goods or services published by the Minister of Trade and Industry pursuant to section 69(2) of the Act. The
Financial Services Board Act 97 of 1990 does define "financial service" but in terms which render
View Parallel Citation
its application peculiarly applicable to the financial institutions defined in that Act. It is thus necessary to give
content to the term as used in the Trade Marks Act according to the ordinary signification of the expression, ie
services in relation to the conduct of business which involves money or finance. No doubt the Board, inasmuch
as it administers the National Lottery Distribution Trust Fund and prize monies, is heavily involved in financial
transactions but there is no suggestion that the registered mark is or has been applied to any aspect of its
business other than the organisation, marketing and operation of the Lotto game. It seems clear that in this
regard OnLine established in the expungement application that section 27(1)(b) of the Act applied to the
registered trade mark: up to the date three months before OnLine applied to court in August 2004, a
continuous period of at least five years had elapsed from the date of issue of the certificate of registration in
class 36 during which the registration stood and during which there was no bona fide use of the LOTTO trade
mark in relation to financial services by the Board and any previous proprietor of the trade mark and Uthingo
as a permitted user within the scope of section 38 of the Act and the Board was unable to satisfy the onus
laid on it by section 27(3). For this reason the registration under class 36 should have been struck down by
the court a quo.
[36] For all these reasons I am satisfied that the marks were wrongly placed on the register and remain wrongly
there. OnLine should have succeeded in the court below in the expungement application and in relation to
paragraph 1 of the infringement application. This puts an end to the trade mark infringement proceedings.
Unlawful competition and contraventions of the Lotteries Act
[37] Passingoff protects a trader against deception, arising from a misrepresentation by a rival concerning the
trade source or business connection
Page 480 of [2009] 4 All SA 470 (SCA)
of the rival's goods or services: Reckitt and Colman SA (Pty) Ltd v SC Johnson and Son SA (Pty) Ltd
1993 (2) SA 307 (A) at 315B [also reported at [1993] 1 All SA 27 (A) Ed]. It does not protect a mark or getup
in itself: Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd and another 1998 (3) SA 938 (SCA) at
paragraph [29] [also reported at [1998] 3 All SA 175 (A) Ed]. Many unsuccessful attempts have been made
to restrain alleged passing off arising from the use of descriptive names.5 In summary, the reason for this
lack of success is set out in Sea Harvest Corporation (Pty) Ltd v Irvin and Johnson Ltd 1985 (2) SA 355 (C) (the
"prime cuts" case) at 360BD [also reported at [1985] 1 All SA 532 (C) Ed], viz that the courts will not easily
find that such words have become distinctive of the business or products of the person using them, and will
not give what amounts to a monopoly in such words to one trader at the expense of others.
View Parallel Citation
[38] If a term is descriptive, in the sense that it is the name of the goods themselves, it cannot simultaneously
denote any particular trade source. Therefore, 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: Wadlow, The Law of Passing Off (Sweet and Maxwell) 3ed at 616.
[39] Even if the claimant succeeds in proving that a prima facie descriptive term has acquired some degree of
secondary meaning, the scope of protection for the mark is narrower than for a wholly arbitrary term.
Relatively minor differences will suffice to distinguish the defendant's goods or business when both use a
mark which is descriptive of the goods or services they provide. This applies even though the defendant is
using the closely similar term in a trade mark sense: Wadlow, op cit, at 617, paragraph 4.
[40] Applying the principles summarised in paragraphs 38 and 39 it is clear that OnLine's use of the business
name "Lottofun" does not in itself carry the complaint of passing off any distance at all.
[41] Moreover, all the elements of the cause of action for passing off must exist at the time that the allegedly
infringing acts take place: Hollywood Curl (Pty) Ltd v Twins Products (Pty) Ltd (1) 1989 (1) SA 236 (A) at 249J
[also reported at [1989] 4 All SA 30 (A) Ed]. In the present case, there is no evidence to show that, by the
time that OnLine commenced business, the word lotto had become distinctive of any of the respondents in
connection with services for financial transactions and/or services for and in connection with Lotteries.
[42] In the context of these proceedings a determination of the nature of the business carried on by OnLine was
of critical importance. Insofar as the applicants were seeking final relief in motion proceedings they were of
course bound to accept OnLine's description of its activities unless some acceptable reason could be found
for rejecting that version without a reference to evidence. Despite their primary deponent, Uthingo's chief
Page 481 of [2009] 4 All SA 470 (SCA)
executive officer, Mr Isaac Monamodi, boldly stating that:
"a consideration of all the facts establishes that it sells tickets to members of the public. Many of its terms and
conditions are simply a stratagem in an attempt to avoid infringing various sections of the Lotteries Act,"
a careful examination of the affidavits does not bear him out. Nor were counsel for Uthingo and the Board any