distinguishing within the meaning of section 9 is an issue different, though not always separate, from the one now under
consideration." (At 647AC, paragraph 11.)
The deponent to the applicant's affidavit holds out that the LOTTO mark is not a trade mark within the Trade Mark
Act, and is therefore not registrable at all in relation to Lotteries within the meaning of section 9 of the Trade Marks
Act.
The first respondent has used the LOTTO trade mark for the purposes of distinguishing services in relation to
which the mark is used or proposed to be used from the same kind of services connected in the course of trade with
any
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other person. The issue of whether is capable of distinguishing for the purposes of sections 9 a n d 10(2) of the
Trade Marks Act is a question of fact. In Beecham Group plc and another v Triomed (Pty) Ltd (supra) at 649I650A,
paragraph 20 the relevant inquiry was described as follows:
"The factual inquiry under section 9 read with the proviso to section 10 is done in two stages. The first is whether the mark,
at the date of application for registration, was inherently capable of distinguishing the goods of Beecham from those of
another person. If the answer is no, the next inquiry is whether the mark is presently so capable of distinguishing by reason
of its use to date."
In determining whether the mark is capable of distinguishing regard should be had to the market in South Africa.
The applicant's case on whether or not the mark LOTTO is capable of distinguishing rests on the dictionary
definitions of the word "lotto". A simple reading of these definitions shows that for the most part the word "lotto"
does not mean "a lottery at all". The primary meaning ascribed to the word "lotto" in all of the dictionaries refer to a
game similar to bingo. The Oxford English Dictionary in a very similar definition appears in the Shorter Oxford English
Dictionary (1962ed):
"A game played with cards divided into numbered and blank squares and numbered discs to be drawn on the principle of a
lottery. Each player has one or more cards before him; one of the discs is drawn from a bag, and its number called; a
counter is placed on the square that has the same number, the player who first gets one row covered being the winner."
The Universal English Dictionary:
"Game of chance played with cards bearing five numbers in a line, and numbered balls drawn from a bag, the object being
to cover all the numbers in a line or as many as possible. The right to cover a number on a card is determined by the same
number being drawn from the bag."
The New Shorter Oxford English Dictionary (1993):
"A game of chance resembling bingo, in which numbers drawn as in a lottery are to be matched with numbers on a card, the
winner being the first to have a card with a row of numbers all of which have been drawn."
The New Oxford Dictionary of English (1998):
"a children's game similar to bingo in which numbered or illustrated counters or cards are drawn by the players."
The New Penguin English Dictionary (2000):
"a children's game similar to bingo."
Webster's Third New International Dictionary:
"A game played by drawing numbered disks from a bag or the like and covering corresponding numbers on cards, the
winner being the first player to fill a row."
According to the dictionary definitions primarily and in general the word "lotto" does not mean a lottery but rather
means a game similar to bingo and prior to the introduction of the National Lottery in South Africa the word "lotto"
was an obscure word which was for all intents and purposes meaningless in this country. Because of its obscurity
and its previous meaninglessness for most South Africans, the word "lotto" could be used as a trade mark in South
Africa when the South African Lottery was launched and it could function to distinguish that lottery from any other
lotteries in this country.
The 1994 edition of The South African Pocket Oxford Dictionary of Current English defines lotto as "a game of chance
like bingo, but with the numbers drawn
Page 637 of [2007] 1 All SA 618 (T)
by players instead of called". "Bingo" is defined as a "gambling game in which each player has a card with numbers
to be marked off as they are called".
To a large extent the applicant does not respond to the evidence of the respondents as to the non
descriptiveness of the word "lotto" in South Africa. Likewise the applicant's argument failed to deal in any
substantive way with the evidence of the respondents as to the distinctiveness in South Africa of the LOTTO trade
mark. LOTTO was by no means a common word in South Africa until the respondent began using it as a trade mark
in connection with the National Lottery. The word LOTTO was not, at least in South Africa at the time of the National
Lottery was launched, the name of a lottery or appropriate to describe some attribute of a lottery.
I am accordingly of the view that the LOTTO trade mark is capable of distinguishing services for and in connection
with lotteries of a person in respect of which that word is registered as a trade mark from the services for and in
connection with the lotteries of another person. The conducting or operating a lottery clearly falls within the scope