defined in section 12 to mean:
". . . adapted, in relation to the goods or services in respect of which a trade mark is registered or proposed to be
registered, to distinguish goods or services with which the proprietor of the trade mark is or may be connected in the
course of trade from goods or services in the case of which no such connection subsists . . ."
In order to be registrable in Part B of the register, a trade mark had to be capable of becoming distinctive
through use (section 11).
[26] It follows from this historical analysis that reliance on English or Australian (which followed the former's lead)
cases dealing with the validity of a trade mark consisting of a word which is according to its ordinary
signification a geographical name are of little if any value in
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interpreting our statutes. In this regard, I refer particularly to judgments such as Yorkshire Copper Works Ltd's
Application 1953 (70) RPC 1 (CA), Mid Sydney Pty Ltd v Australian Tourism Co Ltd and others [1998] FCA 1616
and Re Chancellor, Masters and Scholars of the University of Oxford t/a Oxford University Press v The Registrar of
Trade Marks [1990] FCA 175. As I have stated before in the context of laudatory marks:
"Intellectual property laws and principles are not locked in a time capsule or a straitjacket and judicial expositions
should be read in context" (First National
Page 419 of [2010] 2 All SA 409 (SCA)
Bank of SA Ltd v Barclays Bank plc 2003 (4) SA 337 (SCA), [2003] 2 All SA 1 (SCA) at paragraph [10]).
[27] A major shift in the approach to trade marks followed the adoption of the European Union's directive on trade
marks during 1988. The United Kingdom was obliged to bring its laws into conformity with the directive and
did so by the passing of the Trademarks Act of 1994. As was pointed out in Inter Lotto (UK) Ltd v Camelot
Group plc [2003] EWCA Civ 1132, the 1994 UK Act is a hybrid with two main European sources: the Directive,
aimed at harmonisation of the national trademarks laws, and the Regulation, introducing the new Community
trademark. Our country decided to follow this lead and passed the 1993 Act, which was based on the bill that
led to the adoption of the UK Act in 1994. Our law is now in many respects the same as that of the UK and of
the European Community.
[28] The effect of the English development was described by Arden LJ in these terms in David West t/a Fastenders v
Fuller Smith and Turner plc [2003] EWCA Civ 48 at paragraph [69]:
"To a much greater degree, this case illustrates the break with our domestic past brought about by the 1994 Act. The
words [Extra Strong] for which the first two initials [E.S] stand are merely laudatory words, the mark [E.S.B.] consists
purely of initials and the words [Extra Strong/Special Bitters] connoted by the initials are mere descriptors. This
concatenation of features would have made it difficult for this mark to survive the present attack under our pre1994
Act domestic law. If King Canute had been a trademark agent, the waters of Community law, which Lord Denning
depicted as rushing up our native shores, would surely have overwhelmed him by now. As the respondent submits,
one has to start by forgetting the preconceptions of pre1994 Act trade mark law."
[29] Against this background, I proceed 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. Its wording was derived from article 3 of the European
Directive, which also provides that trade marks "which consist exclusively of signs or indications which may
serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the
time of production of the goods or of rendering of the service, or other characteristics of the goods" may not
be registered or, if registered, are liable to be declared invalid. It should be noted that this provision does not
deal with what are called geographical
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indications such as Champagne which connotes a sparkling wine with a particular geographical origin. These
are covered by section 42 under the heading "certification trade marks".
[30] 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 services concerned, and which are therefore associated with those goods in the mind of the relevant class
of persons". It also prohibits registration of geographical names that are likely to be used by undertakings.
They ought to remain available as indications of the geographical origin of the category of relevant goods or
services (Peek and Cloppenburg KG's Application [2006] ETMR 33 at paragraph [34]).
Page 420 of [2010] 2 All SA 409 (SCA)
[31] Section 10(2)(b) must be read in context. It also deals on the same basis with marks that may designate the
kind, quality, quantity, intended purpose, value, or other characteristics of the goods or services. It is not
concerned with distinctiveness or its loss. That is dealt with in section 10(2)(a),4 w h i c h i n t u r n i s t h e
counterpart of section 95 to which it refers. The prohibition is not directed at protecting trade mark use only
but goes wider: it is sufficient if the name may "designate" the geographical origin of the goods or services.
[32] It has been said that the provision serves a public interest permitting all to use such descriptive signs freely
by preventing them from being reserved to one undertaking alone because they have been registered as