South African Apartheid Museum at Freedom Park v Stainbank and Another (10152/08) [2010] ZAGPJHC 143; 2010 BIP 148 (GSJ) (23 February 2010)
The court found that the trade mark 'THE APARTHEID MUSEUM' had not been used by the first respondent in the manner required by section 27(1)(b) of the Trade Marks Act. Furthermore, the mark was not capable of distinguishing the services of the first respondent from those of others, particularly given the historical...
Source-derived case information.
- Citation
- [2010] ZAGPJHC 143
- Parties
- Applicant: The South African Apartheid Museum at Freedom Park; Respondent: Arnold Michael Stainbank; Respondent: The Registrar of Trade Marks
- Court
- South Gauteng High Court, Johannesburg
- Jurisdiction
- South Africa
- Case Number
- 10152/08
- Procedural Posture
- Review Application / Judgment
- Outcome
- Application granted; the trade mark registration is to be expunged from the register.
- Judges
- Willis
- Legal Topics
- Trade Mark Expungement, Non Use of Trade Mark, Distinctiveness of Mark, Likelihood of Confusion
Source-derived case record
Summary, issues, holding and outcome
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Parties
The South African Apartheid Museum at Freedom Park
Applicant
Arnold Michael Stainbank
Respondent
The Registrar of Trade Marks
Respondent
Procedural Posture
Review Application / Judgment
Legal Issues
- 1 Whether the trade mark 'THE APARTHEID MUSEUM' registered by the first respondent should be expunged for non-use under section 27(1)(b) of the Trade Marks Act.
- 2 Whether the mark is capable of distinguishing as required by section 10(2)(a) read with section 9 of the Trade Marks Act.
- 3 Whether the use of the mark by the first respondent is likely to cause confusion under section 10(2) of the Trade Marks Act.
Ratio Decidendi
The court found that the trade mark 'THE APARTHEID MUSEUM' had not been used by the first respondent in the manner required by section 27(1)(b) of the Trade Marks Act. Furthermore, the mark was not capable of distinguishing the services of the first respondent from those of others, particularly given the historical and descriptive nature of the term 'Apartheid Museum'. The court held that the continued registration of the mark was likely to cause confusion among the public, as the term is associated with a public institution rather than a private entity. Accordingly, the entry was wrongly remaining on the register and should be expunged.
Court Disposition
Application granted; the trade mark registration is to be expunged from the register.
Orders
- The Registrar of Trade Marks is directed to expunge trade mark Registration No 98/13337 'THE APARTHEID MUSEUM' in Class 35 from the register.
- No order as to costs.
Full Case Text
Judgment text and source record
58 paragraphs
IN THE HIGH COURT OF SOUTH AFRICASOUTH GAUTENG HIGH COURT
JOHANNESBURG
CASE No. 10152/08
REPORTABLE
In the matter between:
THE SOUTH AFRICAN APARTHEID
MUSEUM AT FREEDOM PARK …...................................Applicant
and
ARNOLD MICHAEL STAINBANK ….................................First Respondent
THE REGISTRAR OF TRADE MARKS............................Second Respondent
____________________________________________________________
JUDGMENT
WILLIS J:
[1] The applicant seeks an order directing the Registrar of Trade Marks, the second respondent, to expunge from the Trade Marks Register, trade mark Registration No 98/13337 THE APARTHEID MUSEUM in Class 35 entered in the name of the first respondent on one or more of the following grounds:
non-use as contemplated by section 27(1) (b) of the Trade Marks Act, No. 194 of 1993, as amended (“the Trade Marks Act”);
the mark is not capable of distinguishing within the meaning of Section 10 (2) (a) read with section 9 of the Trade Marks Act, and that the entry was therefore wrongly made in and remains an entry wrongly remaining on the Register in terms of Section 24 (1) of the Trade Marks Act;
the use of the mark by the first respondent, in relation to the services for which it is registered, would be likely to cause confusion within the meaning of Section 10 (2) of the Trade Marks Act, and therefore constitutes an entry wrongly remaining on the Register within the meaning of section 24 (1) of the Trade Marks Act.
1 1957 (4) SA 234 (C).
2 [1984] ZASCA 51; 1984 (3) SA 623 (A).
3 1956 (4) SA 150 (E) at 154G.
4 (August 2003 ) The Law of The Brand 1
5 (536/98) [2009] ZA SCA 86 (7 September 2009).
6 (Case no. 13942/86 delivered on 18 December, 1987 in the then Transvaal Proviniial Division).
7 The “Wind of Change” speech is easily accessible on the internet. See, for example, africanhistory.about.com/…/p/wind_of_change2.htm. Accessed 17th February, 2010. The following excerpts from the speech, do, in my opinion, illustrate my point:
“The wind of change is blowing through this continent…”
“…whether we like it or not…”
“The struggle is joined…”
“Our justice is rooted in the same soil as yours – in Christianity and in the rule of law as the basis of a free society.”
“Let me be very frank with you, my friends.”
“I hope you won’t mind my saying frankly that there are some aspects of your policies which make it impossible for us to do this (give South Africa our support and encouragement) without being false to our own deep convictions about the political destinies of free men…”
“Nearly two thousand years ago…St Paul proclaimed one of the great truths of history – we are all members of one another.”
“Today it is impossible for nations to live in isolation from one another.”
“… (quoting John Donne) never send to know for whom the bell tolls; it tolls for thee.”
“I hope – indeed, I am confident – that in another fifty years we shall look back on the differences that exist between us now as matters of historical interest…”
“Let us remember these truths.”
I share the view of Brian MacArthur, the editor of The Penguin Book of Twentieth Century Speeches, (second revised edition; London: Penguin Books. 1999) that Macmillan’s speech was one of the great speeches of the twentieth century. In that book this speech is published along with the Inaugural Addresses of Presidents Nelson Mandela and John F. Kennedy, Martin Luther King’s I Have a Dream, Franklin D, Roosevelt’s The only thing we have to fear is fear itself and various other speeches.
8 See, for example, The Oxford Dictionary.
9 I may mention that in Nelson Mandela’s Inaugural Address, appearing in The Penguin Book of Twentieth Century Speeches (see footnote 6 above), and to which I had the privilege of listening while among the crowds gathered on the lawns of the Union Buildings on 10th May, 1994, he said “Never, never and never again shall it be that this beautiful land will again experience the oppression of one by another and suffer the indignity of being the skunk of the world”. These words suggest to me that Mandela, at least, considered apartheid to have been consigned to the rubbish bin of history in 1994.
10 The author was the Roman comic playwright, Publius Terentius Afer (Terence) writing in Phormio. The longer quote is: “Quot homines, tot sententiae: suo quoique mos”. – “There are as many opinions as there are people: each has his own correct way”.
11 Newnes Family Dictionary
12 See, for example, R v Cheeseborough and Another 1948 (3) SA 756 (T) at 756.
13 [ 1938] 55 RPC 125 (PC) at 45.
14 2003 (3) SA 639 (SCA) at 648G. See also Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty) Ltd 190 (1) SA 722 (A) at 729G.
15 [2000] ZASCA 2; 2000 (2) SA 771 (A).
16 At paragraph [7] (p777H-778A)
17 [1999] RPC 809 (CA).
18 At paragraph [17] of the Beecham v Triomed case
19 At paragraph [9]
20 At paragraph [9].
21 See The Oxford Dictionary
22 Ibid.
23 Ibid.
24 Ibid.
25 Ibid.
26 Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd (supra).
27 At 779A.
28 At paragraph [17}.
29 [1993] RPC 217 [CA] at 230, line 10 et seq.