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[2015] ZAGPPHC 44
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Kansai Plascon (Pty) Ltd v Duram (Pty) Ltd (38106/14) [2015] ZAGPPHC 44; 2015 BIP 202 (GP) (29 January 2015)
IN
THE HIGH COURT OF SOUTH AFRICA
(GAUTENG
DIVISION, PRETORIA)
CASE NO: 38106/ 14
DATE: 29 JANUARY
2015
NOT REPORTABLE
In the matter
between:
KANSAI PLASCON
(PTY)
LTD
...............................................................................................
OPPONENT
(APPLICANT)
and
DURAM (PTY)
LTD
......................................................................................
TRADE
MARK APPLICANT
(RESPONDENT)
JUDGMENT
LEBALA AJ:
1.
The Applicant in this application is Kansai Plascon (Pty) Ltd
hereinafter referred to as applicant
"Kansai”.
The
applicant is a South African company trading in paints, lacquers,
paint brushes, preservatives against rust and similar products.
2. The respondent is
Duram (Pty) Ltd hereinafter referred to as the respondent. The
respondent is also a South African company that
produces and supplies
specialist paints including “direct to metal” “DTM”
coatings, ie, the subject of
contention before court. The
respondent’s DTM product is an all in one metal paint which
acts as a primer undercoat, anti-rust
coating and top coat. The
respondent has applied for the registration for the subject mark
“DTM” under trade mark application
in class 2. This class
2 is in respect of:
“
paints,
varnishes, lacquers; preservatives against rust and against
deterioration of wood; colourants; mordants; raw natural resins;
metal in foil and powder form for painters, decorators, printers and
artists'.
3.
The application before court has been referred from the Tribunal of
the Registrar of trade marks, under the direction of the
Registrar of
trade marks in terms of
section 59
(2) of the
Trade Marks Act 194 of
1993
"Act'.
4. The respondent
intends to make use of the abbreviation “DTM” in relation
to all in one metal paint which acts as
primer, undercoat, anti-dust,
coating and top coat falling within the metal coating category.
5. From the
aforegoing, it is manifest that the respondent “Duram” is
the applicant for registration of the trade mark.
The applicant
“Kansai” is the applicant in this application opposing
the respondent’s trade mark registration.
6. It is trite that
for a trade mark to qualify for registration, it must comply with the
provisions of
section 9
of the Act. The provisions of
section 9
state:
9(1) in order to be
registrable, a trade mark shall be capable of distinguishing goods or
services of a person in respect of which
it is registered or proposed
to be registered from goods or services of another person either
generally or, where the trade mark
is registered or proposed to be
registered subject to limitations, in relation to use within those
limitations.
9(2) a mark shall be
considered to be capable of distinguishing within the meaning of
subsection (1) if, at the date of application
for registration, it is
inherently capable of so distinguishing or it is capable of
distinguishing by reason of prior use thereof.
7. The issue of onus
became contentious before court. I have decided to deal with it at
the outset. The applicant “Kansai”
bears the onus inasfar
as this application is concerned. The respondent “Duram”
has a duty to produce evidence to rebut
the applicant’s
application. On this basis, the applicant has got an onus. The
respondent “Duram” has the overall
onus to demonstrate
that the mark qualifies for registration. Both parties have an onus
in the matter before court. The question
of who had a duty to begin
was not contentious before court. On this basis, the applicant
“Kansai” began with its submissions.
CONTENTIONS
APPLICANT’S
8. It has been
contended on behalf of the applicant “Kansai” that the
use of the mark “DTM” is not intended
to be used as a
trade mark but rather as a description of the type of paint sold by
the respondent, being direct to metal. The
applicant “Kansai”
further contends that the term DTM is used in a generic manner to
refer to a broader range of products
that can be directly applied to
metal. On this basis, the applicant contends that the term “DTM”
cannot be monopolised
by any trader. The respondent should not be
allowed the monopoly of the term.
9. The applicant
“Kansai” demonstrated in evidence on how the respondent
has made use of the term “DTM”.
Reference has been made
to various annexures including annexure P13, page 39 (F/A) of the
papers. I deal with the evidence of use
in the subsequent paragraphs
hereinbelow.
10. The applicant
contends that the term “DTM” is used to describe the type
of paint. It does not distinguish respondent’s
goods from
others as envisaged by
section 9
of the Act. I have been urged to
apply my discretion to allow the descriptive term “DTM”
for others to use it.
USAGE OF “DTM"
BY APPLICANT
(i) Reference has
been made to annexure P2, page 13 (F/A) demonstrating that the term
“DTM” is an abbreviation for direct
to metal. The
applicant contended that “DTM” is a type of paint but is
also inclusive of other products. For instance,
reference is made to
“DTM” being used as a decorative and protective finish on
interior mild steel, galvanised steel,
timber and masonry. (See: para
2 headed: General Purpose Enamel DTM). (Annexure P2, page 13-14(F/A).
(ii) Reference has
also been made to paragraph 3 headed: Plascosafe 500DTM to
demonstrate usage by applicant.
(iii) Reference has
also been made to annexure P3, page 15 (F/A) which is a search engine
dated 9 October 2012 demonstrating that
the term “DTM” is
used in foreign markets including South Africa.
(iv) Reference has
also been made to annexure P20, page 128 demonstrating that although
Halox Distributors are based in the United
States, there is a South
African company, ie, IMCD Pty Ltd recorded as the local distributor
for Halox in South Africa of its direct
to metal range. (See also:
Annexure P3, page 15-16(F/A).
(v) The applicant
has demonstrated instances of the use of the term “DTM”
including use by the respondent. On this basis,
the applicant
contends that the public perceives the term “DTM” as a
type of paint or furnish and therefore the respondent
can’t say
it’s a mark capable of distinguishing. The applicant contends
that the abbreviation “DTM” is
interchangeable and if
respondent is granted monopoly this will affect business at large .
(vi) The respondent
itself uses “DTM” as adumbrated by annexure P13, page
39(F/A) paragraph, 4.11, page 51 (A/A), paragraph
4.16, page 52
(A/A). On this basis, the applicant contends the generic and
descriptive use of the mark. Therefore the respondent
uses this as a
descriptive term.
11. The applicant
further contends that the registration of “DTM” should be
prohibited in terms of the provision of
section 10(1)
, (2), (3), (4)
and (5) of the Act. Of significance the applicant contends that the
term “DTM” does not constitute a
mark as it is not
capable of distinguishing within the meaning of
section 9
of the Act.
The applicant further contends that the term “DTM” not
only covers paints as contended by the respondent.
This is so as if
it is generic, accordingly it is so for all types of goods. It is not
distinguishing any goods but it is descriptive
of paint and the rest
of the goods that it is applied for. On this basis, the applicant
contends that the term includes the greater
specification.
12. In dealing with
the respondent’s attack that when the latter applied for
registration of the trade mark during 6 September
2011, it was not
generic, I summarise the applicant’s contentions briefly herein
below.
CONTENTIONS
RESPONDENT’S
13.
The respondent
contends that when it applied for the registration of the trade mark
on the 6 September 2011, it was not generic.
This is so as the
Registrar accepted it as being capable of distinguishing or capable
of distinguishing by reason of prior use
thereof.
14. According to the
respondent the Court has to decide this matter on statutory grounds
only. Whether the term “DTM”
is generic is irrelevant.
The date of application of the trade mark, ie, 6 September 2011 is
very critical to decide this matter.
This is so, as the provisions of
section 9(2)
of the Act couched in peremptory terms, demonstrate the
importance of the date of registration. Accordingly, the issue before
court
is: whether on the 6 September 2011, ie, the date of
application for registration, the mark is inherently capable of so
distinguishing
or it is capable of distinguishing by reason of prior
use thereof? The respondent further contends that the provisions of
section 9(2)
of the Act are applicable.
15. It is contended
by the respondent that the test to be applied is the date of
application for registration as adumbrated by
section 9(2)
of the
Act. There is no need to consider and look at what happened after the
6 September 2011.
16. According to the
respondent, the applicant is not without a remedy. This is so as
accordingly, the provisions of
section 24
of the Act gives parties
including the applicant the right to expunge the mark thereby
demonstrating it wrongly remains on the
register. Accordingly, when
the mark was registered on the 6 September 2011, it was not generic
but it was distinguishable hence
it was registered.
17. The respondent
further contends that a person’s rights to the mark should be
determined at the date of application for
registration as such rights
arise on the date the trade mark is registered. Accordingly the
respondent who is in the position similar
to that of a trademark
proprietor has rights that should not be undermined.
18. On this basis,
the respondent contends that the court should deal with this issue as
matter of law and not interpretation. This
is so as
section 9
of the
Act is capable of so distinguishing at the date of application.
See:
On-line Services (Pty) v National Lotteries Board and Another
1
19. The respondent
further contends that any evidence of use put up by the applicant
referred to in the preceding paragraphs hereinabove,
makes no
difference. To be specific, reference to annexures P2(page 13) (F/A),
P3(page 15-16)(F/A), P4 (page 17)(F/A), P5-13(pages
19-39) (F/A)
deserve no merit, moreso, as some of the entities referred in these
annexures relate to trade marks of entities outside
South Africa.
20. I find the
debate dealing with evidence or assertions made about trade marks
outside of South Africa being neither here nor
there. It doesn’t
take issues beyond dispute. This is so as trade marks deal with both
ownership and use of the marks. To
say a trade mark is a purely
territorial concept, albeit true does not take issues beyond dispute
in this application.
ANALYSIS
21. Having listened
to the submissions before court, I am persuaded that the respondent
only became aware of the knowledge advertising
the status of the
applicant’s application for registration only after 6 September
2011. From the records as adumbrated by
annexure P1 (page 12) (F/A)
it is manifest that the details of advertising the respondent’s
application for registration
became available around August 2012.
From around August 2012, ie, the date of publication of the
advertisement, the period to oppose
the application for registration
started. The applicant diligently started the process of dealing with
this challenge from that
moment.
22. Equally
important is the fact that from the 9
th
October 2012, the
applicant engaged in a phase of program to address its challenge to
the application for the respondent’s
registration. Annexure
P2(page 13)(F/A), annexure P3(page 15-16) (F/A) and annexure P4(Page
17-18) (F/A) are all dated the 9
th
October 2012 and
positively address this issue. This amply demonstrates that within
two months after the applicant became aware
of the publication of the
respondent’s application for registration adumbrated by
annexure P1(page 12) (F/A), the respondent
acted diligently in
starting the process of challenging the respondent’s
registration. On this basis, the respondent’s
reliance on the
statutory argument to the effect that as at 6 September 2011 the mark
was not generic but it was distinguishable
hence it was registered
falls by the wayside.
23. I also note the
affidavits of Brian Raymond Bailey, pages 135-138(R/A) and Godfrey
Pangeti (pages 142-144) (R/A) which deal
with the fact that other
entities than the applicant regard high build direct to metal finish
as further evidence that the term
“DTM” is a generic term
used as an abbreviation for direct to metal.
(See also: Paras
4- 5, page 136 (Bailey’s affidavit);
Para 5-6, page
143 (Pangeti’s affidavit).
24. The abovesaid
piece of evidence has been brought to the fore by the respondent’s
allegations in paragraph 4.9.3 (page
49) (A/A). In this paragraph,
the respondent asked for an indication that the products of
Sharpshell Industrial Solutions to which
Mr. Pangeti is a Managing
Director are available in South Africa including the extent of the
use and availability in South Africa
which is also dealt with by
Bailey’s affidavit. In my considered view, these affidavits are
not out of place. They amply
demonstrate use and availability in
South Africa.
25.
The term “DTM” is an all in one metal paint which acts as
a primer, undercoat, anti-rust coating and top coat. This
is a mark
applied directly to metal. It makes no difference how one calls it.
Its example of use is not confined to paint. Even
by the respondent’s
own admission, the “DTM” term is an all in one metal
paint which acts in different instances.
Of significance is that it
gets to be applied to metal. Annexure P3 (pages 15 - 16)(F/A) amply
demonstrates that the term “DTM”
is not exclusively
confined to use the word paint but it is applied direct to metal
applicable to any type of goods applied to
the specification. (See
also: annexure P6 (page 23-24)
(This refers not
to paint but to DTM primer which is a 100% acrylic. This is inclusive
of mark coatings DTM primer demonstrating
outstanding adhesion and
corrosion resistance on metaiic surfaces).
Clearly
this is not confined to paint.
FINDINGS
26. I am persuaded
that the respondent’s own use of the mark “DTM” is
not intended to be used as a trade mark
but rather as a description
of the type of paint sold by it, being direct to metal.
27. The respondent
as a trade mark applicant has not been able to tip the scales of
probabilities in its favour inasfar as its overall
onus is concerned.
On this basis, I cannot find that the trade mark should proceed to
registration.
28. I am persuaded
that the term “DTM" is used in a generic manner to refer
to a broader range of products that can be
directly applied to metal.
It is a generic mark that cannot be monopolised by any trader
including the respondent. The respondent
should not be allowed the
monopoly of the term “DTM”.
29. The following
order is made:
28.1 The applicant
“Kansai” opposition succeeds;
28.2 The respondent
"Duram" registration of trade mark application no:
2011/21989 DTM in class 2 is declined;
28.3
The respondent "Duram” to pay the costs.
LEBALA, AJ
JUDGE OF THE HIGH COURT
1
2010(5)
SA 349 (SCA) at [13]