Brief Summary

Trade Marks — Opposition to registration — Applicant opposing registration of Respondent's mark "OLYMP" based on prior registration of "OLYMPIC" — Applicant's mark registered since 1918 and used extensively across various clothing categories — Respondent's application amended to exclude shoes and boots — Court to determine likelihood of confusion or deception between marks — Respondent bears onus to prove absence of such likelihood — Court finds marks similar and likely to cause confusion, thus upholding Applicant's opposition to Respondent's registration.

Comprehensive Summary

Summary of Judgment

Introduction

The proceedings were a referral from the Office of the Registrar of Trade Marks to the High Court in terms of section 59 of the Trade Marks Act 194 of 1993, arising from opposition to an application to register a trade mark. The matter concerned whether the Respondent’s proposed trade mark was registrable in light of the Applicant’s earlier registered rights, and in particular whether the Respondent’s mark was prohibited by section 10(14) of the Act because its use would be likely to deceive or cause confusion.

The Applicant was Feltex Holdings (Pty) Limited, a long-standing proprietor of trade mark registrations in class 25 and a trader under the mark OLYMPIC. The Respondent was Olymp Benzer GmbH & Co. KG, which applied to register the mark OLYMP in class 25.

Procedurally, the Respondent applied on 31 July 2009 to register OLYMP. The application was accepted by the Registrar on 9 February 2011 and advertised in the Patent Journal on 28 April 2011. After the opposition period had expired (during July 2011), the Respondent sought an amendment to the specification, deleting “shoes and boots”. The Applicant filed its opposition on 19 March 2012, initially invoking sections 10(12) and 10(14), but ultimately proceeded only under section 10(14).

The subject-matter of the dispute was trade mark registrability and the likelihood of deception or confusion between OLYMPIC and OLYMP when used in relation to goods in class 25 (clothing-related goods), having regard to the Applicant’s existing registrations and use.

Material Facts

The court accepted as material and essentially undisputed that the Applicant was the registered proprietor of four trade marks in class 25, and that it traded under the mark OLYMPIC. The Applicant’s mark had been registered and used in South Africa for almost 100 years, with exclusive rights in South Africa since 1918, and with recorded amendments and extensions to the scope of its use over time.

The Applicant’s trade mark use began with a focus on sports footwear, became entrenched and recognisable in South Africa, and later expanded to men’s and women’s wear as well as children’s shoes. At the time of the dispute, the mark was also used on further ranges such as clothing, bags and caps, sold through a wide range of retail outlets. A fact emphasised by the court was that there was nothing limiting the Applicant’s 1918 registration to sports clothing; the registration extended to all clothing.

The Respondent applied to register OLYMP in class 25 on 31 July 2009. The application was accepted and advertised, and later the Respondent amended the specification by removing “shoes and boots” from the listed goods. The Applicant opposed the registration. The court treated it as central to the dispute that the Respondent sought registration in respect of goods that were the same as or similar to those for which the Applicant already held registrations in class 25 (given the breadth of the Applicant’s registration, which was not limited to sportswear).

Where the parties differed (and the court addressed the dispute), the Respondent contended that OLYMP and OLYMPIC were not identical or similar, emphasising the “IC” ending in OLYMPIC, arguing that OLYMPIC was grammatically an adjective and descriptive, and drawing analogies to words such as OLYMPIAD. The Respondent also relied on an asserted distinction in markets, contending that consumers would encounter OLYMPIC in sportswear contexts and OLYMP in business and leisure wear, and it also advanced a contention of dilution and the significance of suffixes (with examples such as OLYMPIAN and OLYMPIG). The court did not accept these contentions as material in a way that avoided the statutory test, given the breadth of the Applicant’s registration and the approach required in opposition proceedings.

Legal Issues

The central legal questions were whether, for purposes of section 10(14) of the Trade Marks Act 194 of 1993, the Respondent’s mark OLYMP was identical or so similar to the Applicant’s registered mark OLYMPIC that use of OLYMP in relation to the goods for which it was sought to be registered (class 25 goods) would be likely to deceive or cause confusion.

The court was required to determine, first, whether the goods covered by the Respondent’s application were the same as or similar to the goods covered by the Applicant’s registrations, and second, whether the mark similarity and goods similarity together produced a likelihood of deception or confusion. The inquiry was primarily an application of legal principles to facts, involving a value-laden evaluative assessment of likely consumer perception, but conducted through the legal framework articulated in prior authority (including the “notional consumer” and “imperfect recollection” approach).

The court also addressed the allocation of the onus under section 10(14), holding that once opposition is made and similarity to a registered mark is engaged, the Respondent bore the onus to satisfy the court that there was no likelihood of deception or confusion in the relevant circumstances.

Court’s Reasoning

The court set out the operative statutory test in section 10(14): a mark is unregistrable if it is identical or so similar to a registered mark belonging to a different proprietor that its use in relation to the same or similar goods would be likely to deceive or cause confusion, absent consent. The court further referred to section 17(1) as reflecting a bar on registration where use of both marks in relation to the goods is likely to deceive or cause confusion, and noted that section 10(15) concerns competing applications (as distinct from a conflict with an already-registered mark).

In approaching similarity and confusion, the court applied the comparative methodology described in Plascon-Evans Paints Pty Ltd v Van Riebeeck Paints (Pty) Ltd [1984] ZASCA 51; 1984 (3) SA 623 (A). This required a comparison of the marks with regard to sense, sound, and appearance, assessed through the likely impact on an average consumer (a person of average intelligence with proper eyesight, purchasing with ordinary caution), and taking into account that consumers may encounter one mark with an imperfect recollection of the other. The court stressed that the marks must be considered both side by side and separately, and that the decisive consumer impact often arises from the general impression or a dominant or striking feature, rather than a detailed photographic memory.

The court also relied on authority indicating that the likelihood of deception or confusion is assessed as a matter of first impression, and that the exercise does not assume that consumers will engage in close scrutiny or have the opportunity to compare marks directly in the marketplace. In this regard, the court referred to Adidas AG & Another v Pepkor Retail Limited (9187/12) [2013] ZASCA 13 (28 February 2013) and also cited Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) and Woolworths (Pty) Ltd v Wellness Warehouse (Pty) Ltd 62277/13 2014 ZAGPPHC 609 (29 July 2014).

A substantial part of the reasoning addressed how the court should treat the Respondent’s argument that it intended to use OLYMP in a different segment (business and leisure wear) and that the Applicant’s mark was associated with sportswear. The court applied the principle, confirmed in Adcock Ingram Intellectual Property (Pty) Ltd v CIPLA Medpro (Pty) Ltd 2012 (4) SA 238 (SCA) and derived from Bristol Laboratories Inc v Ciba Ltd 1960 (1) SA 864 (A), that the relevant question in opposition proceedings is not what the applicant for registration intends to do, but what it would be permitted to do if registration were granted. Accordingly, it was insufficient for the Respondent to rely on a limited intended use or an identified method of use that might avoid confusion; the court had to consider the full scope of permissible use across the goods covered by the application.

Consistently with that approach, the court rejected the Respondent’s attempt to confine the inquiry by market segmentation (sportswear versus business wear). The court treated the breadth of the Applicant’s registration—not limited to sportswear and extending to all clothing—as decisive in evaluating the goods similarity and the potential for confusion. The court further considered the Respondent’s amendment removing “shoes and boots” from the specification and observed that, if the Respondent had not considered confusion or deception as a potential consequence, it was difficult to see why such an amendment would have been necessary; however, the court did not treat the amendment as determinative, and proceeded to assess the statutory criteria as required.

In addressing the Respondent’s submission about dilution and suffixes (such as OLYMPIAN and OLYMPIG) and the claimed grammatical/descriptive character of “OLYMPIC”, the court found these submissions unpersuasive. The court regarded them as insufficient to counter the core statutory question of similarity and likely confusion, particularly in circumstances where the Applicant’s earlier mark was long-standing, registered broadly for clothing, and used across an expanded range.

The court also referred to Orange Brand Services Ltd v Account Works Software (Pty) Ltd (970/12) [2013] ZASCA 158 (22 November 2013) to reinforce the proposition that in opposition proceedings the comparison is undertaken on a notional basis: the enquiry is how the parties would be entitled to use their marks if both were registered, rather than their actual or intended use at the time. The court further noted, consistently with Orange, that in assessing deception or confusion regard must be had to the essential function of a trade mark, namely to indicate the origin of goods or services.

Applying these principles to the facts, the court concluded that the Respondent had not discharged the onus of showing that registration of OLYMP would not be likely to deceive or cause confusion. The court was satisfied that the goods to which the Respondent’s mark would apply were similar to those covered by the Applicant’s registrations and that a consumer could associate OLYMP with the Applicant’s OLYMPIC mark. The Respondent’s emphasis on the “IC” suffix and grammatical distinctions was treated as overly pedantic and not sufficient to neutralise the likelihood of deception or confusion when assessed through the required marketplace lens.

Outcome and Relief

The court refused the Respondent’s trade mark application and ordered that it not be registered. Specifically, the Respondent’s trade mark application 2009/14586 in class 25 was refused, and the Registrar of Trade Marks was ordered not to register the Respondent’s trade mark.

The court ordered that costs follow the result, and accordingly the Respondent was ordered to pay the costs of the application.

Cases Cited

Plascon-Evans Paints Pty Ltd v Van Riebeeck Paints (Pty) Ltd [1984] ZASCA 51; 1984 (3) SA 623 (A)

Adidas AG & Another v Pepkor Retail Limited (9187/12) [2013] ZASCA 13 (28 February 2013)

Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA)

Woolworths (Pty) Ltd v Wellness Warehouse (Pty) Ltd 62277/13 2014 ZAGPPHC 609 (29 July 2014)

Adcock Ingram Intellectual Property (Pty) Ltd v CIPLA Medpro (Pty) Ltd 2012 (4) SA 238 (SCA)

Bristol Laboratories Inc v Ciba Ltd 1960 (1) SA 864 (A)

Orange Brand Services Ltd v Account Works Software (Pty) Ltd (970/12) [2013] ZASCA 158 (22 November 2013)

Adcock Ingram Intellectual Property (Pty) Ltd v Cipla Medpro (Pty) Ltd & Registrar of Trade Marks (265/2011) [2012] ZASCA 39 (29 March 2012)

Legislation Cited

Trade Marks Act 194 of 1993, section 59

Trade Marks Act 194 of 1993, section 10(12)

Trade Marks Act 194 of 1993, section 10(14)

Trade Marks Act 194 of 1993, section 10(15)

Trade Marks Act 194 of 1993, section 17(1)

Trade Marks Act 194 of 1993, section 14

Trade Marks Act 194 of 1993, section 3

Trade Marks Act 194 of 1993, section 70

Rules of Court Cited

No rules of court were cited in the judgment.

Held

The court held that the Respondent’s mark OLYMP was sufficiently similar to the Applicant’s registered mark OLYMPIC, and that the goods covered by the Respondent’s application in class 25 were the same as or similar to the goods for which the Applicant’s mark was registered, given the breadth of the Applicant’s registrations (not limited to sportswear). On that basis, the court held that use of OLYMP would be likely to deceive or cause confusion for purposes of section 10(14), and that the Respondent failed to discharge the onus of showing otherwise.

The Respondent’s application 2009/14586 was refused, the Registrar was directed not to register the mark, and the Respondent was ordered to pay costs.

LEGAL PRINCIPLES

The comparison of trade marks for purposes of deception or confusion requires an assessment of the marks’ sense, sound, and appearance, viewed as they would be encountered in the marketplace by a notional consumer of average intelligence exercising ordinary caution, and allowing for imperfect recollection rather than detailed side-by-side analysis.

The likelihood of deception or confusion is assessed as a matter of first impression, without close scrutiny that assumes consumers can compare the marks directly.

In opposition proceedings, the relevant question is not how a party intends to use its mark, but how it would be entitled to use the mark if registration were granted. The onus cannot be discharged merely by showing that a particular intended method of use would avoid confusion; the enquiry concerns the full scope of permissible use across the goods covered by the application.

The essential function of a trade mark is to indicate the origin of goods or services, and the confusion enquiry is directed at whether the later mark is likely to cause consumers to assume a connection in trade origin with the proprietor of the earlier registered mark.

Once section 10(14) is engaged on the basis of identity or similarity to a registered mark, the applicant for registration bears the onus to satisfy the court that there is no likelihood of deception or confusion.

Feltex Holdings (Pty) Limited v Olymp Benzer GmbH and Co. KG (5918/2015) [2016] ZAGPPHC 651 (28 July 2016)