It is still quite rare for intellectual property ("IP") disputes to make their way up to the South African Supreme Court of Appeal ("SCA"). So, when the SCA does get an opportunity to hand down an IP judgment, the South African IP community tends to take notice, as it has with the recent judgment ofICollege (Pty) Ltd v Xpertease Skills Development and Mentoring CC and Another, which was handed down by Judge Schippers and Judge Matojane on 24 May 2023.
The parties – the Appellant and the Respondent
The Appellant, ICollege (Pty) Ltd, has a South African trade mark registration for the trade mark iCOLLEGE logo, in black and white and in colour (depicted below), in class 41 in respect of, inter alia, education and training services. There is a disclaimer recorded against the registration, which provides that the trade mark owner does not have exclusive rights to the word "college".
The disclaimer
This disclaimer is quite normal: one of the fundamentals of trade mark law is that words (or other elements) that are descriptive of the goods or services covered by the registration, or reasonably required for use by other traders, cannot be monopolised. A consequence of this is that if a trade mark that is registered contains a descriptive element, exclusivity to that element must be disclaimed. The result of this is that other traders may still use the disclaimed element, and the trade mark proprietor may only claim rights in the trade mark as a whole and not in any disclaimed elements separately from the trade mark.
The Respondent
The First Respondent, Xpertease Skills Development and Mentoring CC, is a competitor of the Appellant. It offers education services under the trade mark iCollege logo. The descriptive words ONLINE LEARNING appear below the trade mark iCollege, as can be seen below:
The legal issue
The legal issue was whether the Appellant's registration for its iCOLLEGE Logo had been infringed by the unauthorised use by the First Respondent's iCollege Logo trade mark, followed by the descriptive words ONLINE LEARNING below the trade mark. The SCA said this:
"So, the only issue for decision by the High Court was whether the respondent's iCollege trade mark was 'a mark so nearly resembling' the appellant's iCOLLEGE trade mark 'as to be likely to deceive or cause confusion'."
The judgment
The SCA held that the use by the First Respondent of the descriptive term ONLINE LEARNING below its mark iCollege was not relevant to the enquiry. Nor was the fact that the company operated exclusively online and didn't offer locally-accredited services. The trade marks were confusingly similar and there was trade mark infringement under section 34(1)(a) of the South African Trade Marks Act, 1993 as the First Respondent's services fell squarely within the Appellant's trade mark specification.
What about the disclaimer?
The SCA found that the disclaimer of the word "college" in the registration did not detract from the fact that the infringing trade mark as a whole was confusingly similar. These words are key:
"Whilst a trade mark proprietor cannot bring a claim for infringement in respect of the use of a disclaimed feature, where that feature forms part of a composite mark, the court is entitled to take the disclaimed feature into account in deciding whether the infringing mark, as a whole, so nearly resembles the registered mark, as to be likely to deceive or cause confusion."
Trade mark infringement: it goes back all the way to van Riebeeck
As anyone who is involved in South African trade mark law knows, the starting point in any South African trade mark judgment is invariably the almost 40-year-old case of Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd. In that case, Corbett JA made sure that South African judges dealing with trade mark infringement cases will always think long and hard before reaching a conclusion. This leading judgment tells us that a judge dealing with a trade mark infringement case is required to consider a whole host of factors. For example, the judge needs to:
- Assess the matter through the eyes of the average consumer
- Consider the sense, sound and appearance of the trade marks
- Consider the trade marks both side-by-side and separately
- Bear in mind that consumers have imperfect recollection
- Consider that consumers tend to remember the dominant features of trade marks
In considering these factors, the SCA found that:
"Applied to the present case, the marks are visually and aurally, confusingly similar. The fact that save for the letter 'C', the remaining letters in the respondent's mark are in lowercase, in a different font, or accompanied by the words 'ONLINE LEARNING', does not detract from this. On an overall viewing of the basic features of the marks, the main idea or general impression conveyed is the education services offered by iCOLLEGE – the clearly noticeable and dominant feature of both marks. This impression is buttressed by the logos accompanying the dominant word element in both marks – a graduation cap. The phrase 'ONLINE LEARNING' envisages education, and on the overall impression conveyed by the mark, is a strong indicator of an association between the respondent's education services and those of the appellant."
The SCA therefore interdicted the First Respondent from continuing to use its iCollege Logo, or any other trade mark which is confusingly similar to the appellant's iCOLLEGE Logo trade mark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
