Century City Apartments Property Services CC and another v Century City Property Owners' Association
[2010] 2 All SA 409 (SCA)
Division:
SUPREME COURT OF APPEAL
Date:
27 November 2009
Case No:
57/09
Before:
LTC HARMS DP, CH LEWIS, NZ MHLANTLA JJA, NV HURT and
MJD WALLIS AJJA
Sourced by:
A Street
Summarised by:
DPC Harris
Parallel Citation:
2010 (3) SA 1 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
[1] Intellectual property law Trade marks Allegation of infringement A person may use a trade mark other than as a
badge of origin, and the use of a name in descriptive manner cannot amount to infringement.
[2] Intellectual property law Trade marks Marks indicating geographical origin of services Application for expungement
Trade Marks Act 194 of 1993 Section 10(2)(b) A mark may not be registered and a registered trade mark is liable to
be removed from the register if it consists exclusively of a sign or an indication which may serve, in trade, to designate
the geographical origin of the services Section prohibits the registration of geographical names as trade marks solely
where they designate specified geographical locations which are already famous, or are known for the category of goods or
services concerned, and which are therefore associated with those goods in the mind of the relevant class of persons.
Editor's Summary
The respondent was a section 21 company, and the owner of a number of trade marks in different classes, some
consisting of the name "Century City" and others of devices containing that name and interlocking Cs.
The appellant used the name "Century City Apartments" as its brand or business name.
The respondent argued that the use of the appellant's corporate name, brand name, and domain name infringed
the appellant's name and device marks. The court a quo accepted the submission without distinguishing between
the name marks and the device marks and without considering the nature of the appellant's services.
Held The first issue to consider was the identification of the allegedly infringing mark. The Court pointed out 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. 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 was trade mark use.
The second issue was whether the appellant's use was in the course of trade and, related to that, whether its
services fell within the classes in which respondent's trade marks were registered. It was found that three of the
classes were affected by appellant's use of the mark.
While the marks "Century City" and "Century City Apartments" were not identical, that was not the end of the
inquiry because if the appellant's brand name was found to be confusingly similar to the registered mark, it would
infringe. The Court was satisfied that the appellant's brand name, in spite of the addition of the word "apartments",
was confusingly similar to "Century City". In arriving at that conclusion, the Court followed the guidelines set out in
the case of Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch), as to the considerations involved
in
Page 410 of [2010] 2 All SA 409 (SCA)
such an enquiry. The likely confusion caused by the appellant's use of the brand and domain name meant that
there was trade mark infringement.
However, the same could not be said for the appellant's corporate name. "Century City Apartments Property
Services CC" was materially different from the trade mark "Century City" and no trade mark infringement could be
found.
The Court went on to find that the respondent had failed to establish infringement of the remaining device marks.
In a counterapplication, the appellant sought the expungement of the respondent's registrations by relying on
section 10(2)(b) of the Trade Marks Act 194 of 1993. It provides that a mark may not be registered and a registered
trade mark is liable to be removed from the register if it consists exclusively of a sign or an indication which may
serve, in trade, to designate the geographical origin of the services. The factual basis of the argument was that
Century City has become a geographical location that designates the geographical origin of services.
The Court proceeded to consider the meaning of section 10(2)(b) and more particularly the question as to when a
mark consists exclusively of a sign or an indication which may serve, in trade, to designate the geographical origin
of the services. Section 10(2)(b) prohibits the registration of geographical names as trade marks solely where they
designate specified geographical locations which are already famous, or are known for the category of goods or