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[2017] ZAGPPHC 10
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Tequila Cuervo SA de CV v Fabrication and Light Engineering CC (99935/15) [2017] ZAGPPHC 10; 2017 BIP 68 (GP) (20 January 2017)
IN THE HIGH COURT OF
SOUTH AFRICA
GAUTENG DIVISION,
PRETORIA
20/1/17
CASE
NO: 99935/15
Reportable:
No
Of
interest to other judges: No
Revised.:
Yes
In
the matter between:
TEQUILA
CUERVO SA de
CV Applicant
and
FABRICATION
AND LIGHT ENGINEERING
CC Respondent
JUDGMENT
DE
VILLIERS, AJ:
Introduction
1.
This matter
is about a trademark
[1]
dispute.
2.
The
applicant is the registered proprietor of the following trademarks in
class 33 that are relevant to this application (referred
to herein as
"the
applicant's trademarks"
):
CUERVO
Class 33
Spirits
JOSE CUERVO
Class 33
Alcoholic liqueur, including
Tequila
The jose Cuervo Especial Label
[see PDF for image]
Class 33
Alcoholic beverages, including
Tequila
The Jose Cuervo device
[see PDF for image]
Class 33
Tequila, tequila liqueur and
alcoholic cocktails containing tequila; in class 33
The Raven device
[see PDF for image]
Class 33
Tequila, tequila liqueur and
alcoholic cocktails containing tequila; in class 33
3.
The applicant's trademarks therefore include the
word marks
"CUERVO"
and
"JOSE CUERVO",
as
well as depictions of ravens. In the end, the applicant only relied
upon the two trademarks
"CUERVO"
and
"JOSE CUERVO"
in
argument, and not upon the label and the devices depicted above.
4.
The respondent has applied for registration of
the
[see PDF for image]
trademark
(" the IL CORVO proposed trademark')
in
class 33 in respect of wine.
5.
The applicant opposes the application based on
sections 10(12), 10(14) and 10(17) of the
Trade
Marks Act
, 194 of 1993
("
the
Trade Marks Act
'
).
The three sub-sections of the
Trade
Marks Act
in issue read (underlining and bold
emphasis added to reflect the argument by the applicant):
"Unregistrable
trade marks.-The following marks shall not be registered as trade
marks or, if registered, shall, subject to
the provisions of sections
3
and 70, be liable to
be removed from the register:
(1) ...
(12) a mark which is
inherently deceptive or
the use of which would be
likely
to
deceive or cause c
onfusion, be contrary to law, be contra bonos
mores, or be likely to give offence to any class of persons;
(13) …
(14) subject to the
provisions of section 14, a mark which is identical to a
registered trade mark belonging t
o
a
different
proprietor
or so similar thereto that
the use thereof in relation to goods or services in respect of which
it is sought to be registered
and
which are the same as or
similar to the
goods or services in respect of which such trade mark is
registered, would be likely to deceive
or cause c
onfusion. unless the
proprietor of such trade mark consents to the registration of such
mark;
(15) …
(17) a mark which is
identical or
similar to a trade mark
which is already
registered
and which is well-known in the Republic, if the use of the
mark sought to be registered 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 deception or confusion, unless the
proprietor of such trade mark consents to the registration of
such
mark
..."
6.
The applicant summarised its case that the IL
CORVO proposed trademark, infringes upon the applicant's trademarks
as follows (bold
emphasis added to reflect the argument by the
applicant):
6.1
"Section 10(12): The use by the
Respondent of its proposed IL CORVO mark is likely to deceive or
cause confusion because of
that mark's similarity to the Applicant's
CUERVO mark;
6.2
"Section 10(14): The Respondent's
proposed IL CORVO mark is so similar to the Applicant's registered
CUERVO, JOSE CUERVO
and raven
devices
that the use
by the Respondent of its proposed IL CORVO mark on
wine, wine being similar to tequila, is likely to deceive or cause
confusion;
and
6.3
"Section 10(17): The Applicant's
registered JOSE CUERVO, CUERVO
and
raven devices
are well-known in
South Africa to tequila drinkers and the Respondent's proposed IL
CORVO mark is similar thereto such that the
use of the IL CORVO mark
is likely to take unfair advantage of or be detrimental to the
distinctive repute and character of the
Applicant's registered
marks."
7.
In all three cases the first question therefore
is if any confusing similarity between the IL CORVO proposed trade
mark and the
applicant's trademarks exists, despite the word
"similarity”'
not
being used in section 10(12) of the
Trade
Marks Act.
I start this judgment by
addressing this issue:
The
existence or not of confusing similarity between the IL CORVO
proposed trademark and the applicant's trademarks.
The
existence or not of confusing similarity
8.
The
essential function of a trademark is to indicate the origin of the
goods in connection with which it is used.
[2]
9.
The approach that a court has to apply in
considering any confusing similarity between the proposed trademark
and the existing one(s)
is trite, but not easy. The relevant cases
have been collected in
Distell Limited v KZN
Wines and Spirits
CC (20291/2014)
[2016]
ZASCA 18
(15 March 2016) at Para 7 to 14 and,. in short, include the
following principles:
9.1
The court must consider the allegedly infringing
mark globally, being_ the visual, aural or conceptual similarity of
the two competing
marks. This is based on the overall impression
given by the marks, in particular, their distinctive and dominant
components;
9.2
It is a value judgment;
9.3
An assessment must be made of the impact which
the IL CORVO proposed trademark would make upon the average type of
customer
who would be likely to purchase wine [and I add, who may be
confused that the origin of the wine was the same as CUERVO spirits
or JOSE CUERVO alcoholic liqueur (including Tequila)];
9.4
The court has to transport itself, notionally,
from the courtroom (or the study), to the market place to look at the
two competing
marks as they will be seen in fair and normal
commercial use, by the notional consumer;
9.5
The notional consumer is not of
"phenomenal
ignorance or extraordinarily defective intelligence".
The
notional customer must be conceived of as a person-
9.5.1.
Of average intelligence, having proper eyesight
and buying with ordinary caution;
9.5.2.
Who is reasonably well-informed and reasonably
circumspect and observant;
9.5.3.
Who may encounter the wine bearing the IL CORVO
proposed trademark, with an imperfect recollection of the applicant's
CUERVO or
JOSE CUERVO trademarks;
9.5.4.
As a person without a photographic recollection
of the whole of the applicant's trademarks;
9.6
The two competing marks must be viewed as they
would be encountered in the market place and against the
background of relevant
surrounding circumstances; and
9.7
The two competing marks must not only be
considered side by side, but also separately.
10.
I also considered Mettenheimer and Another
v Zonquasdrif Vineyards CC and Others
2014 (2) SA 204
(SCA) at
Para 13:
"[13] Considerations that could
assist in determining this likelihood of confusion have been proposed
in decided cases. Prominent
among these are the judgments of the
Chancery Division in British Sugar pie v James Robertson & Sons
Ltd [1996] RPG 281 (Ch)
at 296 - 297 and of this court, albeit in a
context different from s 34(1)(b), in Danco Clothing (Pty} Ltd v
Nu-Care Marketing
Sales and Promotions (Pty) Ltd and Another
[1991] ZASCA 121
;
1991 (4)
SA 850
(A) at 860F - 861E. Included amongst the considerations
proposed in these cases are: (a) the uses of the respective goods;
(b)
the users of the respective goods; (c) the physical nature of the
goods; and (d) the respective trade channels through which the
goods
reach the market. It is clear that the list of proposed
considerations was never intended to be exhaustive. Yet they serve
to
stimulate and guide the required process of reasoning in the enquiry
as to the likelihood of confusion."
11.
It is sufficient to establish confusing
similarity if a substantial number of persons probably will be
confused as to the origin
of the wine or the existence of a
connection between IL CORVO and JOSE CUERVO or CUERVO. I must make
such a factual finding on
the normal principles applicable in motion
proceedings for final relief.
12.
The court has to apply the principles set out in
Distel! Limited v KZN Wines and Spirits CC (supra) ultimately to make
a value judgment.
As stated in Bata Ltd v Face Fashions CC and
Another
2001 (1) SA 844
(SCA) at Para 9 and reflected in Adidas AG &
another v Pepkor Retail Limited (187/12)
[2013] ZASCA 3
(28 February
2013) at Para 21 with reference thereto:
"It must be emphasized that the
likelihood of confusion must be appreciated globally and that the -
'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'."
13.
The court must find that there is a more than a
slight resemblance; "
a marked resemblance
or likeness"
is required for a
finding of similarity. This was found in Bata Ltd v Face Fashions CC
and Another (supra) at Para 14, and was applied
in Yuppiechef
Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd (1088/2015)
2016 ZASCA 118
(15 September 2016) at Para 44.
14.
I have endeavoured to be that hypothetical
consumer of wine. As such a person, would I be confused by any
similarity between the
IL CORVO proposed trademark and the
applicant's trademarks?
14.1.
To my mind, the IL CORVO proposed trademark does
or does not globally resemble the applicant's trademarks, JOSE CUERVO
or CUERVO.
They are visually and conceptually different-
14.1.1.
The IL CORVO proposed trademark is a pictorial
devise which bears the words
"ii corvo"
prominently in a cursive type writing.
The three birds, ravens, are depicted in flight over a skyline as
part of the mark-
[see PDF for image]
14.1.2.
The IL CORVO proposed trademark is a device mark
and not a word mark. None of the applicant's trademarks bears a
similar composition
to the IL CORVO proposed trademark. Similar
cursive wording is not used, a skyline is not used, (if still
relevant) a single raven
is used (not in flight), and there are
differences between
"IL CORVO"
and
"CUERVO"
and
"JOSE CUERVO"
respectively.
Accordingly, the
contesting marks, in my view, have clear distinctive dominant
components. The differences are stark, in my view;
14.2.
There is some similarity between the words
"IL
CORVO"
and
"CUERVO",
in appearance
(“c
o
rvo"
and
"c
ue
rvo"
are words of similar length, sharing
the same first and last three letters) leaving aside for the moment
that the IL CORVO proposed
trademark contains the word
"if'
too. In a case of imperfect recollection, the
"if
may or may
not be remembered. There also is some similarity between the words
"IL CORVO"
and
"CUERVO",
in
imperfect pronunciation. Still, to my mind, the overall impression
given by the marks based on their distinctive and dominant
components, is that they are not similar, and to the degree that they
are similar this would not cause confusion;
14.3.
I am alive to the fact that my comparison takes
place before my computer in my study. In my view my findings are not
disturbed the
more I seek to become the average type of customer who
would be likely to purchase wine. He/she is likely to exercise
reasonable
circumspection and observation, will know that wine and
spirits in the case of CUERVO, or alcoholic liqueur (including
Tequila)
in the case of JOSE CUERVO, are different in their nature
and process of manufacture. This knowledge reduces the risk of
confusion
about origin;
14.4.
In my view it is extremely unlikely that the
notional consumer would know that that
"corvo"
and
"cuervo"
both mean raven in different languages. This
reduces the risk of confusion about origin;
14.5.
I took into account that some retailers sell both
wine and tequila, that some consumers drink both wine and tequila and
that wine
and spirits are sold in different parts of retail
establishments, making side-by-side comparison difficult, but perhaps
emphasising
the distinctions too.
15.
Without a confusing similarity, none of the three
grounds relied upon by the applicant as the basis for its objection
can be sustained.
Consequently,
I make the following order:
1.
The applicant's opposition is dismissed with
costs.
________________
DP
de Villiers
Acting
Judge of the High Court
Gauteng
Division
Heard
on:
22 November 2016
On
behalf of the Applicant:
KD ILES
Instructed
by:
Adams & Adams Inc
On
behalf of the Respondent:
P CIRONE
Instructed
by:
DM Kisch Inc
Judgment
handed down:
20 January 2017
[1]
I use "trade mark" where I refer specifically to the
wording of the Trade Marks Act;
[2]
Cowbell AG v ICS Holdings Ltd
2001 (3) SA 941
(SCA) at Para 10;