An appeal by the Foschini Group ("Foschini") –
the proprietor in South Africa of the trade mark DUE SOUTH (word
mark) in various classes – to overturn a decision by the
Registrar of Trade Marks to accept applications by Jan Frederick
Coetzee ("Coetzee") for registration of the trade mark
DUE-SOUTH & DEVICE in classes 16, 29, 30 and 41 (the DUE-SOUTH
LOGO marks) was recently dismissed by the North Gauteng High Court
on the basis that the goods and/or services in respect of which
registration of the DUE-SOUTH LOGO marks was sought were not
similar to those in respect of which Foschini's DUE SOUTH trade
marks were registered.
Foschini's DUE SOUTH trade marks are used in respect of a
chain of upmarket retail outlets which cater to outdoor and
adventure enthusiasts. At the time of Foschini's opposition,
there were 21 stores across South Africa operating under the DUE
SOUTH name.
Coetzee operates a single arts and crafts shop which promotes
indigenous South African arts and crafts. A primary focus of
Coetzee's shop was identifying the majority of craft projects
and cultural tourism points in South Africa, which also involved
the publication of a series of travel guides and provincial route
maps. His applications were for the logo (depicted below) used in
connection with his shop.
Foschini's opposition was based on its registrations in
classes 8, 9, 11, 21, 28 and 35 and section 10(14) of the Trade
Marks Act 194 of 1993 ("the Act"), which provides inter
alia that a mark shall not be registered if it is
"...identical to a registered trade mark belonging to a
different proprietor or so similar thereto that the use thereof in
relation to goods or services in respect of which it is sought to
be registered and which are the same as or similar to the goods or
services in respect of which such trade mark is registered, would
be likely to deceive or cause confusion..." (emphasis
added).
Foschini argued that the DUE-SOUTH LOGO marks were highly similar
to its registered DUE SOUTH trade marks and, accordingly, the
degree of similarity between the respective goods and/or services
need be far less than if the respective marks had been less
similar. Counsel for Foschini submitted that proof of "some
similarity" between the respective goods and/or services
should be sufficient to succeed in showing a likelihood of
deception or confusion as required by section 10(14).
Coetzee countered Foschini's argument with reference to the
trade mark classification system, which he argued had been put in
place to permit similar (or even identical) trade marks to exist
and be used in relation to different goods and/or services by
different proprietors. The starting point, Coetzee argued, should
be the classification system itself and the fact that the goods
and/or services are in different classes would indicate, at least
prima facie, that the goods and services are not similar.
The court reiterated the importance of the classification system
and the importance of only claiming protection in classes in which
the applicant actually intends to function. This, it found, was a
necessary limitation on the anti-competitive practice of trade mark
registration and to ignore this would result in the trade mark
owner enjoying an unreasonably wide monopoly.
In light of the above, the court found that it must proceed from
the premise that "one can not lightly find
similarity".
In considering the similarity of the goods and/or services, the
court applied the test formulated in Adcock Ingram v Cipla Medpro
2012 (4) SA 238 (SCA) (29 March 2012) finding that it is not what
the applicant for registration (Coetzee) is doing or what he says
he intends doing, but what he will be permitted to do if the
application is granted in respect of all the goods in the classes
applied for.
In considering whether the goods and/or services in respect of
which Foschini's marks were registered were similar to those in
respect of which Coetzee sought registration of the DUE-SOUTH LOGO
marks, the court drew comparisons between the various goods and/or
services. One such comparison was between the goods in classes 29
and 30 (food classes) and Foschini's class 8, 11 and 21
registrations. The court found that "[h]ow tools and apparatus
for cooking, kitchen utensils, containers, glassware, porcelain and
earthenware can be regarded as similar to food, is beyond
me".
The court also found, when comparing class 9 ("...teaching
apparatus and instruments...") to class 41 ("education,
providing of training...") that "you cannot compare the
production and sale of articles to be used in some activity to the
service rendered by using those good".
These findings, which have raised the bar when it comes to proving
similarity between goods and/or services come soon after the ruling
in Mettenheimer & Another v Zonquasdrif Vineyards CC &
Another (18998/2010) [2012] ZAWCHC 69 (13 June 2012), in which it
was held that grapes (class 31) are not similar to wine (class 33)
for the purposes of establishing a likelihood of deception or
confusion in infringement proceedings in terms of section 34(1)(b)
of the Act.
Both the Zonquasdrif and the Due South judgments are apparently
under appeal.
This article first appeared in the WTR Daily, part of World Trademark Review, in February 2013.
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