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[2016] ZAGPPHC 655
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Shoprite Checkers (Pty) Ltd v Charoen Pokphand Group Co Ltd (72005/2015) [2016] ZAGPPHC 655; 2016 BIP 222 (GP) (28 July 2016)
IN
TH E H IG H COU RT OF SOUTH AFRICA
GAUTE
NG DIVISION, PRETORIA
Not
reportable
Not
of interest to other judges
Case
No: 72005/2015
28/7/2016
In
the matter between:
SHOPRITE
CH EC
K
E
RS (
PTY)
LTD
Opponent
and
CHAROE
N POK
PH
A
N D
G
ROU
P
CO
LTD
Trade mark applicant
JUDGMENT
J
W LOUW, J
[1]
Shoprite Checkers (Pty) Ltd ("Shoprite") is the proprietor
of four trade mark registrations for the trade mark FRESHMARK
in
classes 29, 30, and 31 which cover a wide variety of food products,
and in class 42 which,
inter alia,
covers
"retail,
wholesale.........and services
of all sorts
relating
to
eating
and
drinking..
.
".
The registrations
in classes 29, 30 and 31 are endorsed with a disclaimer to the
exclusive use of the words FRESH and MARK.
[2]
Charoen Pokphand Group Co Ltd ("Charoen")
is a
Thai company which has
various
subsidiaries,
including
one
called
CP
Freshmart,
which
is
a
Thai
based
chain
store
that
sells
food
products
in
over
700
outlets.
Charoen
has
applied
to
the
registrar
of
trade
marks
for
the
registration
of
the
following
trademark
in
class
35
for
"retail
services
in
relation
to
food
and
beverages"
[1]
:
NB:
PLEASE CONSULT THE PDF VERSION FOR IMAGES
The
registrar has accepted the application, subject to an endorsement
disclaiming the right to the exclusive use of the words FRESH
and
MART.
[3]
Shoprite opposed Charoen's application before the registrar of trade
marks. The registrar has referred the opposition proceedings
to the
High Court in terms of s 59(2) of the Trade Marks Act 194 of 1993
("the Act").
[4]
Shoprite relies on ss 10(12) and 10( 14) for its opposition. These
sections provide that the following marks shall not be registered
as
trade marks:
(12)
a mark which is inherently deceptive or the use of which would be
likely to deceive or cause confusion, be contrary to law,
be
contra
bonos
mores,
or be likely to give
offence to any class of persons;
(14)
subject to the provisions of section 14, a mark which is identical to
a registered trade mark belonging to 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
confusion, unless the proprietor of such trade mark consents to the
registration of such mark.
[5]
It is
convenient
to
first
deal
with
s
1
0(
1
4).
I
n
terms
of
the
section,
two
inquiries
are
necessary:
are
the
two
marks
identical
or
sufficiently
similar,
and
are
the
services
in
respect
of
which
Charoen
intends
to
use
its mark the same as or similar
to the services
in
respect of
which
Shoprite's marks are
registered,
so
that
there
exists
a
likelihood
of
deception
or
confusion
if
Charoen
were
to
use
its
mark?
I
n
New
Media
Publishing
(Pty)
Ltd
v
Eating
Out
Web
Services
CC
[2]
Thring J
said
the following
[3]
:
'
There
is,
it
seems
to
me,
an
interdependence between the
two
legs
of
the inquiry:
the
less
the
similarity between
the
respective
goods or
services of
the
parties, the
greater
will
be
the
degree
of
resemblance
required
between
their
respective
marks
before
it
can
be
said that
there
is
a
likelihood of
deception or
confusion in the
use
of
the
allegedly offending
mark, and vice versa. Of
course, if the
respective
goods or
services
of the
parties
are
so
dissimilar
to
each
other
that
there
is
no
likelihood of
deception
or
confusion,
the
use
by
the
respondent
even
of
a
mark which
is
identical
to
the applicant's
registered
mark
will not constitute
an infringement;
also,
if the two marks
are
sufficiently dissimilar
to
each
other
no
amount
of
similarity
between
the
respective
goods
or
services
of
the
parties
will
suffice
to
bring
about
an
infringement. I respectfully agree with
the
learned
authors
of
Webster
and
Page
South
African Law
of
Trade Marks
4th
ed
para 12.23
(at
12-41),
where
they
say,
with
reference to
s
34(1)(b)
of
the
Act:
'(O)n
a
proper interpretation of
the
South
African
section
the
degree
of
resemblance
between
the marks and the degree of resemblance
between
the goods
or services must
be such that
their combined effect will
be to
produce
a likelihood of
deception or
confusion when that
mark is used on those goods or services'
.
This
dictum
was
approved
of
by
the
Supreme
Court
of
Appeal
in
Mettenheimer
and
Ano.
v
Zonquasdrif
Vineyards
and
Others.
[4]
"
[6]
Charoen does not dispute that the retail services for which
Shoprite's mark is registered are the same services for which Charoen
has applied to have its mark registered. The only issue is therefore
whether Charoen's mark is sufficiently similar to Shoprite's
mark to
give rise to a likelihood of deception or confusion if the marks are
used in relation to the same services. Charoen accepts
that it bears
the onus of showing that there is no reasonable likelihood or
probability of confusion or deception resulting from
the use of its
mark in respect of the services for which registration is sought.
[7]
The
approach
to
the
issue
of the
likelihood
of deception
or
confusion
is
the
same
for
infringement
and
opposition
proceedings.
I
n
Plascon-Evans
Paints
Ltd
v
Van
Riebeeck
Paints
(Pty)
Ltd
[5]
,
Corbett
JA
said
the
following
at
640G
-
6410:
"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 establish that a substantial
number of such
persons will be deceived or confused. The concept of deception or
confusion is not limited to inducing in the minds
of interested
persons the erroneous belief or impression that the goods
in relation to which the 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 notional 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 to the sense, sound and appearance of the
marks. The marks must be viewed as
they would be encountered in the
market place and against the background of relevant 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."
[8]
To these principles may
be
added that the
likelihood
of confusion
must
be appreciated
globally.
I
n
Century
City Apartments
Property
Services
CC
&
another
v
Century
City
Property
Owners'
Association
[6]
the
Supreme
Court
of
appeal
referred
with
approval
to
the
following
dictum
in
Compass
Publishing BV v Compass Logistics Ltd
[7]
:
"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."
[8]
[9]
It
has
been
held
that
a
reasonable
likelihood
of
confusion
or
deception
in
any
one
of
the
three
aspects of
sense,
sound
and
appearance
will be sufficient
to
refuse
a
n
application
for registration of
a
m
a
rk.
[9]
That
said,
the
mark
must
be
considered
globally,
as
a
whole.
[10]
[10]
When compared visually, the dominant component of both marks is the
conjoined words FRESHMARK and FRESHMART. Charoen accepts
that the
font (special form) used for the FRESHMART component of its mark is
not a distinguishing feature of the mark.
[11]
It was submitted on behalf Charoen that the "CP" component
of its mark was visually equally significant. I
disagree.
Although the letters "CP" are clearly visible, and
are, according to Charoen's evidence, understood by
consumers in
Thailand to be an acronym for Charoen Pokphand, they will not mean
anything to consumers in this country as Charoen
Pokphand does not
trade in this country. Consumers in this country will therefore not
attribute any particular
significance to
the letters CP. They will rather see and understand the word
FRESHMART, and that is what they
will focus on. According to the
endorsement contained in Charoen's trade mark application, the Thai
characters in the mark are
translated as "CP Freshmart".
Those characters will also be meaningless to South African consumers,
save for those that
have an understanding of the Thai language.
[
1
2]
When
compared
aurally,
the
marks
sound
virtually
the
same.
I
n
this regard,
it
has
been
emphasised
that
the
first
syllable
of
a
word
mark
is
generally
the
most
important,
having
regard
to
the
tendency
of
people
to
slur
the
endings
of
words.
[11]
Counsel
for
Checkers
submitted
that
consumers
are
most
unlikely
to
pronounce
Charoen's
trade
mark
as
"CP
FRESHMART",
and
will
simply refer
to
the
dominant part
of
the
mark,
namely
FRESHMART. Iagree with the submission.
[13]
Conceptually, the overall impression of the two marks is very
similar. They have the word FRESH in common. It was submitted
on
behalf of Charoen that the "MARK" in FRESHMARK would be
understood to refer to a trade mark. But the word MARK is
used in
combination with the word FRESH, and may equally be understood to be
a reference to a market, especially by Afrikaans speakers
where
"mark" means market. If the word
MARK is used in combination with the word FRESH, it brings
to mind
that goods that goods that are fresh are being sold. Counsel
for Charoen a lso submitted that consumers will
know that both marks
indicate a shop selling goods which are fresh, but
argued that Shoprite can't
lay claim to a monopoly in
words which are in general use. This argument disregards
the fact that the words FRESH
and MARK are conjoined and that there
is no word such as FRESHMARK in the English language.
[14]
In the result, I find that Charoen has not discharged the onus of
showing that there is no reasonable probability or likelihood
of
confusion or deception resulting from its use of the mark in respect
of which it seeks registration.
[15]
In view of this finding, it is unnecessary to consider Shoprite's
objection based on s 10(12) of the Act.
[16]
I accordingly make the following order:
The
trade mark application of Charoen Pokphand Group Ltd is refused and
it is ordered to pay the costs of the opposition proceedings.
Counsel
for the Opponent: Adv. G D Marriott
Instructed
by: Adams & Adams, Pretoria
Counsel
for the Trade Mark Applicant: Adv. I Joubert
Instructed
by: Spoor & Fisher, Centurion
[1]
Shoprite's registration
in
class 42 was in terms of the
Trade Mark Regulations in
force in
1989
when registration
occurred.
In the current regulations, retail services fall in class 35.
[2]
2005 (5) SA 388 (CPD)
[3]
at 3940-G
[4]
2014 (2) SA 204
(SCA) para [1
1
]
[5]
1984 (3) SA 623 (A).
[6]
2010 (3) SA
I
(SCA)
para
[l3].
[7]
[2004] EWHC
520
(Ch).
[8]
See also; Cowbell AG v ICS Holdings ltd 200 I (3) SA 941 (SCA).
[9]
Laboratoire
Lachartre
S.A. v Armour-Dial
Incorporated
1976
(2) SA 744
(T) at 746H..
See
also
Cavallaa
Ltd.
v International
Tobacco
Co. of S A Ltd
1953
(I
)
SA 461 (T) at 468G-H
[10]
Shimansky
v Browns the Diamond Store
2014
BIP 341
[11]
Budweiser
Budvar
National
Corporation
v Anheuser-Busch
Corporation
2002
SIP
126
at
129H