deception, arising from a misrepresentation by a rival concerning the trade source or business connection of the
rival's goods or services. It does not protect a mark or getup in itself. A party cannot be prevented from
unambiguously using a descriptive term in its original descriptive sense, unless it has wholly lost that descriptive
sense and become distinctive of the claimant in every context. Thus, the appellant's use of the business name
"Lottofun" did not in itself constitute passingoff.
Finally, the Court considered the question of contravention of the Lotteries Act. The facts established that the
essential nature of the appellant's business was the facilitation of the purchase of tickets, and thereby doing for
and on behalf of the Lottofun members what they were lawfully entitled to do for themselves. That business did not
even indirectly provide for betting etc on the outcome of the Lotto game. The respondents' relief on this count
should also have been refused.
The appeal accordingly succeeded.
Notes
For Intellectual property law see:
.
LAWSA First reissue Vol 29
.
Burrell TD Burrells South African Patent and Design Law 3ed Durban LexisNexis Butterworths 1999
For Competition law see:
.
Reyburn L and Sutherland P Competition Law of South Africa (updated looseleaf) LexisNexis Butterworths 2008
Cases referred to in judgment
South Africa
Appalsamy v Appalsamy and another 1977 (3) SA 1082 (D)
480
Page 472 of [2009] 4 All SA 470 (SCA)
Burnkloof Caterers Ltd v Horseshoe Caterers Ltd 1976 (2) SA 930 (A)
480
Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and another
[2000] 2 All SA 1 (2000 (2) SA 771) (SCA)
475
Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd and another
[1998] 3 All SA 175 (1998 (3) SA 938) (SCA)
480
First National Bank of Southern Africa Ltd v Barclays Bank Plc and another
[2003] 2 All SA 1 (2003 (4) SA 337) (SCA)
475
Hollywood Curl (Pty) Ltd v Twins Products (Pty) Ltd (1) [1989] 4 All SA 30
(1989 (1) SA 236) (A)
480
Reckitt and Colman SA (Pty) Ltd v SC Johnson and Son SA (Pty) Ltd [1993]
1 All SA 27 (1993 (2) SA 307) (A)
480
Sea Harvest Corporation (Pty) Ltd v Irvin and Johnson Ltd [1985] 1 All SA
532 (1985 (2) SA 355) (C)
480
Selected Products Ltd v Enterprise Bakeries (Pty) Ltd [1963] 1 All SA 352
(1963 (1) SA 237) (C)
480
Truck and Car Co Ltd v KarNTruck Auctions [1954] 4 All SA 354
(1954 (4) SA 552) (A)
480
United Kingdom
British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
475
Jeryl Lynn Trade Mark [1999] FSR 491 (ChD)
475
The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd [1938] 55
RPC 125 (PC)
475
View Parallel Citation
Judgment
HEHER JA:
[1] This appeal depends in the main on the answers to three questions: Should the registered trade mark "Lotto"
be removed from the trade mark register because it was wrongly entered and wrongly remains on the
register as envisaged by section 24(1) of the Trade Marks Act 194 of 1993? Did the appellant in conducting its
business pass that business off as that of the National Lotteries Board or as connected in the course of trade