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

FNB applied for registration of the trade marks 'Premier' and 'Premier Package' in relation to cheques, banking, and credit card services on 29 March 1995. The applications were made under the Trade Marks Act 62 of 1963 (as they predated the 1993 Act). Barclays Bank opposed the applications. FNB had historical links with Barclays (originally being known as Barclays National Bank) which were severed in the 1980s during disinvestment. Prior trade marks involving 'Barclays Premier Card' and 'Premier Barclays Cheque' had been cancelled by agreement between the parties. Eloff J, sitting as Registrar, refused the applications. An appeal to the Full Court (Spoelstra J, with Daniels and van der Westhuizen JJ concurring) was dismissed. FNB appealed as of right to the Supreme Court of Appeal.

• Whether the word 'Premier' was inherently distinctive as at the date of application, entitling it to registration in Part A of the register
• Whether the mark had become distinctive through use by the date of application
• Whether the mark was capable of becoming distinctive through use, entitling it to registration in Part B
• Whether the mark was reasonably required for use in the trade and thus prohibited from registration under section 10(1A) of the Trade Marks Act 62 of 1963
• Whether Barclays was estopped from opposing the application based on previous conduct

The appeal was dismissed with costs, including costs consequent upon the employment of two counsel. The applications for registration of 'Premier' and 'Premier Package' were refused.

A word that performs a purely descriptive or adjectival function (such as 'premier' in the context of banking services) is not inherently distinctive for purposes of Part A registration under the Trade Marks Act 62 of 1963. While such a word may be capable of becoming distinctive through use (qualifying for Part B registration), it will be refused registration if it is 'reasonably required for use in the trade' under section 10(1A). The test for whether a mark is reasonably required for use in the trade is objective: would it be reasonable for competitors in the same trade to wish to use the word in describing their own products or services? Evidence is not essential for this determination; the court must exercise a value judgment. Extensive use of a mark does not automatically establish distinctiveness - the question is whether the word has displaced its common meaning and come to denote the mark of a particular trader.

The Court questioned whether the Registrar could properly amend applications for trade mark registration while those applications were subject to an appeal, noting that rights of parties are usually frozen upon litis contestatio, though it was unnecessary to decide the point as it was not argued. The Court also noted, without deciding, the question of whether estoppel could be invoked where the purity of the register or public interest is involved, stating this should not be decided in the absence of full argument. Harms JA observed that the 'doctrine' of laudatory epithets may be a rule of thumb that has been wrongly elevated into a general proposition of law, and that the suggestion that registration of a trade mark excludes the public from using it is hyperbolic. The Court also corrected a previous statement by Harms JA in Cadbury v Beacon Sweets regarding the adjectival function of trade marks. The Court expressed the view (with the advantage of hindsight) that some older decisions may have overstepped the mark, questioning whether manufacturers of polish really required the word 'Marvel' in their trade.

This case is significant in South African trade mark law for: (1) Clarifying the scope of the 'laudatory epithets' doctrine in South African law, explaining that it is not an absolute prohibition but rather must be analyzed in the context of distinctiveness and whether the mark is reasonably required for use in the trade. (2) Distinguishing between adjectives (which describe) and trade marks (which are names given to goods or services), and emphasizing that trade marks generally do not perform an adjectival function. (3) Establishing that extensive use of a mark does not automatically equal distinctiveness - the court must examine whether the word has displaced its common meaning and come to denote the mark of a particular trader. (4) Applying section 10(1A) of the 1963 Act to prevent registration of marks reasonably required for use in the trade, using an objective test focused on whether it would be reasonable for competitors to use the word in describing their own products or services. (5) Clarifying that evidence is not always a sine qua non for establishing that a mark is reasonably required for use in the trade - a court must make a value judgment.