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[2015] ZAGPJHC 249
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CCG Australasia (Pty) Ltd and Another v Cable Gland Company (Pty) Ltd (2014/42807) [2015] ZAGPJHC 249; 2015 BIP 343 (GJ) (6 November 2015)
REPUBLIC
OF SOUTH AFRICA
HIGH
COURT OF SOUTH AFRICA
GAUTENG
LOCAL DIVISION, JOHANNESBURG
CASE
NO 2014/42807
DATE:
06 OCTOBER 2015
In
the matter between:
CCG
AUSTRALASIA (PTY)
LTD
.................................................................................
First
Applicant
CCG
CABLE TERMINATIONS (PTY)
LTD
...........................................................
Second
Applicant
And
CABLE GLAND
COMPANY (PTY)
LTD
..........................................................................
Respondent
JUDGMENT
Headnote
Application
to interdict a trade rival from using a trademark so similar to that
of its own registered trademark as to cause confusion
as contemplated
by
section 34(1)(a)
of the
Trade Marks Act 194 of 1993
–Both
parties manufactured and distributed electrical glands, affixed their
marks to the products, published marketing material
and had websites
– the mark CCG was registered by the applicant- although the
marks were visually distinct; ie the applicant’s
CCG and the
respondent’s CGCo, the probable aural distinction was almost
imperceptible – moreover, the degree of distinction,
overall,
was not enough to eliminate the risk of imperfect recollection - the
risk of confusion existed - application granted
SUTHERLAND
J:
Introduction
1.
At
issue is whether or not the respondent has infringed the applicant’s
registered trade mark by using a mark so similar as
to be likely to
cause confusion or deception within the contemplation of.
[1]
(The
Trade Marks Act).
2.
The
two applicants, the second being the
subsidiary of the first (hereafter the applicant) and the respondent
both manufacture goods
for use in electrical work in competition with
one another. The controversy concerns their cable glands, a
metal component
used for connecting an electrical cable to an
apparatus.
3.
The registered mark is “CCG” in
class 6 and class 17, and has been so registered respectively, since
26 July 1977 (with
reference to the cable gland itself) and 21
September 1984 (with reference to a shroud, a rubber like sheath to
cover the gland
for protection).
4.
The respondent has been selling its goods
since the beginning of 2014.
5.
Three variants of the respondent’s
mark are alleged to infringe the applicant’s mark. They are
described thus:
5.1.
Within a hexagon , the letters “C, G,
C and o” in a staggered pattern; ie, the hexagon rests on a
flat base, (ie South)
there is above the midline drawn between the
west and east points of the hexagon, in capitals, the letters ‘C”
and
“G’ and below that line, the letters ‘C’
and ‘o’ the ‘C” being a capital letter
and the “o”, in lower case, being located slightly
southward than the “C”.
5.2.
On its website the mark: “ CG-CO”
5.3.
As part of its domain name : “cgco.co.za”
The
comparison
6.
The test to determine the existence of a
confusing resemblance has been consistently set out to be an
assessment of the marks as
a whole, side by side and apart, visually,
aurally and conceptually.
(see:
Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
1984(3) SA 623 (AD) at 640F – 641D)
and
reiterated more recently in
Addidas
International Marketing BV v Pepkor
Retail Limited ZASCA 3 ( 28/02/2013))
7.
Visually, the marks as a whole are patently
different, albeit both containing the letters ‘C’ and
‘G’.
The applicant does not encapsulate its mark
within a border line of any kind. The respondent’s mark has
more letters; ie
the ‘o’ which is a noticeable
difference. Side by side the distinctions are plain.
8.
How to ‘read’ the content of
the hexagon is said by the applicant to offer two possibilities: as’
CGCo’
or ‘CCGo’. It is possible, it is argued, to
read it as ‘CCG’, rather than the intended ‘CGC’
because of the staggering of the letters, as described above. This
reading would be because the eye would travel in a “V”
reading from top left “C” to bottom left “C”
and then up to top right “G”. In my view, it is
indeed
possible to do so, but it cannot be suggested that it is the obvious
way to read it. What the applicant’s contention
really depends
on is that a person, already familiar with the applicant’s
mark, “CCG” will, because of that familiarity,
at a
glance, misread the respondent’s mark. Such a reader would also
have to negate the “o” and either not notice
or ignore
the hexagon. None of these possible readings can be excluded, but it
is unlikely that, typically, the two images, seen
as a whole, side by
side, will be confused. However, the hexagon border could be equally
at home with “CCG” as with
“CGCo” and seeing
the hexagon does not,
per se
,
obviously signal an origin so as to serve to distinguish the one mark
from the other.
9.
Aurally, the pronunciation possible does
not allow a real ‘word’ to be imagined. Some enunciation
of the letters is
alone possible. ‘see see jee’ and ‘see
jee see oh’ seem distinctive. However will the ‘oh’
be enunciated? Suppose it is pronounced simply “see jee see”-
how close to ‘see see jee’ is that sound?
In short, the
sound is indeed close. The hypothetical customers asking for a ‘CCG
‘component could be misheard by a
hypothetical store assistant.
But would an assistant picking up a component bearing the hexagon
assume it was a “CCG”
product? Again it is possible,
although reading the mark to present it to the customer, the
distinction would be readily discernible,
if the assistant is indeed
familiar with both component brands.
10.
The respondent seeks to counter this line
of the applicant’s argument by suggesting that the
pronunciation would be “see
jee coe” rather than an
abbreviated “see jee see”. Were that to be so, the aural
distinction would be profound.
The applicant however contends that it
is human nature to call the thing by the shorter and more euphonious
‘see jee see”
and the “o” will be ignored, in
part, perhaps, because its role as part of the intended “Co”
is not an
obvious ‘Co’ (ie, perceived as the abbreviation
of company) and may be missed at a glance. This possibility,
indeed, exists.
11.
Conceptually, the letters in these
combinations conjure up nothing, other than an anterior consciousness
that “C” and
“G” together denotes a cable
gland. Which brand it is, must be denoted by what else accompanies
those core characters.
12.
In my view seen side by side the marks are
distinctive enough for the difference to be immediately noticed. Seen
apart however,
the effect of residual and imperfect memory
complicates the process of recognition. A quick glance, with an echo
of hearing
‘see see jee’ floating in one’s
memory, and an image of “CCG” in the recesses of one’s
mind’s
eye, what will register with a customer looking at the
respondent’s mark? It must be taken as a factor that the
customer
is aware that there is more than one brand, for were it to
be otherwise, there would be no effort to choose. It is the customer
who wants a “CCG” component who carries the residual
image and wants another one whose predicament and potential confusion
who is to be considered. Such a person may be looking for a prompt
for him to recognise the brand he seeks. When he hears “see
jee
see” or looks at “CGCo” might he be confused?
In my view, there is a risk that such a customer is likely
to be
confused.
13.
Neither eye nor ear are precision
instruments. They tend not to filter the bombardment of data from
daily life too delicately. The
exception is when a decision thought
to be momentous is made; then the choice is the subject of mulling,
reflection and auto-interrogation.
These are unlikely to be the
attributes of a decision to buy cable glands.
Who
are the consumers?
14.
It was argued on behalf of the respondent
that the class of customers are discerning persons well versed in the
electrical contracting
industry and appreciative of the distinctions
among several brands and their marks. Doubtless there are such
persons. It may also
be appropriate to infer from the nature of the
components that they are not suitable for the mass home market and
that it is rare
that the proverbial man in the street will be a
purchaser, save for the do-it-yourself type who is likely to be
technically well
informed if he has the confidence to embark on the
class of installation for which the cable glands are apparently
intended.
15.
However, the task of fetching parts is too
obviously a delegated chore to the lesser-skilled crewman, who
dispatched by his foreman,
may not be well versed in these matters,
and who is dependent on the potentially equally lesser-skilled store
assistant. First
impressions, both visually and aurally, may well not
alert the hearers and the viewers to the distinctions rather than to
their
similarities. In the absence of evidence that the sourcing is
indeed restricted to a knowledgeable class, a wider circle of
potential
clientele must be assessed. Despite the respondents
assertion that knowledgeable people are the clientele, that assertion
alone
cannot exclude a wider class of persons undertaking the actual
transactions. There is no basis laid to substantiate that only the
truly knowledgeable shall undertake transactions.
The
website and domain name
16.
The context in which these addresses, CG-C0
and cgco, as a web address and email address respectively, are either
used to send messages,
or are stumbled upon through internet
searches, is quite distinct from the dynamics of shopping. The
typical internet user is quickly
brought to an acute awareness of the
exactitudes that are essential to communicate effectively using
online addresses. One cypher
out of place means no communication can
occur. In my view, there is also an awareness that the addresses of
different persons or
entities can differ by merely one cypher. The
position is not materially distinct from the care needed in dialing a
telephone number.
17.
In that context, the similarities of the
marks in the addresses, which are not ‘marks’ on products
per se, do not my
view, give rise to the sort of material risk of
deception or confusion, as may occur in conventional shopping. The
risk of confusion,
though possible, is materially diminished.
The
use of ‘C’ and ‘G’ in the Industry
18.
Allusions were made to the use of the
letters “C” and “G” in formulating part
numbers of the similar components
of other traders. In my view this
is an irrelevance in relation to the perception of the marks denoting
origin put out by the parties
on the product or in other literature
to identify their brand.
Evidence
of the occurrence of confusion
19.
The absence a concrete example of confusion
is in my view not dispositive of the risk.
Conclusions
20.
In my view:
20.1.
Visually, side by side, the risk of
confusion is slight if at all.
20.2.
Viewed separately, owing to the risk of
imperfect recollection, the risk of confusion is material,
20.3.
Aurally, the risk of confusion is
significant because conceptually, the articulation of each of the
letter combinations as mere
grunts have no meaning and allow for no
distinctions to be readily discerned.
20.4.
Accordingly, although the risk of confusion
varies in the different contexts, the risk of confusion is material.
The
Order
[1]
The Respondent is interdicted and restrained from infringing trade
mark registrations nos. B1977/03211 CCG in class 6 and 1984/08490
CCG
in class 17, by using the marks
CGCO
,
CG-Co
and
CCGo
/ CGC Logo
(hereinafter collectively referred to as “the
infringing marks”), or any other marks so similar thereto as to
be likely
to cause deception or confusion in terms of section
34(1)(a) of the Trade Marks Act No. 194 of 1993 (hereinafter “the
Trade Marks Act&rdquo
;), in relation to the manufacturing,
importation and / or sale of cable glands, compression glands and
shrouds;
[2]
The Respondent is ordered in terms of
section 34(3)(b)
of the
Trade Marks Act, in
the presence of an authorised agent of the First
Applicant, to remove the infringing marks from all materials in the
possession
or under its control, if the infringing marks are
inseparable or incapable of being so removed, to destroy all such
materials bearing
the infringing marks, including all pricelists,
labels, signage, packaging materials, advertising and promotional
materials, pamphlets,
brochures, cable glands, compression glands and
shrouds; alternatively, at the option of Respondent, to deliver up
for destruction
all such materials to the First Applicant’s
attorneys, Von Seidels;
[3]
The Respondent shall bear the Applicant’s costs in this
application, including the cost of Counsel.
Roland
Sutherland
Judge
of the High Court,
Gauteng
Local Division
Hearing:
11 September 2015.
Judgment:
6 October 2015.
For
the applicant:
Adv
G Marriott,
Instructed
by Von Seidels Attorneys,
Ref:
H Prinsloo.
For
the Respondent:
Adv
PP Ferreira, (Heads of argument prepared by Adv I Joubert)
Instructed
by De Kock Attorneys,
Ref
E De Kock.
[1]
Section
34
(1) Provides:
(1)
The rights acquired by registration of a trade mark shall be
infringed by-
(a)
the unauthorized use in the course of trade in relation to goods or
services in respect of which the trade mark is registered,
of an
identical mark or of a mark so nearly resembling it as to be likely
to deceive or cause confusion;
(b)
the unauthorized use of a mark which is identical or similar to the
trade mark registered, in the course of trade in relation
to goods
or services which are so similar to the goods or services in respect
of which the trade mark is registered, that in
such use there exists
the likelihood of deception or confusion;
(c)
the unauthorized use in the course of trade in relation to any goods
or services of a mark which is identical or similar to
a trade mark
registered, if such trade mark is well known in the Republic and the
use of the said mark would be likely to take
unfair advantage of, or
be detrimental to, the distinctive character or the repute of the
registered trade mark, notwithstanding
the absence of confusion or
deception: Provided that the provisions of this paragraph shall not
apply to a trade mark referred
to in
section 70
(2).