An interesting SA trade mark judgment was handed down on 18 January 2013.  It involved Foschini, which owns a retail chain called Due South, as well as trade mark registrations for the name Due South in 14 different classes of goods and services. When a man called Coetzee applied to register the name Due South with a logo in four other classes, Foschini filed an opposition.

The marks were clearly the same, but were the goods and services covered by Foschini's registrations and Coetzee's applications similar enough for there to be a likelihood of confusion?  There's some debate as to what test should be applied.  Some say that it's a holistic one which involves comparing the similarities in the marks and the similarities in the goods in tandem, with the result that if the goods are only slightly similar but the marks are very similar there is still a likelihood of confusion. Others say that you must simply decide if the goods are similar - if they're not that's the end of the enquiry, if they are you then decide whether confusion is likely.

The court opted for the latter test, following both a UK case called British Sugar and a recent SA case called Zonquasdrift. In both those cases the courts said that, to decide if goods are similar, you must consider various things like the uses of the goods, the users of the goods, the ingredients and the trade channels.  Applying this test the SA court in the Zonquasdrift case held (surprisingly!) that if the same mark were to be used in relation to wine and grapes there would not be confusion because the goods are totally different.

In the Due South case there was little obvious similarity between the goods and services – whereas Foschini's registration covered a diverse range of goods and services including kitchen utensils, cooking apparatus and retail services, Coetzee was looking for protection for things like publications, foodstuffs and education services. Interestingly, the court held that the retail services covered by Foschini's class 35 registration - which were not limited to any particular types of goods - did not cover any of the goods covered by Coetzee's applications. The court pointed out that if this were the case, getting a registration in class 35 would be a quick and easy way of getting a monopoly in respect of all goods.

Another interesting feature of the judgment is that the court seemed to justify its narrow interpretation of Foschini's registrations on the basis of competition policy, which is clearly anti-monopoly. The exact nature of the relationship between IP rights and competition law has yet to be explored by SA courts, but there does seem to be a growing trend towards a restrictive interpretation of IP rights.

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