[29] T h e Verklarende Afrikaanse Woordeboek (ed Labuschagne and Eksteen, 1992) defines "lotto" as "1. soort
getallelotery 2. Soort kinderspel op 'n bord met skyfies wat vakkie tot vakkie geskuif word".
[30] Lastly in this excursus mention must be made of the great Woordeboek van die Afrikaanse Taal ("WAT"),
Negende Deel L (1994) which gives: "'lotto'
View Parallel Citation
as (It). Soort dobbelspel waarby die deelnemers getalle lukraak trek en die wenner die een is wat eerste 'n ry
getalle op sy speelkaart afgemerk het".3
[31] It is unnecessary to delve further. Certain conclusions can fairly be drawn from the preceding citations. The
first is that the word "lotto" was alive in South African language usage at the time of the registration in 1991
Page 478 of [2009] 4 All SA 470 (SCA)
and had been for many years. It is impossible to determine how widely the word was known or used but it is
reasonable to believe that it was present in the vocabulary of literate persons in at least English and
Afrikaans language groups. One may also take judicial notice of the fact that gambling and the language of
gambling had transcended national borders long before it mushroomed on the internet in the late 1990s.
Second, the concept of lotto as a genus of games of chance which embraces a variety of species seems clear.
The common element of the genus seems to be the matching of chosen or allotted numbers against numbers
randomly generated. Save in relation to the children's version of the game, each species is adapted to
gambling and the demands of private or public participation. Hence each operator will bring to the basic
format refinements which assist him in increasing demand, just as has Uthingo has done in formulating the
rules for the Lotto game.
[32] But just as the term "motor car" generally embraces many different manifestations both in design, and name,
none of which entitles anyone to the sole trading use of the generic name, so was it with "lotto" at the
relevant time. By adopting the word simpliciter (without adaptation or qualification) as a trade mark for lottery
services, the registering party simply appropriated to itself a word already in general circulation which
possessed an ascertainable generic and descriptive meaning over which it could have no monopoly and which
should have been open to use by all competitive undertakings in the gaming industry. The word "lotto" could,
as counsel for OnLine have submitted, contribute nothing to identifying the source of the service which it
promoted. Moreover, as stressed earlier, the Board and its operator could not enhance the inherent absence
of power to distinguish by creating a game to which they chose to apply the generic description "lotto".
View Parallel Citation
[33] We were referred in argument by counsel for OnLine to rulings of the Office for Harmonisation in the Internal
Market ("Trade Marks Department"), which is the arm of the European Union which deals with trade mark
disputes. Those emphasised by counsel were: ruling on opposition number B934 101 (21/12/2007) "Magic
Lotto", ruling on opposition number B907 156 (18/12/2006) "motoloto", and the decision of the First Board of
Appeal in case R1019/20001(9/1/2002) "EuroLotto Privat System". None of these authorities was by reason
of differences in time and location relevant to the understanding of the South African public in 1991 and I
understood counsel to rely on them purely in principal support of his argument that the word "lotto" carries no
distinctive force. Suffice to say that the conclusion reached in all those decisions was consistent with the view
I have taken.
[34] The respondents face a further problem which strikes at the heart of the validity of their trade mark. The
terms of the class 36 registration are "services for and in connection with lotteries". "Lottery" as defined in
section 1 of the Lotteries Act:
"includes any game, scheme, arrangement, system, plan, promotional competition or device for distributing prizes by
lot or chance and any game, scheme, arrangement, system, plan, competition or device, which the Minister may by
Notice in the Gazette declare to be a lottery."
Uthingo was authorised by the Board to operate the National Lottery which, as defined in section 1, means
"the lottery contemplated in Part 1 of this Act and includes all lotteries conducted under the licence for the
Page 479 of [2009] 4 All SA 470 (SCA)
National Lottery, taken as a whole". The licence granted by the Board empowered Uthingo to operate not
only the main lottery (which takes the form of the game described above and which the respondents contend
is distinguished by the "Lotto" trade mark as their service) but also "Constituent Lotteries" each of which was
to have its own rules, and any "Lottery Ancillary Activity". It is, thus, plain that the registration, even on the
Board's categorisation of the Lotto game as a permissible adaptation to which the term could properly be
applied, went far beyond the limits of that game to forms of gambling which need bear no relationship to the
"lotto" concept.4 The effect of the registration was thus to draw into the exclusive domain of the Board and
its operator all forms of lotteries. They have, however, not attempted to show either the use of the trade
mark for those broader aims or the distinguishing force of the mark in relation to them. It is also probable that
at the date of registration neither the proprietor nor the public understood "lotto" as possessing the breadth
which the registration purports to bring about.
[35] That leaves the matter of the registration of the trade mark LOTTO in class 36, "services for or in connection
with financial transactions". Such transactions are not defined in the Act or in the schedule of classification of