Century City Apartments Property Services CC v Century City Property Owners' Association

Century City Property Owners' Association (the Association), a section 21 non-profit home owners' association, owned several trade mark registrations for "Century City" (name marks and device marks) across various classes (35, 36, 41, and 42). Century City is a large commercial and residential development of approximately 300 hectares on land next to the N1 highway in Cape Town, falling within the suburb of Montague Gardens. The development began in 1997 and included a business park, housing, office blocks, Ratanga Junction theme park, and Canal Walk Shopping Centre. Century City Apartments Property Services CC (the appellant) operated an accommodation agency using the name "Century City Apartments" as its business/brand name and internet domain name. The Association sued for trade mark infringement, passing-off, and sought an order that the appellant's corporate name was undesirable under section 20 of the Close Corporations Act. The appellant counter-applied for revocation of the Association's trade mark registrations under section 10(2)(b) of the Trade Marks Act, arguing that "Century City" had become a geographical location name. The High Court (Davis J) granted all relief sought by the Association. The appellant appealed with leave.

• Whether the appellant's use of 'Century City Apartments' as a business/brand name and domain name constituted trade mark infringement under section 34(1)(a) and (b) of the Trade Marks Act 194 of 1993
• Whether the appellant's use of its corporate name 'Century City Apartments Property Services CC' infringed the Association's trade marks
• Whether the appellant's device marks were infringed
• Whether the appellant could rely on the defence under section 34(2)(b) that its use was a bona fide description or indication of geographical origin
• Whether the Association's trade mark registrations for 'Century City' should be revoked under section 10(2)(b) as consisting exclusively of a sign or indication which may serve to designate the geographical origin of services
• Whether the appellant's corporate name was undesirable under section 20 of the Close Corporations Act 69 of 1984
• Whether the appellant was guilty of passing-off

1. The appeal was upheld with costs. 2. The High Court order was substituted with: a. The Association's application dismissed with costs. b. In respect of the counter-application: i. Trade mark registrations 1997/14283 (class 41), 1997/14281 (class 36), and 1997/14282 (class 42) were revoked. ii. Trade mark registration 1997/14280 (class 35) was rectified by deletion of the words "management services". iii. The Association to pay the costs of the counter-application.

1. A trade mark consisting exclusively of a geographical location name is prohibited under section 10(2)(b) of the Trade Marks Act 1993 and liable to revocation if it consists of a sign or indication which may serve, in trade, to designate the geographical origin of the services, regardless of when it acquired geographical significance. 2. For section 10(2)(b) to apply: (a) the geographical name must be known to the relevant class of persons as the designation of a place; and (b) the name must suggest a current association with the category of goods/services, or it must be reasonable to assume it may designate the geographical origin of that category. 3. The word "exclusively" in section 10(2)(b) means the prohibition applies only to marks consisting of a geographical name without more - it does not apply to complex marks (like device marks) that include a geographical name, or to geographical names that are part of a composite word mark. 4. A planned commercial/residential development can constitute a "geographical location" for purposes of section 10(2)(b) even if it is not a traditional municipality or suburb. 5. The assessment of whether a name may serve to designate geographical origin must be made by reference to the specific goods or services concerned and the understanding of the relevant class of persons. 6. The "blameworthiness" test from GE Trade Mark does not form part of the test for revocation under section 10(2)(b) of the 1993 Act, though wrongful acts by third parties cannot destroy trade mark rights. 7. To establish trade mark infringement under section 34(1)(a), marks need not be absolutely identical - confusing similarity suffices. The assessment is global, considering visual, aural and conceptual similarities, focusing on dominant components and the overall impression on the average consumer. 8. Use of a trade mark in a purely descriptive manner (non-trade mark use) does not constitute infringement. The defence under section 34(2)(b) protects bona fide descriptive use of geographical origin indications.

1. **Excessive documentation in IP litigation**: Harms DP made strong obiter remarks criticizing the practice of presenting excessive documentation in trade mark cases, warning that courts should act firmly to disallow costs, especially between attorney and client, where parties engage in "paper wars". The Court noted this case involved a 1557-page record for what should have been a straightforward matter. 2. **Evolution of trade mark law**: The Court observed that intellectual property laws "are not locked in a time capsule or a straitjacket and judicial expositions should be read in context", emphasizing the need to interpret authorities in their proper legislative framework. 3. **Possibility of reformulated registration**: The Court noted (without deciding) that the Association might be able to apply to have the "Century City" name registered in some classes if the relevant services were more appropriately and narrowly defined. 4. **Function of additional descriptive words**: The Court provided guidance that additional words in a composite mark may function adjectivally rather than as part of the badge of origin, drawing on the Royal Berkshire Polo Club case to illustrate how context matters in assessing confusing similarity. 5. **Device marks and modes of use**: The Court observed that different types of trade marks are used differently (as recognized in the definition of "use" in section 2(2) of the Act), and that the value and distinctiveness of device marks depends heavily on visual impact, which may be neutralized where services are not marketed visually.

This case is significant in South African trade mark law for several reasons: 1. **Geographical names as trade marks**: It provides comprehensive guidance on when marks consisting of geographical location names are prohibited under section 10(2)(b) of the Trade Marks Act 1993, including that such names can become geographical after registration. 2. **Interpretation aligned with EU law**: The judgment emphasizes that South African trade mark law under the 1993 Act represents a fundamental break from pre-1993 domestic law, being based on EU directives. It clarifies that older English and Commonwealth authorities based on different legislative frameworks must be approached with caution. 3. **Public interest in geographical names**: It reinforces the public interest principle that geographical names should remain available for use by all traders in the relevant location and not be monopolized by one entity through trade mark registration. 4. **Developments as geographical locations**: The case establishes that planned developments (like Century City) can become geographical locations for trade mark law purposes, even if they are not traditional suburbs or municipalities. 5. **Blameworthiness test limitation**: The Court clarified that the "blameworthiness" test from GE Trade Mark does not apply to section 10(2)(b) revocations under the 1993 Act, though wrongful acts by third parties cannot destroy trade mark rights. 6. **Device marks vs word marks**: The judgment provides useful guidance on assessing infringement of device marks containing words, emphasizing the importance of visual impact where services are marketed visually. 7. **Costs warning**: The judgment includes a strong rebuke about excessive documentation in intellectual property cases and warns practitioners about proportionality.