appellant did not omit the unnecessary papers originally filed by it.
[58] I was sorely tempted to make a special costs order but since both parties are equally guilty, as well as in not
reducing the record on appeal, I have decided against it. Practitioners apparently also believe that the more
they burden this Court with paper the better for them. Perhaps they hope that the court will locate a winning
fact that they have missed. Practitioners are paid to determine what their case is about and to make a value
judgment about what is required and what not; and not only to photocopy documents. This should serve as a
final warning, also for counsel who tell us to read unnecessary paper.
Order
[59] In the result the following order is made:
1.
The appeal is upheld with costs.
2.
The order of the court below is substituted with the following order:
(a)
The application is dismissed with costs.
(b)
In respect of the counterapplication the following order is made:
i.
The following trade mark registrations are revoked: 1997/14283 in class 41; 1997/14281 in
class 36; and 1997/14282 in class 42.
ii.
Trade mark registration 1997/14280 in class 35 is rectified by the deletion of the words
"management services".
iii.
The applicant, Century City Property Owners' Association, is to pay the costs.
(Lewis, Mhlantla JJA, Hurt and Wallis AJJA concurred in the judgment of Harms DP.)
For the appellant:
RW Tainton and S Laing instructed by Adams and Adams
For the respondent:
RWF MacWilliam SC and I Joubert instructed by Spamer Triebel Incorporated
Footnotes
1
2
3
4
5
6
S 2(2):
"References in this Act to the use of a mark shall be construed as references to
(a) the use of a visual representation of the mark;
(b) in the case of a container, the use of such container; and
(c) in the case of a mark which is capable of being audibly reproduced, the use of an audible reproduction of the
mark."
S 34(2):
"A registered trade mark is not infringed by
. . .
(b) the use by any person of any bona fide description or indication of the kind, quality, quantity, intended
purpose, value, geographical origin or other characteristics of his goods or services, or the mode or time of
production of the goods or the rendering of the services."
The full text reads:
"The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of
sections 3 and 70, be liable to be removed from the register:
(1) . . .
(2) a mark which
(a) . . .
(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; . . ."
The proviso reads:
"Provided that a mark shall not be refused registration by virtue of the provisions of paragraph (2) or, if registered,
shall not be liable to be removed from the register by virtue of the said provisions if at the date of the application for
registration or at the date of an application for removal from the register, as the case may be, it has in fact become
capable of distinguishing within the meaning of section 9 as a result of use made of the mark."
S 10(2)(a):
"The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of
sections 3 and 70, be liable to be removed from the register:
(1) . . .;
(2) a mark which
(a) is not capable of distinguishing within the meaning of section 9."
S 9:
"(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 or proposed to be registered from the goods or services of another person
either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in
relation to use within those limitations.
(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."
S 33(1) of the 1963 Act was the local counterpart:
"Any person aggrieved by the noninsertion in or omission from the register of any entry, or by any entry made in
the register without sufficient cause or by any entry wrongly remaining on the register, or by any error or defect in