Trademark Dispute in South Africa

The company, The Leading Hotels of the World, has applied for registration of the trademark “THE LEADING HOTELS OF THE WORLD” in respect of hotel services in South Africa.ÊOnline Travel Group, a South Africa based firm who own the domain name since 1997, is opposing the South African application on the basis that the trademark is not distinctive. The matter will be set down for hearing shortly.

In April 2002, in an attempt to obtain the domain name, Leading Hotels of the World initiated proceedings through WIPO (World Intellectual Property Organization). They lost the proceedings when the WIPO panel ruled in favour of Online Travel Group stating that “...the phrase “leading hotels” is highly descriptive, is not distinctive, thus on its own would not be capable of acting as a trademark”.

The Leading Hotels of the World has registered trademarks in several countries. However, in 2000, an application to register the trademark in New Zealand was refused. The Examiner did not accept the applications on the ground that the marks were not eligible under ss14 and15. Ms Sian Roberts, Assistant Commissioner of Trade Marks held that the words THE LEADING HOTELS OF THE WORLD were so likely to be used for general description that even if extensive evidence of use were supplied, it would be difficult to justify granting a monopoly in the mark.

South Africa and New Zealand both follow British Commonwealth Law.