Lubbe NO and Others v Millennium Style (Pty) Limited and Others

The appellants, trustees of a Trust, held six trade marks registered in Class 25 for footwear. Five marks were registered under Part A of the Trade Marks Act 62 of 1963, and one under the Trade Marks Act 194 of 1993. The marks primarily consisted of devices representing shoe sole patterns and configurations, including transverse stripes on heels and side views of shoe soles. The appellants sought an interdict against the respondents for trade mark infringement, alleging that a former employee had gone into competition by making shoes that were 'an almost direct copy' of shoes made by or under license from the Trust. The respondents counter-applied for rectification of the trade mark register and expungement of the marks. The high court (Msimang J) dismissed the infringement application and ordered expungement of all six marks. The appellants had not used any of these marks as trade marks in twenty years and their unfair competition case collapsed.

• Whether shapes and configurations of shoe soles were registrable as trade marks under the Trade Marks Act 62 of 1963
• Whether the registered marks consisting of shoe sole designs were 'devices' capable of registration under the 1963 Act
• Whether the marks were capable of distinguishing goods in the trade mark sense (indicating source of origin)
• Whether the respondents were 'interested persons' entitled to apply for rectification of the register under section 24 of the Trade Marks Act 194 of 1993
• Whether the marks should be expunged from the register

The appeal was dismissed with costs, including costs consequent upon the employment of two counsel. The order of the high court expunging all six trade marks from the register was upheld.

The binding legal principles established are: (1) Under the Trade Marks Act 62 of 1963, shapes and configurations of articles were not registrable as trade marks, and characterizing them as 'devices' did not alter this prohibition. (2) A registered trade mark must be capable of distinguishing goods in the trade mark sense - indicating source of origin - and not merely be distinctive in terms of appearance or design. Sole patterns or shapes perceived by the public as ornamental or functional design features rather than source identifiers lack the requisite trade mark character. (3) The question of whether a party is an 'interested person' entitled to apply for rectification under section 24 of the 1993 Act is determined at the time of litis contestatio, and the opposing party cannot destroy that standing through subsequent actions. (4) A person in the trade area covered by an impugned trade mark is in principle an interested party, having a legitimate interest in clearing the register of objectionable registrations. (5) Under section 70 of the 1993 Act, the validity of trade marks registered under the 1963 Act must be determined according to the law then in force, and registrations 'contrary to law' (such as shapes) fall outside the protection of section 42 of the 1963 Act.

Harms ADP made several notable obiter observations: (1) He criticized the practice of 'squatting on the trade mark register' to stifle competition, stating 'This practice gives intellectual property law a bad name. It also throws serious doubt on whether this part of the law covers anything intellectual.' (2) He expressed concern about the Registrar's registration practices, expressing surprise that a simple transverse stripe on a heel was registered in Part A as being distinctive. (3) He noted that the appellants' case was 'essentially about the suppression of competition' rather than genuine trade mark protection. (4) He observed that the Trust used the register for purposes other than its statutory purpose. (5) He refrained from asking why the marks were not attacked on the ground of non-use, implicitly suggesting this would have been another viable ground. (6) He questioned why such a simple case reached the Supreme Court of Appeal, noting it should not have, especially after an earlier finding at the interlocutory stage that appellants lacked a prima facie case, though he acknowledged the complexity of arguments presented may provide partial explanation.

This case is significant in South African trade mark law for several reasons: (1) It clarifies that shapes and configurations of articles were not registrable under the 1963 Act, regardless of whether they were characterized as 'devices'. (2) It establishes that even where shapes may be registrable under the 1993 Act, they must still be capable of distinguishing goods in the trade mark sense (indicating source of origin) rather than being perceived merely as ornamental or functional design elements. (3) It condemns the practice of 'squatting on the trade mark register' to stifle competition rather than for genuine trade mark purposes. (4) It clarifies the test for 'interested person' status in rectification proceedings under section 24 of the 1993 Act. (5) It demonstrates judicial willingness to expunge registrations that lack genuine trade mark character, protecting the integrity of the register and promoting competition. The case serves as a warning against abuse of the trade mark registration system.