"insurance; financial affairs; monetary affairs; real estate affairs, including property, township and residential
development, real estate appraisal, estate agencies, real estate management, leasing of real estate"; and
(c)
1997/14282 CENTURY CITY in class 41 in respect of
"education; providing of training; entertainment; including but not restricted to services relating to cinemas, theme
parks and casinos and the provision of facilities therefor; sporting and cultural activities; services ancillary to the
aforementioned."
[6] The device marks that were relied on in the notice of motion are all for the same device. They cover the same
classes and have the same specifications as the name marks.
View Parallel Citation
The alleged infringing acts
[7] The Trade Marks Act 194 of 1993 recognises three types of trade mark infringement. The first is the
unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is
registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause
confusion (section 34(1)(a)). The second is the unauthorised use of a mark, which is identical or similar to the
trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods
or services in respect of which the trade mark is registered, that in such use there exists the likelihood of
deception or confusion (section 34(1)(b)). The third, commonly referred to as dilution, does not figure in this
case.
[8] The appellant (the respondent in the court below), Century City Apartments Property Services CC, used the
name "Century City Apartments" as its "brand" or business name. This is apparent from its promotional
material and, for instance, its entry in the telephone directory. Its internet domain name is
centurycityapartments.co.za. The Association's case was that the use of the corporate name, the brand name,
and the domain name infringed all the mentioned name and device marks even though it did not use any
device mark or anything approximating one.
[9] The judgment of the court below accepted the submission without distinguishing between the name marks
and the device marks and without considering the nature of the appellant's services. And in spite of counsels'
assumption to the contrary the court order, for a reason not explained, incorporated only the class 42 mark of
the name marks mentioned although it covered all the device marks.
Assessment of trade mark infringement
[10] The first issue to consider is the identification of the allegedly infringing mark. It is trite law (in spite of
allegations to the contrary in the Association's
Page 414 of [2010] 2 All SA 409 (SCA)
affidavits and some submissions in the Association's heads of argument) that a person may use a trade mark
otherwise than as a badge of origin and that the appellant's use of the name Century City in a descriptive
manner could not amount to infringement (see Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd
2007 (6) SA 263 (SCA) [also reported at [2007] JOL 19890 (SCA) Ed], and Commercial Auto Glass (Pty) Ltd v
BMW AG 2007 (6) SA 637 (SCA), [2007] 4 All SA 1331 (SCA). The appellant did use the name Century City in a
descriptive manner in its advertising material but its use of the name as a brand, corporate or domain name is
nothing but trade mark use and the faint argument to the contrary stands, accordingly, to be rejected.
[11] The second issue is whether the appellant's use was in the course of trade and, related to that, whether its
services fell within the said classes as defined. Because the appellant acted as an accommodation agent for
reserving accommodation in Century City its activities fell within class 42. They also fell within class 36 to the
extent that this class covered estate agencies, real estate management and leasing of real estate, and
View Parallel Citation
class 35 in relation to management services. There was no evidence that the appellant used the mark in
connection with any services covered by class 41 as defined above. There was also no evidence or argument
in relation to the question whether the appellant's services were so similar to the services covered by this
class that there was a likelihood of deception or confusion during use. This conclusion makes consideration of
section 34(1)(b) unnecessary.
[12] The next issue is whether the marks "Century City" and "Century City Apartments" are, in the wording of
section 34(1)(a) "identical". I think not. As the European Court of Justice indicated,
"[t]he criterion of identity of the sign and the trade mark must be interpreted strictly. The very definition of identity
implies that the two elements compared should be the same in all respects" (LTJ Diffusion SA v Sadas Vertbaudet SA
[2003] ETMR 83 (European Trade Mark Reports) at paragraph [50]).
This is, however, subject to the proviso that minute and wholly insignificant differences are not taken into
account (Reed Executive Plc and others v Reed Business Information Ltd and others [2004] EWCA Civ 159;
[2004] RPC 40 at paragraph [29]). In other words, the de minimis principle applies.
[13] That is not the end of the inquiry because if the appellant's brand name were to be confusingly similar to the
registered mark ("be likely to deceive or cause confusion") it infringes. I am satisfied that the appellant's