Abu Dhabi Bank operates in multiple jurisdictions across five continents.
Image: Abu Dhabi Bank
After almost a decade of litigation and exhausting multiple avenues of appeal, FirstRand has failed in its bid to stop Abu Dhabi Bank from registering its trademarks in South Africa.
The Supreme Court of Appeal (SCA) dismissed the banking group’s latest application, ending a dispute that began in 2017 when the United Arab Emirates lender applied to register the trademarks “FIRST ABU DHABI BANK” and “GROW STRONGER FIRST ABU DHABI BANK” as part of its planned expansion into the South African market.
FirstRand opposed the applications after they were advertised, arguing Abu Dhabi Bank had no bona fide intention of using the marks because it neither held nor had applied for a South African banking licence.
The Registrar of Trademarks referred the dispute to the High Court, which dismissed FirstRand’s opposition and later refused it leave to appeal. FirstRand says it's South Africa's oldest bank by virtue of its ownership of First National Bank.
The SCA also initially refused leave to appeal, but FirstRand successfully petitioned the President of the SCA to have the matter reconsidered. During the litigation, it also abandoned some grounds of opposition and persisted with others before again failing to persuade the court.
During the hearings, Abu Dhabi Bank said it had deliberately decided to secure trademark protection before applying for a banking licence in South Africa.
According to the judgment, the bank regarded protecting its trademarks as “the first step in expanding into the South African market”.
FirstRand maintained that, because Abu Dhabi Bank neither held nor had applied for a banking licence or for the necessary financial services permission when it filed the applications, it could not genuinely have intended to use the trademarks in South Africa.
Writing for the majority, Judge Makgoka found that Abu Dhabi Bank had demonstrated a genuine intention to use the trademarks as part of its planned expansion into South Africa.
“There is no reason to doubt that, should its trademarks be registered, Abu Dhabi Bank would comply with all necessary legal requirements to operate in South Africa, including applying for a banking licence from the Registrar of Banks and authorisation from the FSB,” the judgment said.
Makgoka added that, “if those were approved, there is no reason to doubt that it would use the trademarks in relation to banking and financial services and expand its operations into South Africa”.
The SCA found that although the High Court had erred in parts of its legal reasoning, those errors did not change the outcome because Abu Dhabi Bank had established a bona fide intention to use the trademarks.
The court also noted that Abu Dhabi Bank already operates under the same branding in multiple jurisdictions across five continents and found no evidence that it had sought to register the marks for an ulterior purpose.
Rejecting FirstRand’s application, the SCA said its arguments amounted to “no more than a ‘mere difference of opinion’” and fell well short of the exceptional circumstances required for the court to revisit its earlier refusal of leave to appeal.
The application was struck from the roll, and FirstRand was ordered to pay Abu Dhabi Bank’s costs, including the costs of two counsel.
The ruling adds to a long history of trademark disputes in South Africa. In one of the country’s better-known branding battles, French telecommunications company Orange and Johannesburg-based public relations firm Orange Ink reached a settlement in 2010 after a dispute over the use of the “Orange” name.
Under the agreement, Orange Ink could retain its name but had to change its corporate colours, bringing an end to a legal battle that highlighted the importance companies place on protecting their intellectual property.
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