In the courts the trademarked city within a city

• Author: Tana Pistorius
• Position: Intellectual Property Law, Department of Mercantile Law, University of South Africa
• Pages: 10-13

Century City is a well-known South African land-

mark and the pride of Cape Town. Its developers

created an infrastructure that provides a wide va-

riety of services and industries to Century City’s

inhabitants. This 250 hectare up-market, mixed-

use development includes a business park, upper

echelon housing, a theme park, four hotels and a

shopping center. The commercial and residential

development falls within the municipality of the

City of Cape Town. It is a “city within a city.“

Mindful of the importance of IP

rights, the developer registered a

number of trademarks for “Century

City,“ as well as device marks con-

taining interlocking Cs and the

words “Century City“ and “Your

place. Your space“ for services

falling within classes 35, 36, 41 and

42 of the Nice trademark classifica-

tion. The trademarks were as-

signed to the Century City Property Owners’

Association, a not-for-profit company.

In 2006, Century City Apartments Property

Services, an accommodation agent, registered the

domain name

www.centurycityapartments.co.za

,

and a year later Century City Apartments Property

Services CC was incorporated. The accommoda-

tion agent owns various properties in Century City

and leases these, and other Century City proper-

ties, for short stays to holiday makers under the

“Century City Apartments“ brand name.

Round one: the Cape

High Court

The Century City Property Owners’ Association

filed a trademark infringement action against the

accommodation agent for using “Century City“ in

its corporate name, brand name and domain

name as such use infringed the Association’s name

and device marks.1The agent brought a counter-

claim seeking cancellation of the Association’s

trademarks on the grounds that the marks had lost

their distinctiveness since Century City was a place

name that had come to designate the geographi-

cal origin of a broad range of services.

The Cape High Court held that the accommoda-

tion agent had infringed the Association’s trade-

marks and device marks, and it rejected the

counter-application. The court ruled that the

Association’s marks were valid and enforceable

and, because the significance of the Century City

name flowed directly from the development of a

piece of land, the name was inextricably linked to

that development. The court reasoned that the

trademark rights were based on the nature of the

development rather than “a dictionary meaning“

or geographical location; and, since the name did

not have an “exclusively geographical meaning,“ it

was not subject to the provision prohibiting the

registration of a geographical location.

The accommodation agent subsequently appealed

the Cape High Court’s ruling.

Round Two: Supreme

Court of Appeal

In November 2009 Judge Harms, Deputy President

(DP) of the South African Supreme Court of Appeal

(SCA) handed down the judgment in

Century City

Apartments Property Services CC v. Century City

Property Owners’ Association.

2

The SCA remarked that according to basic trade-

mark law one may use a trademark otherwise

than as a badge of origin and that the appellant’s

use of the name “Century City“ in a descriptive

manner could not amount to infringement. The

appellant relied on section 34(2)(b) of the Trade

Marks Act 194 of 1993 which provides, in essence,

THE TRADEMARKED

CITY WITHIN A CITY

1 Century City Property

Owners’ Association v.

Century City

Apartments Property

Service CC & others:

In re Century City

Apartments Property

Service CC v. Century

City Property Owners’

Association & another

[2008] JOL 22813 C;

[2008] ZAWCHC 63.

2 [2010] JOL 24646 (SCA).

JUNE 2010

10

“Genericide“( see “What you don’t know about trademarks“ in WIPO Magazine6/2009) is not the only dan-

ger lurking for trademarks; they can also lose their distinctiveness by becoming geographical identifiers.

This article by Prof. Tana Pistorius, Intellectual Property Law, Department of Mercantile Law, University of

South Africa, discusses a landmark trademark case in South Africa. Prof. Pistorius is a senior adjudicator

of the South African Institute of Intellectual Property Law’s alternate dispute resolution panel for the .za

country code top-level domain. She teaches modules of the UNISA-WIPO Intellectual Property Specialization

Program and is also a WIPO Academy tutor.