the same effect as section 46(1)(d), and there is nothing permitting a court to
rewrite section 10(2)(b) to state that a mark that consists exclusively of a sign or an indication which may, as
a result of the blameworthy [or deliberate] conduct of the trade mark owner, serve, in trade, to designate the
geographical origin of the services' becomes subject to revocation. But that does not mean that a party can
rely on the infringement, especially its own, to establish that a trade mark has lost its efficacy under this
provision. Wrongful acts by third parties cannot in general destroy rights. This truism also applies to trade
mark rights. It was in that context that Luster (supra) adopted the GE test. And in South African Football
Association v Stanton Woodrush (Pty) Ltd t/a Stan Smidt and Sons 2003 (3) SA 313 (SCA), [2003] 1 All SA 274
(SCA) at paragraph [16] the "rule" was applied to dispose of an argument that subsequent trade mark
applications could destroy an existing mark or reputation.
[51] On the facts of this case it cannot be doubted that the Association was responsible for the fact that Century
City became a geographical location and place name. It was the necessary consequence of the nature of the