(e)
Interdicting OnLine from conducting its business and rendering its services on the terms and conditions
detailed in its standard terms and conditions on the ground that they were contra bonos mores.
[10] OnLine opposed all aspects of the orders sought. It filed an extensive answering affidavit and lodged a
counterapplication in which it claimed consolidation of the applications, a stay of the application brought
against it pending the outcome of the counterapplication and for substantive relief, namely the expungement
of the trade mark Lotto on the grounds that they wrongly remain on the register in the light of on the basis
that the word lotto has not been used as a trade mark within the meaning of section 27(1)(b) of the Act.
The Registrar, the third respondent in the expungement application, did not participate in the case.
[11] At the hearing the Board and Uthingo pursued an application to strike out portions of the answering affidavit
of OnLine in the infringement application and extensive sections of its founding and replying affidavits in the
expungement proceedings. The court a quo granted the application in toto with costs of two counsel. The
learned Judge also granted all the orders sought in the notice of motion in the infringement application (in
spite of the large amount of overlap), dismissed the expungement application and ordered OnLine to pay the
costs of two counsel in respect of each application. He subsequently refused an application by OnLine for
leave to appeal, but leave was granted by this Court on petition.
The expungement application
[12] As mentioned, OnLine sought to have the trade mark register rectified because, so it contended, the word
"LOTTO" had been wrongly
View Parallel Citation
entered in the register and wrongly remains there, as contemplated in section 24(1) of the Act. It also relied
on nonuse of the trademark as a ground of removal under section 27(1)(b).
Page 475 of [2009] 4 All SA 470 (SCA)
[13] It is trite that a trade mark is a badge which distinguishes the origin of the goods or services to which it is
applied from the origin of other (usually competitive) goods and services. In order to be registrable it must
possess this capability (section 9(1)). If, at the date of application it is inherently capable of so distinguishing
or is capable of distinguishing by reason of prior use, it is considered to possess that capability (section 9(2)).
A mark which is not capable of distinguishing within the meaning of section 9 may not be registered as a
trade mark (section 10(2)(a)), provided that a mark may not be refused registration for that reason, or, if
registered, may not be liable to be removed from the register on that ground, if at the date of an application
for registration or at the date of an application for removal, as the case may be, the mark has in fact become
capable of distinguishing within the meaning of section 9 as a result of the use made of that mark (the
proviso to section 10).
[14] O f c o u r s e , a s p o i n t e d o u t i n Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and another
2000 (2) SA 771 (SCA) at 779CD [also reported at [2000] 2 All SA 1 (A) Ed], evidence that a mark has
become distinctive by use must be approached with circumspection as the sole producer or distributor of a
product cannot by means of advertising and selling the product under its generic name render that name
capable of distinguishing in terms of section 9. That caution applies equally to the provision of a service said
to be protected by a trade mark.
[15] In First National Bank of Southern Africa Ltd v Barclays Bank Plc and another 2003 (4) SA 337 (SCA) [also
reported at [2003] 2 All SA 1 (SCA) Ed], this Court was required to decide whether the mark "PREMIER" was
registrable in relation to cheques, banking and credit card services and certain related marketing and
merchandising services. In upholding the��decision of the Registrar of Trade Marks that the word "PREMIER"
was not registrable for such goods and services, it approved the dictum of Jacob J in British Sugar Plc v James
Robertson and Sons Ltd [1996] RPC 281 at 302 that there is "an unspoken and illogical assumption that use
equals distinctiveness". This assumption is based on the fact that common words are naturally capable of use
in relation to the goods or services of any trader no matter how extensively such common words have been
used by any individual trader of goods or services of that class.
[16] In The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd [1938] 55 RPC 125 (PC) at 145 Lord Russell
pointed out that:
"A word or words to be really distinctive of a person's goods must generally speaking be incapable of application to
the goods of anyone else."
[17] OnLine's counsel submitted that, in the light of the aforegoing principles, the Lotto trade mark does not pass
the test for either inherent or acquired distinctiveness in relation to lottery services because:
View Parallel Citation
(a)
the mark does not tell the public who the services come from but rather what the services are: Jeryl
Lynn Trade Mark [1999] FSR 491 (Ch D) at 497 paragraph 11; and
(b)
in any event, the mark cannot perform the function of distinguishing, without first educating the public
that it is a trade mark: British Sugar (supra) at 306.
[18] It is OnLine's case that "lotto" is an ordinary English noun that identifies a particular genus of games of
chance and that the general public would,