Lubbe NO and Others v Millenium Style (Pty) Ltd. (69/06) [2007] ZASCA 10; [2007] 4 All SA 692 (SCA); 2007 (6) SA 241 (SCA); 2007 BIP 133 (SCA) (16 March 2007)

Lubbe NO and Others v Millenium Style (Pty) Ltd. (69/06) [2007] ZASCA 10; [2007] 4 All SA 692 (SCA); 2007 (6) SA 241 (SCA); 2007 BIP 133 (SCA) (16 March 2007)

The Supreme Court of Appeal held that the trade marks in question, consisting of shoe sole designs, were not registrable under the Trade Marks Act 62 of 1963, as shapes and configurations were excluded from registration and could not be considered 'devices' for trade mark purposes. The marks lacked distinctiveness in the trade mark sense, serving only ornamental or functional roles and not indicating source of origin. The evidence showed that the marks had not been used as trade marks for over twenty years and would be perceived by the public as tread designs. The respondents were found to be 'interested persons' entitled to seek expungement, as they operated in the relevant trade area....

Citation
[2007] ZASCA 10
Parties
Appellant: Andries Petrus Lubbe NO; Appellant: Willem Petrus Lubbe NO; Appellant: Hilton Savin NO; Appellant: Paul Oliver Sauer Meaker NO; Appellant: Corrida Holdings (Pty) Limited; Appellant: Corrida Shoes (Pty) Limited; Respondent: Millennium Style (Pty) Limited; Respondent: Brett George Hodgson NO; Respondent: Pulse Polyurethane Manufacturers (Pty) Limited; Respondent: Guy Bowman
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
16 March 2007
Case Number
69/06
Procedural Posture
Civil Appeal / Appeal From High Court Judgment on Trade Mark Infringement and Expungement
Outcome
Appeal dismissed with costs, including costs of two counsel.
Judges
Harms, Brand, Cloete, Ponnan, Cachalia
Legal Topics
Trade Mark Expungement, Distinctiveness, Shape Marks, Rectification of Register, Trade Mark Infringement
Intellectual Property Trade Mark Expungement Distinctiveness Shape Marks Rectification of Register Trade Mark Infringement

Case Brief

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Parties

Andries Petrus Lubbe NO

Appellant

Willem Petrus Lubbe NO

Appellant

Hilton Savin NO

Appellant

Paul Oliver Sauer Meaker NO

Appellant

Corrida Holdings (Pty) Limited

Appellant

Corrida Shoes (Pty) Limited

Appellant

Millennium Style (Pty) Limited

Respondent

Brett George Hodgson NO

Respondent

Pulse Polyurethane Manufacturers (Pty) Limited

Respondent

Guy Bowman

Respondent

Procedural Posture

Civil Appeal / Appeal From High Court Judgment on Trade Mark Infringement and Expungement

Legal Issues

  1. 1 Whether the registered trade marks, consisting of shoe sole designs, were registrable under the Trade Marks Act 62 of 1963.
  2. 2 Whether the marks were capable of distinguishing in the trade mark sense and thus valid.
  3. 3 Whether the respondents were 'interested persons' entitled to seek expungement of the marks.

Ratio Decidendi

The Supreme Court of Appeal held that the trade marks in question, consisting of shoe sole designs, were not registrable under the Trade Marks Act 62 of 1963, as shapes and configurations were excluded from registration and could not be considered 'devices' for trade mark purposes. The marks lacked distinctiveness in the trade mark sense, serving only ornamental or functional roles and not indicating source of origin. The evidence showed that the marks had not been used as trade marks for over twenty years and would be perceived by the public as tread designs. The respondents were found to be 'interested persons' entitled to seek expungement, as they operated in the relevant trade area....

Court Disposition

Appeal dismissed with costs, including costs of two counsel.

Orders

  • The appeal is dismissed with costs, including those consequent upon the employment of two counsel.
  • The trade marks in question are to be expunged from the register.