Wednesday, 18 March 2009

South Africa: The Century City Case

Afro Leo had the recent delight of reading Judge Davis’s decision in The Century City case[i]. Briefly, Century City Property Owners’ Association (“Applicant”) sued Century City Apartments Property Service CC (“Respondent”) for use of the trade mark CENTURY CITY on the grounds of trade mark infringement, passing off and under close corporation legislation. Respondent defended by claiming that the registered trade mark for CENTURY CITY should be cancelled because it is a place name and that its use of Century City constitutes bona fide use of the name of its place of business and/or is descriptive and not likely to deceive or confuse. Century City is an imposing development which dominates Northern Cape Town. Davis J held in favour of the Applicant on all counts but not before illustrating the issues with a reference to a humorous letter from Groucho Marx to Jack Warner following a threat by Warner Bros. Studio to stop use of the title of the film A Night in Casablanca on the basis of alleged rights in the name Casablanca.

Quoting from the Century case:

“the meaning of Century City flows directly from the development of a piece of land located in Montague Gardens. The meaning of Century City is inextricably linked to this particular development. The right that flows therefrom emerged from the nature of the development rather than from a dictionary meaning or a geographical location.”

“The essential characteristic, for which he [Respondent] contends, is they are ‘Century City Apartments’ not that they are necessarily located in Century City. The descriptive power is connoted in the words ‘Century City’. Hence this phrase seeks to exploit the value which is inherent in the trade mark belonging to applicant.”

The decision endorses the importance of registering trade marks. If this case was brought on passing off alone it would have been more difficult for the Applicant to succeed and more risky to prosecute. The decision also highlights that developers have an ongoing need to ensure that names of their creations are properly used, on a continual basis. That said, with all the name changes and new developments in South Africa over the last decade there must be a fine line between what is actually a geographical location and a proprietory development. For example, what if Century City was in fact a government funded housing development for the re-settlement of a shanty town, which gave birth to a Century City Estate Agency. In the same way that a Johannesburg Estate Agency would not infringe trade mark rights in the word Johannesburg, Century City Estate Agency would surely not infringe trade mark rights in Century City (in that example)?

It is not clear whether the case has been appealed.

[i] Century City Property Owners Association (A Section 21 Company) v Century City Apartments Property Services CC and Others; Century City Apartments Property Services CC v Century City Property Owners Association ( A Section 21 Company) and Another (17225/2005) [2008] ZAWCHC 63


Anonymous said...

The judgment is being appealed. Leave was granted directly to the SCA. The record is yet to be filed, so I doubt that we will be in Court until the last term of this year, or the first term of next year.

Anonymous said...

The Supreme Court has awarded the decision to Century City Apartments Property Services cc. The right to exclusivity has been revoked and the property owners association order to pay costs.