Location can eat away at the rights of an existing trade-mark

Virgil Cojocaru is a JD candidate at Osgoode Hall Law School.

The South African Supreme Court of Appeal ruled on Century City Apartments Property Services CC and the Registrar of Companies and Close Corporations v Century City Property Owners Association. A helpful article on the case can be found at the Adams & Adams website. They represented the appellant.

In December 2007 Century City Property Owners Association sued Century City Apartment Property Services CC for trade mark infringement. Most pertinent was the trade mark registration for Century City’ as regards to retail, wholesale, marketing, distribution, hiring, leasing, mail order and all kinds of merchandising services.

The Appellant (Century City Apartment Property Services CC), had brought a counter-application seeking the revocation of the trademarks. Its argument centered on Section 10(2)(b) of the Trade Marks Act 194 of 1993.

Section 10 of the Trade Marks Act 194 of 1993 covers marks that should not be registered, or if registered are liable to be removed from the register. Unregistrable under section 10(2) is a mark which:  “(b) consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of rendering of the services.”

The Appellant’s position was that the marks owned by the Property Owners Association, no longer represented its services. This was established in two steps. First, Century City began reflecting the place’s name. Second, the services of many other businesses moved or appeared in the location now known as Century City. Therefore, Century City is now a mark which serves to designate the geographic origin of the many goods and services provided there. It cannot be limited to the property owners association.   

The Supreme Court of Appeal focused on the services offered under the trade mark. Its first step was to decide whether Century City had become a place name within the meaning of s. 10(2)(b) of the Trade Marks Act 194 of 1993. It concluded that Century City had become a place name. The mark was now a geographic origin; the development of the area had led to this result. Back in 1997, the original developer could register the trademark; there was no location called ‘Century City’ yet. This changed over time. Second, could the mark serve, in trade, to designate geographical origin for the services offered in the classes of the trade mark registration? Given that so many businesses had moved into the area, which offer the services under the Century City trade mark registration (retail, wholesale, marketing, distribution, hiring, leasing, mail order, etc.), it may serve to designate the geographic origin of those services. Thus, the Court ordered that the mark registration be expunged for those classes of services falling under s. 10(2)(b) of the Trade Marks Act.

In Canada, Section 10 under the Canadian Trade-marks Act deals with a mark that has by ordinary commercial usage come to designate a place of origin. It is meant to prohibit the adoption of a general mark denoting location as a private trade mark (monopolization), or the adoption of a similar mark that would be misleading.