First National Bank's 'premier' application rejected

South Africa

In First National Bank of Southern Africa Ltd v Barclays Bank plc (Case 118/02), the Supreme Court of Appeal has dismissed First National's application to register the words 'premier' and 'premier package' for banking and financial services. The court held that although it is possible for these words to acquire distinctiveness through use, they cannot be registered because they are reasonably required for use in the trade.

In March 1995 First National applied to register the words 'premier' and 'premier package' as trademarks for, among other things, banking and financial services. Barclays opposed the registration, arguing that the word 'premier' is laudatory, descriptive, non-distinctive and reasonably required for use in the trade. The Trademarks Registry and the court of first instance agreed with Barclays and refused to allow the registration.

On appeal, the Supreme Court affirmed. In coming to its conclusion, the court asked itself three questions:

  • Were the words 'premier' and 'premier package' inherently distinctive at the date of application? The court held that they were not.

  • Had the words become distinctive through prior use at the date of application? As the application pre-dated the commencement of the Trademarks Act 1993, the provisions of the repealed Trademarks Act 1963 were applicable in this case. The 1963 act provided for registration in two parts of the Trademarks Register; Part A applied to terms that had become distinctive at the date of application, whereas Part B applied to terms that were capable of becoming distinctive through use. The court held that the evidence of prior distinctiveness did not support registration in Part A.

  • Were the words capable of becoming distinctive through use and therefore registrable in Part B? The court stated that although the words are capable of becoming distinctive through use, they are not registrable because they are reasonably required for use in banking and financial services.

Emmie Odendaal, Spoor & Fisher, Pretoria

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