30 June 2010

A new century for geographic indications?

In Century City Apartments Property Services CC vs Century City Property Owners Association 2009 JDR 1268 (SCA), the Supreme Court of Appeal (the Court) held that the trade mark CENTURY CITY has become descriptive of the geographic location from where services are provided under the CENTURY CITY trade mark in various trade mark classes. 

Century City is a large residential and commercial development next to the N1, just outside Cape Town. The sprawling development consists of housing complexes, hotels, restaurants and one of the largest shopping centres in the Southern Hemisphere.

The Century City Property Owners Association was the proprietor of trade mark registrations for CENTURY CITY in, amongst others, class 36 (property development services) and class 42 (accommodation, marketing, provision of food and drink). The original developer of the Century City shopping and residential area filed these applications in 1997.

Century City Apartments began trading in 2006 and registered the domain name centurycityapartments.co.za.

The Property Owner's Association sought an interdict against Century City Apartments, restraining them from incorporating CENTURY City as part of a close corporation or domain name.

In a counter-application, Century City Apartments argued that CENTURY CITY no longer simply designated the services of the Property Owner's Association exclusively, but had become the name of a place which designates the geographical area from where services are delivered by traders located at the Century City development.

Although Century City Apartments acknowledged that, in 1997, CENTURY CITY was in fact capable of distinguishing the developer's services from the goods or services of other parties, CENTURY CITY had since become a place name and lost its distinctiveness. They relied on section 10(2)(b) of the Trade Marks Act 194 of 1993 (the Act), which provides that a mark consisting of a sign that serves in the trade to designate the geographic origin of the goods or services shall be vulnerable to be removed from the register. Section 24(1) of the Act further provides that an interested person may apply for an order to court for the removal of an entry wrongly remaining on the register.

In finding in favour of the Property Owners, the Cape High Court dismissed the counter-application and the matter was referred to appeal.

The Court found that Century City had indeed become the name of a geographical location. There were numerous commercial enterprises offering services mentioned under the class 42 registration, and several estate agencies offering services in Century City.

The Court therefore held that the marks in class 35 (in respect of management services), class 36 (property development services), class 41(entertainment services) and class 42 (accommodation, marketing, provision of food and drink) did in fact fall foul of the provisions of section 10(2)(b) in that the trade marks have become descriptive of the geographic origin of the services. The claim based on trade mark infringement was accordingly dismissed, and the Property Owner's Association's registrations were revoked, with the class 35 mark being amended to exclude management services.

Eben van Wyk, Director, Intellectual Property
Rico Burnett, Associate, Intellectual Property

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