About SAFLII
Databases
Search
Terms of Use
RSS Feeds
South Africa: South Gauteng High Court, Johannesburg
SAFLII
>>
Databases
>>
South Africa: South Gauteng High Court, Johannesburg
>>
2019
>>
[2019] ZAGPJHC 5
|
|
Better Homes Expo (Pty) Ltd v Consep Home Ideas (Pty) Ltd and Others (48170/17) [2019] ZAGPJHC 5; 2019 BIP 259 (GJ) (7 February 2019)
IN
THE HIGH COURT OF SOUTH AFRICA
(GAUTENG
DIVISION, JOHANNESBURG)
Case
no: 48170/17
REPORTABLE
OF
INTEREST TO OTHER JUDGES
REVISED
In
the matter between:
BETTER
HOMES EXPO (PTY)
LTD
Applicant
and
CONSEP
HOME IDEAS (PTY)
LTD
First
Respondent
CONSEP
HOME IDEAS WEST RAND (PTY) LTD
Second
Respondent
CONSEP
HOME IDEAS CENTURION (PTY)
LTD
Third
Respondent
CONSEP
HOME IDEAS PRETORIA EAST (PTY) LTD
Fourth
Respondent
CONSEP
HOME IDEAS BRYANSTON (PTY)
LTD
Fifth
Respondent
CONSEP
GROUP (PTY)
LTD
Sixth
Respondent
NICHOLAS
VAN DER
LIST
Seventh
Respondent
THEODORUS
JACOBUS VAN DER
LIST
Eighth
Respondent
Case
Summary:
Trade
and competition - Passing off – requires proof of reputation,
misrepresentation and damage - use of descriptive phrase
in
designating business - evidence that mark has become distinctive must
be approached with circumspection – even if plaintiff
establishes that a
prima
facie
descriptive phrase has acquired some degree of secondary meaning,
relatively minor differences will suffice to distinguish the
defendant’s business when both use a mark which is descriptive
of the services they provide - must submit to risk of some
confusion
if another trader incorporates the same phrase in its trading name –
otherwise allowed an unfair monopoly in those
words.
JUDGMENT
MEYER
J
[1]
The applicant, Better Homes Expo (Pty) Ltd trading as HOME IDEAS
(Better Homes), seeks an interdict against the eight respondents
-
Consep Home Ideas (Pty) Ltd, Consep Home Ideas West Rand (Pty) Ltd,
Consep Home Ideas Centurion (Pty) Ltd, Consep Home Ideas
Pretoria
East (Pty) Ltd, Consep Home Ideas Bryanston (Pty) Ltd, Consep Group
(Pty) Ltd, the sole director of the first to third
respondents, Mr
Nicholas Van der List, and the sole director of the fourth to sixth
respondents, Mr Theodorus Jacobus Van der List,
respectively
(collectively referred to as ‘Consep’) – preventing
them from operating under the name CONSEP HOME
IDEAS and thereby
passing off their business as being connected or associated with
Better Homes, which uses the phrase HOME IDEAS
in designating its
business.
[2]
The business of Better Homes is to operate a permanent exhibition
centre and a website where other businesses (from the home
improvement and renovation industry) market their goods and services
to the public. Better Homes attracts the patronage of
two
distinct groups of customers; those offering goods and services in
the home improvement and renovation industry and those seeking
to
acquire such goods or services. Although Better Homes only
filed an application for the registration of the trademark
HOME IDEAS
on 10 June 2016 (the application is still pending), it has
indisputably been making extensive use of the phrase HOME
IDEAS since
October 2005, when it commenced operating its exhibition centre –
HOME IDEAS CENTRE. It is a permanent
exhibition centre where
hundreds of products from a hundred or more exhibitors are on daily
display. Until February 2014,
Better Homes also published its
own magazine wherein the services and products of the exhibitors at
the exhibition centre were
promoted. As a result of the success
of its HOME IDEAS CENTRE, it registered another company - Home Ideas
Online (Pty) Ltd
- in March 2013, which company launched an online
marketing platform for exhibitors to market their products and
services on display
at the HOME IDEAS CENTRE, also online. In
March 2015, it ‘took a strategic decision to combine the two
companies under
the registered company Better Homes Expo (Pty) Ltd
t/a HOME IDEAS’ (the applicant).
[3]
The first respondent, Consep Home Ideas (Pty) Ltd, was registered as
a company on 11 July 2016. The other Consep Home
Ideas
companies (the second to sixth respondents) were registered during
the period 12 July 2016 to 31 January 2017. Towards
the middle
of June 2016, Better Homes objected to the use by Consep of the
phrase HOME IDEAS in designating its business.
In a letter from
its attorneys, dated 19 July 2016, Consep gave the following
undertaking:
‘
Our clients agree and undertake
not to use the words
Home
Ideas
in isolation but
reserve the right to use the words “
Consep
Home Ideas”
as per
the registered names of two of the group companies on its own or in
combination with other words.’
The
undertaking was not acceptable to Better Homes, and it instituted the
present application almost 17 months later, on 8 December
2017.
[4]
The managing director of Better Homes, Mr Steve McAlpine, states in
its founding affidavit:
‘
The Seventh and Eighth
Respondents [Messrs Nicholas and Theodorus Van der List], via their
respective entities, were thus clearly
targeting home improvement and
renovation exhibitors and suppliers (most of whom were our clients)
at that time, and they were
doing so either under entity names
incorporating the Applicant’s trade marks, and/or by using the
Applicant’s trade
marks as part of its marketing.’
In
answer, Mr Theodorus Van der List, on behalf of Consep, states:
‘
It has never been the
Respondents’ intention to target home improvement and
renovation exhibitors. Rather, the Respondents
have been in the
business of property development for a significant period of time.
As a change of stance, it was decided
to establish and set up
exhibition centres throughout the Republic inviting contractors to
display their product, which contractors
would be offered development
opportunities through Consep’s development arm. It is not
now and never has been the Respondents’
intention to compete
with Home Ideas. In so far as they are concerned, the markets
are very different and the concepts to
which such markets relate are
substantially different too.’
[5]
Consep thus alleges that it operates exhibition centres allowing
exhibitors to display their products with the objective of
obtaining
business through Consep’s development arm. The
allegation, however, is entirely inconsistent with the marketing
material distributed by Consep. On its website it describes its
business thus: ‘Consep Home Ideas has made it possible
to find
the supplier or product for your home improvement and renovation
project at one convenient location!’ On its
Facebook page
it displays advertisements describing its services as ‘Hundreds
of EXHIBITORS displaying everything needed
to improve your home UNDER
ONE ROOF’ and ‘House Construction + Renovation
Showroom’. I accept, therefore,
that Consep and Better
Homes carry on business in a common field of activity.
[6]
The name and logo which Better Homes display at its exhibition centre
and on many of its marketing items and other documents
depicted in
the papers resemble a simple image of a house. The words HOME
IDEAS in bold capital letters and in blue (or in
white when it
appears on a blue background), are configured below each other in
such a way as to resemble the brick and mortar
part of a house with
two painted red brush strokes at angles above them to resemble the
roof and chimney. Together they resemble
a simple image of a
house. In the case of its HOME IDEAS CENTRE the word CENTRE
appears below the word IDEAS also in bold
capital letters and in a
smaller font as part of the depiction of a house. The get-up of
Consep’s trade name, on the
other hand, is the words CONSEP
HOME IDEAS with or without a separate logo, which is a 3D
multi-coloured drawing of a house with
walls, a door, windows, roof
and chimney, including a loft room. The drawing does not
incorporate its trading name.
[7]
As was said by Wallis JA in
Pioneer Foods (Pty) Ltd v Bothaville
Milling (Pty) Ltd
2014 BIP 486 (SCA) para 76,
‘
. . .
[p]assing
off occurs when A represents, whether or not deliberately or
intentionally, that its business, goods or services are those
of B or
are associated therewith. It is established when there is a
reasonable likelihood that members of the public in the marketplace
looking for that type of business, goods or services may be confused
into believing that the business, goods or services of A are
those of
B or are associated with those of B. The misrepresentation on
which it depends involves deception of the public
in regard to trade
source or business connection and enables the offender to trade upon
and benefit from the reputation of its
competitor. Misrepresentations
of this kind can be committed only in relation to a business that has
established a reputation for
itself or the goods and services it
supplies in the market and thereby infringe upon the reputational
element of the goodwill of
that business. Accordingly proof of
passing off requires proof of reputation, misrepresentation and
damage. The latter two
tend to go hand in hand, in that, if
there is a likelihood of confusion or deception, there is usually a
likelihood of damage flowing
from that.
(Footnotes
omitted.)
[8]
Consep resists the relief claimed by Better Homes on the grounds that
the words HOME IDEAS are descriptive or words in common
use and that
the addition by it of the word CONSEP before the words HOME IDEAS
suffices to distinguish its business, particularly
if the overall
impact of the entire get-up that includes the trading name of each on
potential customers is compared. (I
interpolate to mention that
there was no appearance for Consep at the hearing of this matter
although it filed an answering affidavit
and heads of argument;
its former attorneys of record withdrew shortly before the hearing.)
[9]
Better Homes argues that its reputation in the mark HOME IDEAS has
been established through its extensive use and promotion
of the mark
since October 2005, during which time it has conducted a sustained
and significant campaign to market the services
it offers under this
mark. The trading name displayed at its exhibition centre has
since then included the words HOME IDEAS.
It published its own
magazine from October 2005 until February 2014 with the words HOME
IDEAS on the cover page as a sub-brand
until July 2008 when it became
the sole mark. Therein over a hundred exhibitors advertised
their products and services.
It operates a website
(www.homeideas.co.za) on which the exhibitors also advertise their
products and services. That website,
it is undisputed, was
visited by 149 129 users and had 616 813 page views during January
2016 to December 2016 and was visited
by 111 401 users and had 430
596 page views between January 2017 and October 2017. Better
Homes also advertises its services
on television and radio and it
places advertisements, which bear the mark HOME IDEAS, in prominent
South African newspapers and
magazines. It conducts online
marketing and survey campaigns, and by email, using material which
bears the mark HOME IDEAS.
Better Homes’ corporate
stationery, contracts, invoices and building signage bear the mark
HOME IDEAS. Between 2009
and 2017 Better Homes spent R26
million on marketing the services it offers under the HOME IDEAS
mark.
[10]
But evidence that a mark has become distinctive by use must be
approached with circumspection. In
On-Line Lottery Services
(Pty) Ltd v National Lotteries Board
[2009] 4 All SA 470
(SCA),
Heher JA said this:
‘
[14] Of course, as
pointed out in
Cadbury (Pty)
Ltd v Beacon Sweets and Chocolates (Pty) Ltd and another
[2000] ZASCA 2
;
2000
(2) SA 771
(SCA) at 779C-D
[also
reported at
[2000] 2 All SA 1
(A) –
Ed], evidence that a mark has become distinctive by use must be
approached with circumspection as the sole producer
or distributor of
a product cannot by means of advertising or selling the product under
its generic name render the name capable
of distinguishing in terms
of section 9. The caution applies equally to the provision of a
service said to be protected by
a trade mark.
[15] In
First National Bank of
Southern Africa Ltd v Barclays Bank Plc and another
2003 (4) SA
337
(SCA) [also reported at
[2003] 2 All SA 1
(SCA) – Ed], this
Court was required to decide whether the mark “PREMIER”
was registrable in relation to cheques,
banking and credit card
services and certain related marketing and merchandising services.
In upholding the decision of the
Registrar of Trade Marks that the
word “PREMIER” was not registrable for such goods and
services, it approved the
dictum
of Jacob J in
British
Sugar Plc v James Robertson and Sons Ltd
[1996] RPC 281
at 3012
that there is “an unspoken and illogical assumption that use
equals to distinctiveness”. This assumption
is based on
the fact that common words are naturally capable of use in relation
to the goods or services of any trader no matter
how extensively such
common words have been used by any individual trader of goods or
services of that class.
[16]
In
The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd
[1938] 55 RPC 125
(PC) at 145 Lord Russell pointed out that:
“
A word or words to be
really distinctive of a person’s goods must generally speaking
be incapable of application to the goods
of anyone else.”’
[11]
The words HOME IDEAS are indeed commonly used in the English
language. ‘The place where one lives permanently,
esp. as
a member of a family or household; a fixed place of residence’
and ‘A conception of something to be done or
achieved; an
intention, a plan of action’. These are some of the
definitions of the words ‘home’ and ‘idea’
in
The New Shorter Oxford English Dictionary
Clarendon Press
Oxford 1993 Vol 1 at 1250 and 1303. They are ordinary English
words and their combination does not render
them capable of
distinguishing the business of Better Homes and the services it
offers from similar competing businesses in the
marketplace and the
services they offer. Their joinder is simply a combination of
known words which convey the meaning of
ideas for the home. It
does not constitute an original epithet which is not in ordinary
linguistic use.
[12]
Better Homes takes issue with Consep’s contention that the
phrase HOME IDEAS is descriptive of the services offered by
the
parties. They both, it argues, provide advertising or marketing
services. This argument, in my view, ignores the
fact that what
the HOME IDEAS CENTRE and HOME IDEAS website and the CONSEP HOME
IDEAS exhibition centres are all about is the provision
of ideas for
those interested in or intending to improve or renovate their homes,
i.e. which appliances, door and window frames,
tiles, kitchens and
the like, to install and who or which companies could do it for
them. The words HOME IDEAS are, in my
view, common words and
naturally capable of use in relation to the business of Better Homes,
Consep or any undertaking carrying
on a similar business. Those
words are not incapable of application to other businesses in that
common field of activity.
[13]
In
PepsiCo v Atlantic Industries
[2017] ZASCA 109
, Rogers AJA
said the following about the test to be applied in determining
whether a word is really distinctive of a trader’s
business,
goods or services or merely descriptive:
‘
[8] It is probable that
for most South African consumers the word ‘Twist’ as
applied to Atlantic’s beverages
is an arbitrary brand name
without meaning. Like a made-up word, a common word which is
arbitrary when applied to a particular
product is the exemplar of a
mark inherently capable of distinguishing. [See eg
Orange
Brand Services Ltd v Account Works Software (Pty) Ltd
[2013] ZASCA 158
para 15.] Such words are to be contrasted with
descriptive words. It is a common feature of trade mark legislation
that purely
descriptive marks may not be registered. The reason is
that other traders should not be barred from using them in relation
to their
goods. Lord Parker in
W
& G Du Cros
[
Registrar
of Trade Marks v W & G Du Cros Ltd
[1913]
UKHL 588
;
[1913] AC 624
at 634, cited with approval inter alia in
Joshua Gibson Ltd v Bacon
1927 TPD 207
at 203 and
Distillers
Corporation (SA) Ltd v Stellenbosch Farmers Winery Ltd
1979 (1) SA 532
(T) at 536G-H] formulated the test as being ‘whether
other traders were likely, in the ordinary course of their business
and without any improper motive, to desire to use the same mark . . .
in connection with their goods’. More succinctly, in
order for
a word to be really distinctive of a proprietor’s goods it
‘must generally speaking be incapable of application
to the
goods of anyone else’ (see this court’s decision in
On-line Lottery
[
On-line Lottery Services
(Pty) Ltd v National Lotteries Board & another
[2009] ZASCA 86
;
2010 (5) SA 349
(SCA) para 16] quoting with approval
a dictum of Lord Russell in
Shredded
Wheat
[
Shredded
Wheat Co Ltd v Kellogg Co of Canada Ltd
[1938] 55 RPC 125
(PC)]). For as Lord Simonds said in
Copper
Works
[
Copper
Works application
(1953) 71
RPC 150
at 153]:
‘
Paradoxically
perhaps, the more apt a word to describe the goods of a manufacturer,
the less apt it is to distinguish them: for
a word that is apt to
describe the goods of A, is likely to be apt to describe the similar
goods of B.’
[9] In the High Court of
Australia, Kitto J in
Clark Equipment
[Clark Equipment Co v
Registrar of Trade Marks
[1964] HCA 55
;
(1964) 111 CLR 511
para 5]
expressed the same idea well when he said that the question whether a
mark is adapted to distinguish should be tested
‘
by
reference to the likelihood that other persons, trading in goods of
the relevant kind and being actuated only by proper motives
- in the
exercise, that is to say, of the common right of the public to make
honest use of words forming part of the common heritage,
for the sake
of the signification which they ordinarily possess - will think of
the word and want to use it in connection with
similar goods in any
manner which would infringe a registered trade mark granted in
respect of it.’
[10] The approach in
Du Cros
and
Clark Equipment
was recently affirmed by the High Court of
Australia in
Cantarella
[
Cantarella Bros Pty limited v
Modena Trading Pty Limited
[2014] HCA 48
;
(2014) 254 CLR
337
, particularly paras 70-71] where the following was stated [para
59]:
‘
When the "other traders"
test from Du Cros is applied to a word . . . the test refers to the
legitimate desire of other
traders to use a word which is directly
descriptive in respect of the same or similar goods. The test does
not encompass the desire
of other traders to use words which in
relation to the goods are allusive or metaphorical.’
[14]
When the ‘other traders’ test is applied to the phrase
HOME IDEAS it becomes apparent that they are descriptive
of the
business of Better Homes and of other undertakings carrying on a
similar business. The words have a generic descriptive
meaning. The phrase, as applied to Better Homes’
business, is not an arbitrary name without meaning that is inherently
capable of distinguishing its business and the services it offers.
It is Better Homes’ mark as a whole (the depiction
of a simple
home by the words HOME and IDEAS configurated below each other and
the painted red brush strokes at angles above them)
that
distinguishes its business and services from that of any competitor
and not the phrase HOME IDEAS by itself. To adapt
Lord Parker’s
words, other competitors were likely, in the ordinary course of their
business and without any improper motive,
to desire to use the same
words in connection with their businesses and services.
[15]
Even if the phrase HOME IDEAS can be said to have acquired some
degree of secondary meaning through use - to designate Better
Homes’
business – Better Homes, in my view, has also failed to
establish the second and third requirements for passing
off, namely
misrepresentation and damage, by showing a reasonable likelihood that
members of the public may be confused by the
mark and get-up adopted
by Consep for its exhibition business into thinking that its business
is Better Homes or from that stable.
(
Pioneer Foods
para 14.)
[16]
Whether there is a reasonable likelihood of such confusion
arising is a matter for the judgment of the court. It
is a
question of fact which will have to be determined in the light of all
the circumstances of each case. (See
Capital Estate and
General Agencies (Pty) Ltd and others v Holiday Inns Inc and others
1977 (2) SA 916
(A) at 929E;
Burnkloof Caterers (Pty)
ltd v Horseshoe Caterers (Green Point) (Pty) Ltd
1976 (2) SA 930
(A) at 942C-D;
Pioneer Foods
para 14.) In
Century
City Apartments Property Services CC & another v Century City
Property Owners’ Association
2010 (3) SA 1
(SCA) para 13,
Harms JA referred to the following
dictum
by Laddie J in
Compass Publishing BV v Compass Logistics Ltd
[2004] EWHC 520
(Ch) ([2004] RPC 41) para 24:
‘
The likelihood of
confusion must be appreciated globally, taking account of all
relevant factors. It must be judged through
the eyes of the
average consumer of the goods or services in question. That
customer is to be taken to be reasonably well
informed and reasonably
circumspect and observant, but he may have to rely upon an imperfect
picture or recollection of the marks.
The court should factor
in the recognition that the average consumer normally perceives a
mark as a whole and does not analyse
its various details. The
visual, aural and conceptual similarities of the marks must be
assessed by reference to the overall
impressions created by the marks
bearing in mind their distinctive and dominant components,
Furthermore, if the association
between the marks causes the public
to wrongly believe that the respective goods come from the same or
economically linked undertakings,
there is a likelihood of
confusion.’
And
in
Pioneer Foods
para 14, Wallis JA said:
‘
What falls to be compared
is not any single element of the get-up or even each element
separately, but the overall impact of the
entire get-up of each on
potential customers.’
[17]
Better Homes relies upon the similarity in names alone. In
On-Line Lottery Services
, Heher JA said this:
[37] Passing-off protects a
trader against deception, arising from a misrepresentation by a rival
concerning the trade source
or business connection of the rival’s
goods or services:
Reckitt and Colman SA (Pty) Ltd v SC
Johnson and Son SA
1993 (2) SA 307
(A) at 315B [also reported at
[1993] 1 All SA 27
(A) – Ed]. It does not protect a mark
or get-up in itself:
Caterham Car Sales & Coachworks Ltd
v Birkin Cars (Pty) Ltd and another
[1998] ZASCA 44
;
1998 (3) SA 938
(SCA) at
paragraph
[29]
[also reported at
[1998] ZASCA 44
;
[1998] 3 All SA 175
(A) –
Ed]. Many unsuccessful attempts have been made to restrain
alleged passing off arising from the use of descriptive
names.
In summary, the reason for this lack of success is set out in
Sea
Harvest corporation (Pty) Ltd v Irvin and Johnson Ltd
1985 (2) SA
355
(C) (the “
prime cuts”
case) at 360B-D [also
reported at
[1985] 1 All SA 532
(C) – Ed],
viz
that the
courts will not easily find that such words have become distinctive
of the business or products of the person using them,
and will not
give what amounts to a monopoly in such words to one trader at the
expense of others.
[38] If a term is descriptive,
in the sense that it is the name of the goods themselves, it cannot
simultaneously denote any
particular trade source. Therefore, a
party cannot be prevented from unambiguously using a descriptive term
in its original
descriptive sense, unless it has wholly lost that
descriptive sense and become distinctive of the claimant in every
context:
Wadlow,
The Law of Passing Off
(Sweet and
Maxwell) 3ed at 616.
[39] Even if the claimant
succeeds in proving that a
prima facie
descriptive terms has
acquired some degree of secondary meaning, the scope of protection
for the mark is narrower than for a wholly
arbitrary term.
Relatively minor differences will suffice to distinguish the
defendant’s goods or business when both
use a mark which is
descriptive of the goods and services they provide. This
applies even though the defendant is using the
closely similar term
in a trade mark sense: Wallow,
op cit
, at 617, paragraph
4.’
(Footnote
omitted.)
[18]
And in
Sea Harvest Corporation (Pty) Ltd v Irvin & Johnson Ltd
1985 (2) SA 351
(CPD) at 360J-361D, Aaron J said the following:
‘
As stated in Kerly
Law
of Trade marks and Trade Names
11
th
ed in para 16.50:
“
where
a trader adopts a trading name containing words in common use, some
risk of confusion may be inevitable, and that risk must
be run unless
the first trader is allowed an unfair monopoly in those words”.
The principle was reaffirmed by the
Full Bench decision of this Court in
Rovex Ltd and Another v Prima
Toys (Pty) Ltd
1982 (2) SA 403
(C), where SCHOCK J adopted with
approval the following passage from the Australian case of
Hornsby
Building Information Centre (Pty) Ltd v Sydney Building Information
Centre
[1978] HCA 11
;
(1978) 52 ALJR 392
, approved by the Privy Council in the
case of
Cadbury Schweppes (Pty) Ltd and Others v Pub Squash Co
(Pty) Ltd
[1981] 1 All ER 213
at 218:
“
There
is a price to be paid for the advantages flowing from the possession
of an eloquently descriptive trade name. Because
it is
descriptive it is equally applicable to any business of a like kind,
its very descriptiveness ensures that it is not distinctive
of any
particular business and hence its application to other like
businesses will not ordinarily mislead the public. In
cases of
passing off, where it is the wrongful appropriation of the reputation
of another or that of his goods that is in question,
a plaintiff
which uses descriptive words in its trade name will find that quite
small differences in the competitor’s trade
name will render
the latter immune from action. The risk of confusion must be
accepted, to do otherwise is to give to one
who appropriates to
himself descriptive words an unfair monopoly in those words and might
even deter others from pursuing the occupation
which the words
describe.”’
(Also
see
Burnkloof
Caterers
at
938G.)
[19]
Applying those principles and considerations to the facts of this
case, I am of the view that Consep’s use of the trade
name
CONSEP HOME IDEAS does not in itself carry the complaint of passing
off. Consep depicts the name CONSEP HOME IDEAS in
a get-up,
which is not deceptively or confusingly similar to that used by Home
Ideas. I accept that the word CONSEP is not
a fancy or invented
word, but merely a corrupt spelling for the word ‘concept’.
Some of the meanings which
The New Shorter Oxford English
Dictionary
Clarendon Press Oxford 1993 Vol 1 at 467 ascribe to
the word ‘concept’ are ‘[a] product of the faculty
of conception;
an idea of a class of objects, a general notion; a
theme, a design’. Nevertheless, the word CONSEP is not an
inconsequential
or immaterial addition to Consep’s trade name,
but a significant component of the name. The word CONSEP
and the
very different get-up in which the words CONSEP HOME IDEAS
appears, are differences that suffice to distinguish Consep’s
business from that of Better Homes. It is Better Homes’
whole get-up, which incorporates its trade name, that has a
figurative element and not the words HOME IDEAS standing alone.
Its distinctive and dominant component is the depiction of
a simple
image of a house. It is the impact of the words HOME and IDEAS
configurated below each other with the two printed
red brush strokes
at angles above them that is the immediate striking feature of its
trade name get-up. These key features
are not present in the
get-up of Consep, which, on any footing, is markedly different from
the central feature of Better Homes’
trade name get-up.
Consep’s mark does not capture the distinctiveness of Better
Homes’ mark. The two trade
name get-ups are
linguistically, aurally and visually different. The differences
will be seen immediately, and, in my view,
the relevant customers
will clearly distinguish the one business from the other.
[20]
To bear out its assertion of confusion in the mind of the public,
Better Homes refers to its sales consultants who repeatedly
encountered consumers confused between Home Ideas and Consep and its
Sales Account Manager, Ms McAlpine, and receptionist, who,
in their
interactions with clients, encountered some who were confused by
Consep’s inclusion of the words HOME IDEAS in its
trade name.
These allegations of actual confusion are by no means satisfactory
evidence as to actual confusion caused by
the representation of which
Better Homes complains. Leaving aside the issue of the hearsay
nature of these statements (a
matter I need not decide), they are
statements of conclusions rather than evidence – primary facts
– of actual confusion
in the market place. (See
Burnkloof
Caterers
at 942A;
Pioneer Foods
para 15.)
Consep has been carrying on business using the name CONSEP HOME IDEAS
for close on 17 months before Better Homes
instituted these motion
proceedings on 8 December 2017, and there is no satisfactory evidence
of actual confusion in the marketplace.
Such evidence, it is
trite, is not essential to proof a likelihood of confusion, but, to
use the words of Wallis JA in
Pioneer Foods
para 23, ‘it
can, if present, tip the balance in one direction and, if absent, tip
it in the other’. In any event,
Better Homes adopted a
trading name containing words in common use, and, insofar as some
risk of confusion may be inevitable, the
risk must be run by it.
Otherwise it is allowed an unfair monopoly in the phrase HOME IDEAS.
[21]
In the result the following order is made:
The
application is dismissed with costs.
P.A.
MEYER
JUDGE
OF THE HIGH COURT
Date
of hearing: 6 December 2018
Date
of judgment: 7 February 2019
Counsel
for applicant: Adv I Learmonth
Instructed
by: De Beers Attorneys, Claremont, Cape Town
c/o
BDK Attorneys, Houghton, Johannesburg
Counsel
for respondents: No appearance (heads of argument prepared by Adv S
Mushet)
Instructed
by: Gittins Attorneys, Bedfordview, Johannesburg