trade marks (Peek and Cloppenburg (supra) at paragraph [32]). In addition:
". . . it is in the public interest that they [the geographical names] remain available, not least because they may be an
indication of the quality and other characteristics of the categories of goods concerned, and may
View Parallel Citation
also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give
rise to a favourable response" (Windsurfing Chiemsee Produktions und Vertriebs GmbH v Boots und Segelzubehör
Walter Huber and Franz Attenberger [1999] ETMR 585 at paragraph [26]).
[33] Counsel debated the meaning of "exclusively" in the context of the provision but there can be little doubt that
it means that the prohibition is directed at a mark that consists of a geographical name without more. A
device that includes a geographical name would not be hit nor would a name mark consisting of a
geographical name with something more be covered. I shall revert to this issue (compare the reasoning in
Cambridge Plan AG v Moore 1987 (4) SA 821 (D) at 844DH [also reported at [1987] 1 All SA 123 (D) Ed]).
What this means is that Gordon's London Gin would be a permissible trade mark but not "London" in respect
of gin.
[34] This leads to another aspect and that concerns the nature of the goods or services. London has at least since
the 18th century had an association with gin. But Bloemfontein does not have one and there appears to be
no reason why the name Bloemfontein per se cannot be used as a trade mark for gin in the same way as
Windhoek, a wellknown trade mark and the capital of Namibia, is used as a trade mark for beer. The
explanation is to
Page 421 of [2010] 2 All SA 409 (SCA)
b e f o u n d i n Bellagio LLC's Application [2006] ETMR 79. The applicant sought to register the trade mark
"Bellagio" in four different classes, namely, class 25 for clothing; class 35 for retail services; class 41 for
entertainment services; and class 42 for hotels and the like. The application was granted in respect of the first
two classes but refused in relation to the last two. The reasons, in summary, were these: Bellagio is a village
on Lake Como in Northern Italy; it is a noted lakeside resort; the travelling public would associate the name of
the village with entertainment and hotels; and therefore the mark could not be registered in connection with
these services. However, the public would not necessarily associate the village with clothing or retail services
and in connection with those services the prohibition did not apply.
[35] In Peek and Cloppenburg (supra), the applicant sought to register the name Cloppenburg in respect of retail
services. Cloppenburg is a small town in Germany and the application for registration was refused in the first
instance on the ground that the applicant's services would have been supplied from that town, and to that
end users would have perceived the town name as an indication of geographical origin. The court upheld the
appeal, holding that a sign's descriptiveness cannot be assessed other than by reference to the goods or
services concerned, on the one hand, and by reference to the understanding which the relevant persons have
of it, on the other (at paragraph [38]). It said:
"In making that assessment the [trade mark] Office is bound to establish that the geographical name is known to the
relevant class of persons as the designation of a place. What is more, the name in question must suggest a current
association, in the mind of the relevant class of persons, with the category of goods or services in question, or else it
must be reasonable to assume that such a name may, in the view of
View Parallel Citation
those persons, designate the geographical origin of that category of goods or services."
The Century City marks
[36] With this in mind it is now necessary to consider the facts that are relevant to the appellant's contention that
"Century City" consists exclusively of a sign or an indication which may serve, in trade, to designate the
geographical origin of the services covered by the Association's registrations. The device marks can
immediately be discounted from consideration on this aspect because, as said, they do not consist
"exclusively" of what the appellant contends is a geographical location, namely Century City. However, the
name marks have to be considered in due course.
[37] The main contention of the appellant was that although when the trade mark applications were made the
name Century City had no geographical significance and that the trade marks were accordingly properly
registered the name at the date of the counterapplication had become a place name and was therefore
liable to be removed from the register under section 10(2)(b).
[38] I have at the outset referred to Century City as a huge commercial and residential "development" falling
within the municipality of the City of Cape Town and, more particularly, the suburb Montague Gardens. I have
also mentioned that it was always the intention that Century City would be one development, independently
functioning and operating, providing
Page 422 of [2010] 2 All SA 409 (SCA)
a cross pollination of services and industries to the owners and tenants within Century City. It would be, it
was said in the founding affidavit, a city within a city, presenting a high value investment opportunity to the
owners of property within the development providing commercial, business, retail, residential and leisure