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[2016] ZAGPPHC 777
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Roccat GMBH v SMD Technologies CC (27172/2015) [2016] ZAGPPHC 777; 2016 BIP 245 (GP) (30 August 2016)
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
CASE
NO: 27172/2015
DATE:
30/8/2016
In
the matter between:
ROCCAT
..
GMBH
…................................
Applicant/Opponent
before
.
Registrar of
..
Trade
Marks
and
SMD
TECHNOLOGIES
CC
…....................................
Respondent/Trade
Marks
..
Marks
..
Applicant
..
before
..
Registar
.
Trade
Marks
JUDGMENT
VAN
DER WESTHUIZEN, A J
1.
This
is an opposition to the application under application number
2012/32833 for the registration of the trade mark ROCKA Device
in
class 9 (the trade mark) in the name of SMD Technologies CC.
2.
The matter comes before me in terms of the provisions of
section 59(2) of the Trade Marks Act, 194 of 1993, (the Act), the
Registrar
of Trade Marks referring the opposition to the application
for the registration of the trade mark to the High Court for
adjudication.
3.
The opponent to the application for registration of the
aforesaid trade
mark
is Roccat GMBH, a German Corporation situated in Hamburg, Germany.
4.
The
respondent, the applicant for the registration of the trade mark, is
SMD Technologies CC, a South African close corporation.
It conducts
the business relating to the manufacture, import and distribution of
head phones.
5.
I shall refer to the parties as opponent and applicant
respectively.
6.
Generally, oppositions to the registration of a trade mark are
adjudicated upon by the Tribunal of the Registrar of Trade Marks.
However, the Registrar of Trade Marks, in terms of the provisions of
section 59(2) of the Act is empowered to refer opposition
proceedings
to the High Court for adjudication. This is such an instance.
7.
The opposition to the registration of the trade mark is
premised only upon the provisions of section 10(14) of the Act. That
section
provides as follows:
"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)
(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;
(15)
"
8.
The jurisdictional requirements that have to be met for a
successful reliance upon the provisions of section 10(14) of the Act
are:
(a)
a mark which is identical to a registered trade mark belonging to a
different proprietor or so similar thereto;
(b)
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;
(c)
would be likely to deceive or cause confusion,
(d)
unless the proprietor of such trade mark consents to the registration
of such mark
9.
When considering the aforementioned jurisdictional
requirements in an opposition as the present, a comparison is to be
made between
the respective marks on the one hand, and on the other
hand, a comparison between the goods or services in respect of the
two competing
marks.
10.
The
principles applicable in that regard are trite.
[1]
The principles need not be restated. The parties are agreed on the
principles
applicable.
They differ only in respect of the factual issues and how that is to
be interpreted in context of the principles. There
is no dispute that
the marks are to be considered globally, i.e. as a whole.
[2]
The dispute is crisp.
11.
In
respect of the requirement of
"use",
it
was
restated by the Supreme Court
of Appeal
that the
question that falls
to be
decided
is
not how the
parties
use or
intend to
use their
marks,
but
how they
would
be entitled
to use the marks if both were to be registered. What is to
be
considered is notional use as opposed to actual use.
[3]
12..
The
likelihood of confusion or deception must be appreciated globally
with reference to the visual, aural or conceptual similarity
of
the marks,
whilst bearing in mind, in particular, the respective distinctive and
dominant components based upon the overall impression
given by
the
respective marks.
[4]
13.
The trade mark sought to be registered is depicted as follows:
“see pdf”
14.
The registered mark is depicted in the Trade Mark register as
follows:
ROCCAT
15.
It is submitted on behalf of the opponent that the registered
mark is registered without reference to any particular font or font
size.
16.
Considered
globally, the overall visual impression of the two marks differs
significantly. In this regard the following is to be
discerned:
(a)
The competing device mark, i.e. that of the applicant, has the
following features:
(i)
The font is striking. It is special and specific. It is not a font of
general appearance or usage. Furthermore, it is conceded
on behalf of
the opponent that it is not a font that is downloadable from the
internet;
(ii)
The "O" is depicted in the form of a speaker;
(iii)
The mark that is depicted consists of the letters R, 0 (in the form
of a speaker), C, K and A. The letters R, C and K are
in an uncommon
stylised format, whilst the A is in a format that represents an A
without the customary horizontal line of an A
and equally uncommon;
(iv)
The dominant features being the special and specific stylised form of
the letters R, C, K and A and the O in the specific form
of a
speaker, globally seen.
(b)
The registered mark, although not limited to a specific font, is
depicted in commonplace font. The mark is represented by the
word
ROCCAT, i.e. consisting of the letters R, 0, C, C, A and T. No
special features are discernable, nor is there any striking
feature
of the mark.
(c)
Furthermore, the two marks differ in spelling. The competing mark
contains the letter K, whereas the registered mark is spelt
with a
double C. There is a T at the end in the opponent's mark. Visually,
the spelling of the respective marks is a further striking
dissimilarity between them.
17.
Mr Marriot, who appeared on behalf of the opponent submitted
that although the font of the competing mark is not a commonplace
font
and also not downloadable from the internet, available fonts
could be used to resemble it reasonably closely. Available fonts used
to demonstrate the submission, in my view, fell far short. There
remains the significant dissimilarity between the two marks.
18.
When the aural aspect of the two marks is considered, there is
equally a striking dissimilarity:
(a)
The competing device mark does not contain at the end thereof a T
that could be pronounced. It would thus commonly be pronounced
with
an open "a" at the end;
(b)
The registered mark ends with a T and hence would commonly be
pronounced including the T, i.e. with a short "a" sound
before the T.
19.
Mr Marriot submitted that the mark of the opponent is to be
pronounced without the T, and hence the word would be pronounced with
an open "a" sound, similar to the competing device mark. No
evidence in support of that submission is to be found in
the
opponent's papers, other than a suggestion by the deponent to the
founding affidavit, the attorney of record of the opponent.
The
deponent on behalf of the opponent has not qualified himself as an
expert in that regard. The statement by the said deponent
is nothing
more than a suggestion as to the pronunciation of the registered
mark. The opponent does not state it to be a fact.
There is no merit
in that submission.
20.
Ms Joubert, who appeared on behalf of the applicant, submitted that
the pronunciation of the registered mark is to be considered
within
the context of the demography of South Africa. Hence each of the
letters would be pronounced, particularly where the opponent
itself
does not claim the word to be pronounced differently. There is much
merit in Ms Joubert's submission.
21.
The mark reflects the name of the opponent. Mr Marriot
conceded that in Germany, the country in which the opponent is
situated,
it is most likely that each of the letters would be
pronounced. That puts paid to the alleged aural similarity.
22..
It is further submitted on behalf of the opponent that,
conceptually, the registered mark reflects the concept of music and
in particular
that of rock music. Mr Marriot submitted that
conceptually the competing mark similarly reflects the concept or
idea of music and
in particular rock music. Hence, conceptually both
marks are identical, if not strikingly similar.
23.
However, it is apparent that there are important differences
between the two marks considered conceptually. In this regard the
following:
(a)
The registered mark resembles the name of the opponent, the
proprietor of the mark. Phonetically or visually it does not conjure
up any reference to the concept of sound. No reference to music, let
alone any image or reference to rock music, whether obliquely
or
otherwise, can be discerned;
(b)
The competing device mark contains, as referred to above, the
letter O in the form of a speaker. A clear image of sound is created,
whether that of rock music or music generally.
24.
Conceptually the two marks differ significantly and are
dissimilar. There is no merit in Mr Marriot's contention.
25.
It follows that considering the two marks globally visually,
aurally or conceptually, the significant dissimilarities of the two
marks are striking. There is no real likelihood of confusion or
deception if the two marks are registered.
26.
Mr Marriot impressed upon me, with reference to the issue of
the doctrine of imperfect recollection, that there is a real
likelihood
of confusion and deception. In view of the vast change in
marketing and disposing of products in the present day as opposed to
that when the aspect of imperfect recollection was introduced, it may
be appropriate to reconsider that issue. However, for present
purposes it is not necessary to consider that issue.
27.
Ms
Joubert submitted that it is trite that the potential purchaser,
or user, is
the
ordinary person, one who is neither very careful nor very careless
and ignorant. Such person is of average intelligence
and proper
eyesight,
buying
with
ordinary
caution.
[5]
When
this
approach
is followed
the significant dissimilarities, dealt with above, militates against
applying
the said
doctrine in
the present
matter.
28.
The two further jurisdictional requirements remain. It is
common cause that the opponent has not consented. In view of my
findings
on the significant dissimilarities between the two marks,
this requirement has no bearing.
29.
The jurisdictional requirement relating to the similarity of
the goods or services to which the two marks are to be applied, is
clearly overshadowed by the significant dissimilarity of the two
marks, albeit that there is an overlap in that regard.
30.
I have found the two marks to be so dissimilar, that there is
no reasonable likelihood of confusion or deception and hence the
issue
of imperfect recollection has no bearing in the present
instance. Although the period within which the two marks have been on
the
market is short, the opponent has not shown any instance of
confusion or deception, albeit that it is not required that actual
confusion or deception be shown.
31.
It follows that the opposition cannot succeed. The application
for registration of the “see pdf” device is to proceed
to
registration.
I
grant the following order:
(a)
The opposition to the registration of the “see pdf ”
device is dismissed;
(b)
The application for the registration of the, “see pdf ”
device is to proceed to registration;
(c)
The
opponent is to pay the cost of the opposition.
____________________________
C
J VAN DER WESTHUIZEN
ACTING
JUDGE OF THE HIGH COURT
GAUTENG
DIVISION
On
behalf of Opponent:
...........
G Marriot
Instructed
by:
............................
Von
Seidels Intellectual Property Attorneys
On
behalf of Applicant:
.............
Ms I
Joubert
Instructed
by:
............................
Adams &
Adams
[1]
Plascon-Evans Paints Ltd v van Riebeeck Paints (Ply) Ltd 1984(3) SA
623 (A); see also
Yair
Shimansky v Browns the Diamond Store [2014] ZSCA 214 (1 December
2014)
[2]
Century City Apartments Properly Services CC et al v Century City
Property Owners' Association 2010(3) SA 1 (SCA) [13]
[3]
Orange Brand Services Ltd v Account Works Software (Pty) Ltd 2013
BIP 313 at [6]
[4]
Century City Apartments Property Services CC, supra
[5]
Roodezandt Ko-Operatiewe Wynmake,y Ltd v Roberlson Wine,y (Pty) Ltd
et al (503/13)
[2014] ZASCA 173
(19 November 2014)