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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