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[2019] ZAGPPHC 215
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Accounting Made Easy CC v School Accountin Made Easy (Pty) Ltd (81365/2016) [2019] ZAGPPHC 215 (25 June 2019)
REPUBLIC
OF SOUTH AFRICA
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
DATE:25/6/2019
CASE
NO: 81365/2016
In
the matter between:
ACCOUNTING
MADE EASY CC
APPLICANT
And
SCHOOL
ACCOUNTIN MADE EASY (PTY) LTD
RESPONDENT
In
the counter application between
SCHOOL
ACCOUNTIN MADE EASY (PTY) LTD
APPLICANT
And
ACCOUNTING
MADE EASY CC
1
st
RESPONDENT
THE
REGISTRAR OF TRADE MARKS:
2
ND
RESPONDENT
THE
COMPANIES AND INTELLECTUAL
PROPERTY
COMMISSION
JUDGMENT
MAKHOBA,
AJ
[1] This
is an application for the relief to interdict and restrain the
respondent in terms
of section 34 (1) (a) of the Trade Marks Ac 194
of 1993. The applicant trade W1der the name "Accounting Made
Easy" whereas
the respondent trade under the name "School
Accounting Made Easy" both the applicant and the respondent
offer lessons
in accounting to various institutions of learning and
offer as well learning materials indifferent ways. The applicant is
seeking
exclusive right to use the mark accounting made easy.
[2]
In
a counter application the respondent contends that the applicant's
mark is no registrable because it is generic and more description
of
a product for educational purposes and seeks the removal of the
applicant's registered accounting made easy mark in terms of
section
24 (1) read with section 9 and 2 (a) and (b) of the Trade Mark Act.
[3]
The
registrar of Trade Marks has, however, took no part in the litigation
and abides by the decision of the court. The matter was
argued on the
papers and without either party seeking a reference to evidence.
[4]
The
applicant is Accounting Made Easy CC a South African close
Corporation registered in 2009 with its registered office at 8 Danga
Road, Victory Park Johannesburg. Mr Mark Samowitz is the sole member.
The applicant provides short courses in accounting primarily
to
employees and to the general public at monthly seminars. The clients
includes school and university accounting students. These
courses are
presented under the trade mark Accounting made easy and printed
material are also provided with the branded mark.
[5]
The
respondent was registered on the 20th August 2014 under the domain
name school accountingmadeeasy.co.za and Mr Muller is the
director.
The respondent market and supplies inter alia accounting electronic
workbooks, lessons and tools either through its website
or on a
lockable USB. Its customers are government schools, IEB schools, ACE
(Accelerated Christian Education School) and Cambrige
curriculum
school, bookshop, home scholars, teachers and individual learners. It
also supplies its books on accounting practice
to private schools in
South Africa and to book shops in Namibia.
[6]
Section 34(1) (a) of the Trade Mark Act no 194 of 1993 provides as
follows: "(1)
The rights acquired of a trade mark shall be
infringed by-
(a)
the
authorized use in the course of trade in relation to goods or service
in respect of which the trade mark is registered, of a
mark so nearly
resembling it as to be likely to deceive or cause confusion"
[7]
Section 24 (1) of the same Act reads as follows:
"In
the event of non-insertion in or omission from the register of an
entry, or of any entry wrongly made in or wrongly remaining
on the
register, or of any error or defect in any entry in the register, any
interested person may apply to the court or, at the
option of the
applicant and subject to the provisions of section 59, in the
prescribed manner, to the registrar, for the desired
relief: and
thereupon the court or the registrar, as the case may be, may make
such order for making, removing or varying the entry
as it or he may
deem fit."
[8]
It was submitted on behalf of the applicant that the respondent mark
"school
accounting made easy incorporates the whole of
applicant's registered trade mark and is plainly deceptive and
similar to applicant's
registered trade mark and thus it infringes
applicant's registration in terms of section 34 (1) (a) of the Act
and the court should
invoke section 34 (3) of the Act and interdict
the respondent.
[9]
For the respondent counsel submitted that accounting made easy is not
trade mark.
It is inherently distinctive it only indicates the actual
intended purpose and characteristics of the goods and service offered
under the mark, that is, the offering of teaching services and
educational books so that accounting is made easy.
[10]
The dispute between the two parties requires a comparison of the
marks, in the circumstances in which
they can be expected to be
encountered, to determine whether they so nearly resemble one another
that a substantial number of persons
will probably be deceived into
believing that the respondent's goods or services originates from or
are connected with the applicant's
trade mark or at least be confused
as to whether that is so.
[11]
in
matters of his nature, our courts had always followed the decision in
Plascon-Evans
paints Ltd v Van Riebeeck paints (Ltd) Ltd
[1984] ZASCA 51
; ,
1984 (3) SA 623
(A)
.In
this decision the court said the following on p640G
"In
an infringement action the onus is on the plaintiff to show the
probability or likelihood of deception or confusion. It
is not
incumbent upon the plaintiff to show that every person interested or
concerned (usually as customer) in the class of goods
for which his
trade mark has been registered would probably be deceived or
confused. It is sufficient if the probabilities established
that a
substantial number of such persons will be deceived or confused. If
the concept of deception or confusion is not limited
to inducing in
the minds of interested person the erroneous belief or impression
that the goods in relation to which he defendant's
mark is used are
the goods of the proprietor of the registered mark, ie the plaintiff,
or that there is a material connection between
the defendant's goods
and the proprietor of the registered mark; it is enough for the
plaintiff to show that a substantial number
of persons will probably
be confused as to the origin of the goods or the existence or
non-existence of such a connection.
The
determination of these questions involves essentially a comparison
between the mark used by the defendant and the registered
mark and,
having regard to the similarities and differences in the two marks,
an assessment of the impact which the defendant'
s mark would make
upon the average type of customer who would be likely to purchase the
kind of goods to which the marks are applied.
This notion customer
must be conceived of as a person of average intelligence, having
proper eyesight and buying with ordinary
caution. The comparison must
be made with reference of the sense, sound and appearance of the
mark. The marks must be viewed as
they would be encountered in the
market place and against the background of relevance surrounding
circumstances. The marks must
not only be considered side by side,
but also separately. It must be borne in mind that the ordinary
purchaser may encounter goods,
bearing the defendant's mark, with an
imperfect recollection of the registered mark and due allowance must
be made for this. If
each of the marks contains a main or dominant
feature or idea the likely impact made by this on the mind of the
customer must be
taken into account. As it has been put, marks are
remembered rather by general impressions or by some significant or
striking feature
than by a photographic recollection of the whole.
And finally consideration must be given to the manner in which the
marks are
likely to be employed as, for example, the use of name
marks in conjunction with a generic description of the goods.
At
page 642 E CORBETT JA went on to say"
"As
I have emphasized, however, the comparison must not be confined to a
viewing of the marks side by side. I must notionally
transport myself
to the market place (see the remarks of COLMAN J in Laboratoire
Lacharte SA v Armour- Dial Incoporated
1976 (2) SA 744
(T) at
746D) and consider whether the average customer is likely to be
deceived or confused. And here I must take into account relevant
surrounding circumstances, such as the way in which the goods to
which the marks are applied are marketed, the types of customer
who
would be likely to purchase the goods, matters of common knowledge in
the trade and the knowledge which such purchase would
have of the
goods in question and the marks applied to them"
[12]
The
applicant in this matter before this court must therefore prove that
the mark "school accounting made easy" may cause
confusion
or deceive customers as it so closely resembles the applicant's
registered mark. The applicant only have to show that
a substantial
number of persons may be confused as to the origin of the
respondent's mark. To put it simple this court must decide
whether
there is any likelihood of deception or confusion in the market place
in relation to the use of the two marks.
[13]
There
are a number of decisions dealing with the likelihood of deception or
confusion in regard to either the sense, sound o appearance
of the
two marks. I will refer to few of them in order to illustrate what
the court's approach should be.
[14]
In
Sabel BP V Puma AG, Rudolf Dassler Sport (1998] RPC 199 (ECJ) at 224
it was held:
"That
global appreciation of the visual aural or conceptual similarity of
the marks in question, must be based on the overall
impression given
by the marks, bearing in mind, in particular, their distinctive and
dominant components...
In
that perceptive, the more distinctive the earlier mark, the greater
will be the likelihood of confusion. It is therefore not
impossible
that the conceptual similarity resulting from the fact that two marks
use images with analogous semantic content may
give rise to a
likelihood of confusion where the earlier mark has a particularly
distinctive, either per se or because of the reputation
it enjoys
with the public.
"
[15]
In African Sun Oil Refineries (Pty) Ltd v Unilever p/c 2007 BIP
127 (NPD) at p132
Hurt J said the following
''where an
invented word has been registered as a mark, a person subsequently
selecting an invented word for his mark, who has the
whole spectrum
of possible permutation of the letters of the alphabet at his
disposal, should take care no to select a permutation
which is too
close to the registered mark.
"
[16]
In John Craig (Pty) Ltd v Dupa Clothing Industries
1977 (3) SA 144
(T) at 151
King AJ found:
"A
reasonable likelihood of deception or confusion in regard to either
the sense, sound of appearance of the two marks will
suffice to
discharge the onus on the applicant. Vide, Cavalla Ltd v
International Tobacco Co. of South Africa.,
1953 (1) SA
461
(D. PARKER, J., in the Pianotist case,
23 R.P.C. 777
, said:
"You
must take two words; you must judge them by their look and their
sound; you must consider the goods to which they are
to be applied.
You must consider the nature and kind of customer who would be likely
to buy these goods. In fact you must consider
all the surrounding
circumstances and you must further consider what is likely to happen
if each of those trademarks is used in
a normal way as a trade mark
for the goods of the respective owners of the marks. If after
considering all the circumstances you
come to the conclusion that
there will be confusion, that it to say not necessarily that one man
will be injured and the other
will gain illicit benefit- but that
there will be confusion in the mind of the public which lead to
confusion in the goods, then
you must refuse registration in that
case.
"
[17]
In
Yuppiechef
Holdings (Pty) Ltd v Yuppie gadgets Holdings (Pty) Ltd (108/2015)
2016 ZASCA 118
(15 September 2016) in paragraph 13
the
court said the following
"[13]
In
Rembrandt Fabrikante
&
Handlaas (Edms) Bpk v Gulf
Oil Corporation
Trollip J said that the stationary system of
trademark protection 'is designed to protect, facilitate and further
the trading in
the particular goods in respect of which the trade the
trademark is registered'. Save that, since he said that, it has
become possible
to register trademarks in respect of trading in
services as well as goods, the statement remains opposite. The
trademark serves
as a badge of origin of the goods or services to
which it is applied. The reference to a badge of origin is directed
at the original
source of the goods or services, not the mechanism
though which they were acquired. Thus, to say that one bought a pair
of shoes
at A & D Spitz or some other well-known shoe store
merely identifies the shop where the goods were purchased and not
their
origin. The shoes in question will in turn bear a trademark,
such as Carvela or Kurt Geiger or Jimmy Choo. Those are the marks
that indicate their origin. The mark A & D Spitz identifies the
shop not the goods that can be purchased there"
[18]
The
marks that the applicant seek to protect are registered in respect of
courses in accounting he provides and the learning material
branded
with the mark given to the attendees. The applicant gives these
courses under its trade mark "Accounting made easy"
whereas
the respondent's customers are government schools, IEB schools,
bookshops, home scholars, teachers and individual learners.
Therefore
in my view their marker is not completely the same.
[19]
The
use of the same mark on other goods or services, falling outside the
class of goods or services covered by the registration,
does no
amount to an infringement under section 34 (1) (a) See Yuppiechef
Holdings decision referred to above on para 17.
[20]
That
brings me to the defence of the respondent. First the respondent
submits that there are numerous different proprietors who
have
registered the phrase "MADE EASY" and the phrase can never
indicate origin. Secondly it is simply impossible in
such
circumstances for the average consumer to associate the use of a
descriptive word accompanied with the phrase "MADE EASY''
with
any particular mark proprietor. Thirdly the phrase school accounting
made easy is descriptive of school accounting and therefore
was not
an infringement under section 34 (1) (a).
[21]
It
is an undeniable truth that the phrase "MADE EASY" is used
by many proprietors all over the world including South Africa.
This
court accept therefore that the applicant cannot claim that the
phrase "made easy" can only be associated with the
mark
"accounting made easy".
[22]
The
obvious point of similarity between the two marks lies in the use of
the phrase "Accounting made easy" Counsel for
the applicant
laid considerable emphasis on the actual confusion elicited by the
mark school of accounting made easy. In the Yuppiechef
Holding case
supra page 22 paragraph 38 the court said" ... "there are
many cases in which it has been said that it is
not the purpose of
trade marks or copyright to enable people to secure monopolies on the
commons of the English language"
[23]
In
my view the mark "school accounting made easy" it is a
unique mark for the business which is the school of accounting
made
easy and it can be distinguished from other similar marks there is no
possibility of confusion. Similarly the mark "accounting
made
easy" it is a unique mark for the business conducted by the
applicant and equally well it can be distinguished from other
similar
marks and there is no possibility of confusion. Moreover the services
rendered by the two businesses can be distinguished
from each other.
Furthermore they use different logos and their clients are not the
same. The defences raised by the respondent
to the claim of
infringement under section 34 (1) (a) had to succeed.
The
applicant's action
is
dismissed
with costs.
Counter
application
[24]
In
answering the counter application counsel for the applicant submitted
that applicant's trade mark registrations were granted
after due
considerations by the second respondent in reconvention. The concept
of the mark is by its nature descriptive. The trademark
consist of
the descriptive word "accounting" qualified with the phrase
made easy.
[25]
On
behalf of the respondent it is submitted that "accounting made
easy" registration as a trade mark is of no significance.
In
addition counsel for the respondent submitted that the applicant
itself does not use the phrase accounting made easy as a trade
mark.
[26]
The
question to be answered by the court is whether the mark is an entry
wrongly remaining on the register on the grounds that it
is incapable
of distinguishing and is descriptive. The applicant bears an onus of
establishing that its mark of Accounting made
easy is capable
distinguished and not descriptive.
[27]
Having
found that the applicant's trade mark can be distinguished from other
trademarks it follows that the
counter
application must fail and it is dismissed with costs.
D.
MAKHOBA
ACTING
JUDGE OF THE GAUTENG DIVISION, PRETORIA
ATTORNEY
FOR APPLlCANT/ FIRST
: RON WHEELDON ATTONEYS c/o
HACK STUPEL
RESPONDEN
IN COUNTER APPLICATION & ROSS
COUNSEL
FOR APPLICANT
: ADV RMICHAU SC
ATTORNEY
FOR RESPONDENT/ APPLICANT : DE CHALAINS PATENT & TRADE MARK
ATTONEYS
IN
COUNTER APPLICATION
COUNSEL
FOR RESPONDENT
:
ADV D SHAW