About SAFLII
Databases
Search
Terms of Use
RSS Feeds
South Africa: North Gauteng High Court, Pretoria
SAFLII
>>
Databases
>>
South Africa: North Gauteng High Court, Pretoria
>>
2016
>>
[2016] ZAGPPHC 1039
|
|
Dinnermates (Tvl) CC v Piquante Brands International (Pty) Ltd and Another (A227/2015) [2016] ZAGPPHC 1039; 2016 BIP 294 (GP) (15 December 2016)
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
CASE
NO: A227/2015
15/12/2016
Reportable:
No
Of
interest to other judges: No
Revised.
In
the matter between:
DINNERMATES
(TVL)
CC
Appellant
And
PIQUANTE
BRANDS
INTERNATIONAL
(PTY)
LTD
First
Respondent
PEPPADEW
INTERNATIONAL (PTY)
LTD
Second
Respondent
QUORUM:
MOLOPA-SETHOSA J; MOTHLE AND HUGHES JJ.
DATE
OF HEARING: 31 AUGUST 2016
DATE
OF JUDGMENT: 15/12/16
JUDGMENT
MOTHLE
J
Introduction
1.
On 13 October 2014 Madam Justice Tlhapi
("Tlhapi
J')
sitting in the High Court Gauteng Division, Pretoria, delivered a
judgment in which she upheld the Respondents' opposition to
the
Appellant's trademark applications number 2010/09721-3 PEPPAMATE and
device in classes 29, 30, and 31 ("the trademark
applications").
2.
The Appellant now appeals to the Full Court of the Gauteng Division,
Pretoria against the judgment and orders of Tlhapi J.
Background
3.
The following is a summary background to the issues leading to this
appeal, namely that:
3.1. The Appellant
applied for registration of a trade mark, known as PEPPAMATE and a
device, in a form of a side view picture or
drawing depicting a
single rounded pepper with a stalk, for goods in classes 29, 30 and
31, which application was lodged with the
Registrar of Trade Marks.
The Respondents, who have registered the mark PEPPADEW also with a
device in a form of a side view picture
or drawing depicting a single
rounded pepper with a stalk, filed a notice of opposition to the
application for registration, based
on the provisions of
Section
10 (13), 10 (14) and 10(17) of the Trade Marks Act, 194 of
1993 ("the Act").
3.2. The Registrar
transferred the matter to the High Court, Gauteng Division, Pretoria
("the Court
a
quo'),
which came before Tlhapi J.
3.3. The Respondents in
their affidavit abandoned reliance on Section 10(13). Further, Tlhapi
J rejected Respondent's opposition
to the registration based on
Section 10 (17), on the ground that the Respondent failed to make out
a case in the founding papers
for supporting the objection in terms
of that subsection.
3.4. The Appellant had
informed the Court a quo as to how it intended to use the trademark
once it is registered. In this regard,
the Court a quo in paragraph 5
of the Judgment, records the Appellant's intended use as expressed by
its sole Member, Mr R V Rauch,
thus:
"[5] His interest
in the small sweet peppers commenced when he realised that there was
a
"considerable market and demand" for the product,
"such
as
those made and sold by Opponents" in the
manufacturing and wholesale food trade."
3.5. Tlhapi J, upheld the
opposition to the registration of the Appellant's trademark, based on
Section 10 (14) of the Act. In that
regard, the
court
a
quo
found in paragraph 17 of the judgment as follows:
"In this matter
there are three aspects to look at, being the word PEPPA, the
adoption of the single rounded pepper and stalk
device and the goods
and services for which the trademarks are registered against the
goods and services applied for.
The difference in the
words
PEPPADEW and PEPPAMATE
were in the -DEW and MATE. After
removal of the DEW and MATE one is still left with the device in
a
comparison of the goods and services under registered trade mark
in classes 29 and 30 and
those in the application in classes
29, 30 and 31. In
determining the opposition in terms of
section 10 (14) of the Act, I
am
of the view that the
similarities do exist to such
a
degree that there
was
probability of confusion and deception arising in that the
Opponent has made out
a
proper
case."
The
law
4.
Section 10 (14) of the Trade Mark Act provides:
"10.
Unregisterable trade marks.
-
the following
marks shafl 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:
.. .
(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 trade
mark;"
5.
Section 14 permits the Registrar, on appl 1cation by a proprietor, to
register a trade mark subject to such conditions and limitations,
if
any, as he may think fit to impose, a trade mark registration of
which would otherwise offend the provisions of subsections
(6), (14),
(15) .or (17) of Section 10. It is common cause that the Registrar
did not apply the provisions of Section 14 of the
Act.
The
parties' trademarks
6.
In this case, there are three distinctive features of similarity
between the Appellant's trademark and the Respondents' registered
trademark. These are:
6.1. The use of the word
"PEPPA"
as part of the mark;
6.2. The presence of a
device, in a form of a side view picture or drawing depicting a
single rounded pepper with a stalk; and
6.3. The goods to which
the parties respective trademarks relate, which include trading in
the various products of pepper.
7.
There
appears to be no dispute between the parties that the word
"PEPPA",
used in
the context of both trademarks, denotes "pepper", which is
described by the English dictionary
[1]
as
"A
pungent
condiment prepared from the whole or ground dried berries
(peppercorn) of the plant "nigrum".
The
parties' contentions
8.
The Appellant contends the following:
8.1. That the onus is on
it to show that there is no reasonable probability of confusion or
deception resulting from its use of
the subject mark in respect of
those goods for which registration is sought;
8.2. That an opposition
to the registration of a trade mark based on Section 10(14) requires
a clinical comparison on two legs,
namely:
8.2.1. A comparison of
the marks; and
8.2.2. A comparison of
the goods to which the respective marks relate as they appear on the
register.
9.
The Appellant further concedes that in the present case, the goods to
which the parties' respective marks relate are identical
and this
comparison need not detain the Court any further. Consequently,
Appellant submits, the issue before this Court becomes
a narrow one
focussing only on a comparison of the marks in the context of
trademark infringement in terms of section 34 (1) (a)
of the Act.
Comparison
of the trademarks
10.
The legal
principles and guidelines applied by the Courts
[2]
in conducting the comparison between trademarks find expression in
this case. These include:
10.1. The probability of
confusion or deception amongst purchasers or potential purchasers of
the relevant goods, or users of the
relevant services;
10.2. The likelihood of
confusion must be appreciated globally or holistically. The average
consumer perceives a mark as a whole
and does not analyse its various
details;
10.3. The Court should
transport itself, notionally, in the Court room to the market place
and consider the marks, as they will
be seen, if they are both in
fair and commercial use as a hypothetical consumers of the goods
concerned;
10.4. The comparison
between the competing marks should factor in the similarities and the
differences in an assessment of the impact
it would have on the
average type of consumer;
10.5. Consideration of
the main or dominant features of the marks in question as well as the
general impression and the striking
features, as they would likely
impact on the mind of the consumer;
10.6. The possibility
that the consumer may encounter goods therein one mark with an
imperfect recollection of the other;
10.7. The consideration
of the marks as a whole and the overall impression created by the
marks.
11.
In the
recent appeal case of
Yuppiechef
Holdings (Pty) Ltd v Yuppie Gacfgets Holdings (Pty) Ltd (108812015)
2016 ZASCA
118
(15 September 2016),
("the
Yuppiechef case''),
[3]
the
Supreme Court of Appeal conducted a comparison of trademarks, similar
to this case. In the Yuppiechef case the dispute is between
two
retail companies trading online. In April 2011, the company known and
trading as Urban Gadgets decided to change its name to
"Yuppie
Gadgets", selling a variety of decorative gadgets of novelty
items. This change of name caused "Yuppiechef',
a registered
trademark, to object to the registration of Yuppie Gadget as a mark
on the grounds that it will confuse and likely
deceive online
customers.
12.
The SCA, after considering the meaning of the word "Yuppie"
as commonly used, conducted a comparison between the two
trademarks
with reference to other features. The appeal court held that there is
no likelihood of confusion or deceit in the use
of the trademarks.
The Court then concluded that the marks are not similar within the
meaning of s 34(1) (c), and thus dismissed
the appeal.
13.
In the supplementary heads of argument, the Appellant on the one hand
contends in essence that the Respondent cannot claim that
the mark
"peppa" is an invented mark to which it can claim a
monopoly. The Respondent on the other hand denies that it
claimed
invention or monopoly of the word "peppa". It is further
contended that unlike in the Yuppiechef case, the dispute
in this
case does not only concern the word "peppa", but also the
presence of a logo mark in both instances, a device,
bearing no less
than 3 common elements.
14.
In
paragraph [26] of that judgment, the SCA, in dealing with the trite
approach in determining the likelihood of deception or confusion
[4]
,
stated as follows:
"What
is required is
a
value judgment on the question of the
likelihood of deception or confusion based on
a
global
appreciation of the two marks and the overall impression that they
leave in the context of the underlying purpose of
a
trademark,
which is that it is
a
badge of origin. The value
judgment
is largely
a
matter of first impression and there should not
be undue peering at the two marks to find similarities and
differences".
15.
In the
judgment of the Court a quo, the learned Judge, with reference to the
seminal judgment in
Plascon-Evans
Paints LTD v Van Riebeeck Paints (Pty) Ltd 1984
(3)
SA
623
(A)
[5]
,
dealt
with the approach adopted by the courts in determining whether there
would be a probability of confusion and deception in
the disputed
trademarks. Guided by this approach, which was also followed and
applied in the Yuppiechef case, the Court a quo
[6]
conducted a comparison of the trademarks and concluded that there are
sufficient similarities with the likelihood to deceive or
confuse the
consumer.
16.
In
analysing the comparison between "Yuppiechef" and "Yuppie
Gadgets"
[7]
, the SCA
opines that:
"While
"yuppie" is common to both, "chef' and "gadgets"
are incapable of being confused, either when
seen or when spoken. The
one consists of
a
single
syllable, the other two. In addition the concepts conjured up by the
words "chef' and "gadgets" are worlds
apart."
The
Court concluded that the trademarks are incapable of being confused
as visually and aurally the two marks are different.
17.
In comparing the disputed trademarks
in casu,
the difference
arise in that the one mark has the word
"dew"
attached
to
"Peppa"
and the other has the word
"mates"
also attached to the word
"Peppa'',
each combined to
produce
"Peppadew"
and
"Peppamates"
respectively. There is a further difference in the writing font
in the marks with the word "peppa" appearing in cursive
writing and below it "mates" appearing in print, while the
word "peppadew" is in print, reading vertically
from bottom
to top.
18.
However, both trademarks exhibit the following similarities:
(1) the two
trademarks in this case commence with the word
"Peppa".
In that respect they are the same.
(2) Aurally, the
two trademarks are similar as both have a two syllable compound
name,"
peppadew"
and
"peppamate";
(3) With each of
the marks
"Peppadew"
and
"Peppamates",
is the presence of a device, in the form of a logo or drawing of
a side view of a pepper with a stalk as part of each of the
trademarks;
(4) Visually at
least, the two marks thus display the same device depicting the same
product of a specific kind of peppers
which feature s in the classes
of goods for both parties.
19.
The inclusion of the device, in the form of a side view of a round
pepper with a stalk as part of both trademarks, is the most
visible
feature common to both marks. It stands out strikingly as the main or
dominant feature of the marks and is consistent with
the condiment of
pepper traded by both parties. It is, in my view, likely to impact on
the mind of the consumer. Therefore the
consumer's impression, struck
by the common word "peppa" and the presence of the device,
looking at them as a whole in
the market place is, in my view, likely
to be deceived and confused.
20.
Apart from other similarities and differences, the presence of the
identical device in the marks distinguishes this case from
the
Yuppiechef case
referred to above. Unlike in this case, in the
Yuppiechef case there is no presence of a device with numerous common
features to
both trademarks.
21.
I am thus of the view that in considering each of the marks as a
whole, an overall impression will be created, which will result
in a
likelihood of confusion and deception within the meaning of section
10(14) read with section 34(1)(a) of the Act.
22.
The Appellant has thus not made out a case that would justify this
Court to interfere with the decision by the Court a
quo.
Under
the circumstances, the appeal cannot succeed.
23.
In the premises, I make the following order:
1. The appeal is
dismissed;
2. The Appellant is
ordered to pay the costs of the appeal.
_________________
S
P MOTHLE
Judge
of the High
Court
Gauteng Division
PRETORIA
I
agree;
_________________
L
M MOLOPA-SETHOSA
Judge
of the High Court
Gauteng
Division
PRETORIA
I
agree;
__________________
W
HUGHES
Judge
the High Court
Gauteng
Division
PRETORIA
For
the Appellant:
Adv.
I Joubert
Instructed
by:
Attorneys
D M Kirscht Incorporated
Menlyn
Corner
Menlyn,
Pretoria
For
the Respondent:
Adv.
L G Kilmartin
Instructed
by:
Berdeau
Attorneys
Clo
Friedland, Hart, Solomon and Nicholson
Monument
Park
PRETORIA
[1]
Shorter Oxford English Dictionary on historical principles, fifth
edition, Volume 2, Oxford Press 2002.
[2]
Roodezandt Ko-operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd
and Another
[2014] ZASCA 173
(19 November 2014); Distel! Ltd v KZN
Wines and Spirits CC
[2016] ZASCA 18
(15 March 2016); Cowbell AG v
ICS Holdings Limited
2001 (3) SA 941
(SCA) and Century City
Apartments Property Services CVC and another v Century City Property
Owners' Association 2010 (3) SA 1
(SCA).
[3]
This judgment was delivered on 15 September 2016, after this Full
Court had heard argument on 31 August 2016 in this matter.
The Full
Court was already aware of the judgment when Appellant filed a
notice to draw the Full Court's attention thereto. Both
parties have
been invited to file supplementary heads, which they did.
[4]
See Plascon-Evans Paints v Van Riebeeck Paints infra.
[5]
This judgment was confirmed also in relation to trademarks, and
applied over the years, including recently in Orange Brand Services
Ltd V Account Works Software (Pty) Ltd (970/12)
[2013] ZASCA 158
(22
November 2013
[6]
See paragraph 17 of the judgment of the High Court.
[7]
Paragraph [27] of the judgment.