First National Bank of Southern Africa Ltd v Barclays Bank PLC and Another

First National Bank of Southern Africa Ltd (FNB) applied for the registration of the trade marks “Premier” and “Premier Package” in relation to cheques, banking services and credit card services. Barclays Bank PLC opposed the applications. The applications predated the Trade Marks Act 194 of 1993 and therefore had to be decided under the repealed Trade Marks Act 62 of 1963. The Registrar of Trade Marks (acting through an appointed judge) refused registration, and this refusal was upheld by a Full Court. FNB appealed to the Supreme Court of Appeal, arguing that the marks were registrable in Part A or alternatively Part B of the register. Barclays opposed registration on the grounds that “Premier” is a laudatory and descriptive word, not distinctive, and reasonably required for use in the trade.

The appeal was dismissed with costs, including the costs of two counsel. The refusal to register the trade marks “Premier” and “Premier Package” was confirmed.

This judgment is an important South African authority on the registrability of laudatory and descriptive trade marks. It clarifies that while laudatory words are not automatically unregistrable, they will be refused registration where they are not distinctive or are reasonably required for use in the trade. The case reinforces the public-interest function of section 10(1A) of the Trade Marks Act 62 of 1963 and cautions against equating extensive use with acquired distinctiveness.