The Supreme Court of Appeal in South Africa has ruled that a trademark can still be a trademark even if it serves a dual purpose of also being a descriptive geographical indicator.
The ruling came as a result of In Group LFE versus Swartland Winery.
“Swartland Winery Limited owns the registered trademark SWARTLAND for alcohol,” says Megan Reimers, partner at intellectual property law firm Spoor & Fisher. “It has used the trade mark for 60 years in connection with its wine, resulting in the trademark becoming well-known and strongly associated with it by consumers.
“Group LFE, a Dutch exporter of South African wines into the European Union, made use of the term SWARTLAND on one of its wine ranges. It claimed to be doing so only to indicate geographical origin and not for trade mark purposes.”
The Supreme Court of Appeal dismissed Group LFE’s argument that they were not using SWARTLAND as a trademark when it examined the bottle’s trade dress minutely and found that it was clearly using SWARTLAND as a trademark as well as to indicate geographical origin.
Group LFE argued that registering SWARTLAND was in conflict with the Liquor Products Act because the act states that you may not use a wine of origin designation to sell it but the act also provides that a trademark, registered or not, used to sell the alcohol prior to July 1990 is lawful. The SWARTLAND trademark was already established by then although unregistered.
“This judgement provides an important clarification on the recent Century City Property Services CC versus Century City Property Owner’s Association SCA judgement in which the CENTURY CITY name was stripped of its trademark status as a result of having become a geographical indicator. Where a trademark has truly retained its trademark status despite having a dual descriptive meaning, it cannot be stripped of that status,” concludes Reimers.
Contact Megan Reimers, Spoor & Fisher, (012) 676 1081, firstname.lastname@example.org