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[2015] ZAGPPHC 264
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Rothmans of Pall Mall, London, Limited v Malu (48154/13) [2015] ZAGPPHC 264; 2015 BIP 208 (GP) (26 February 2015)
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG DIVISION,
PRETORIA
CASE NO: 48154/13
DATE: 26 FEBRUARY
2015
NOT REPORTABLE
NOT OF INTEREST
TO OTHER JUDGES
In the matter
between:
ROTHMANS
OF PALL MALL, LONDON,
LIMITED
.................................................................
Opponent
and
MUL
CHAND
MALU
.....................................................................................................
Trade
Mark Applicant
JUDGMENT
Tuchten
J
:
1.
The opponent is the proprietor of certain trade marks in relation to
Rothmans cigarettes, which the evidence shows is a very
well known
brand, sold in many countries throughout the world. Two of those
marks, called the
Rothmans
label
and
the
nude label
respectively
in argument, are relevant for present purposes
2.
The trade mark applicant has applied for the registration of the mark
Sir label
under
trade mark application no. 2006/04784 in Class 34.
The
opponent opposes the registration of this mark on the basis that it
is confusingly similar to its two marks. The opposition
was brought
under ss 10(12) and (14) of the Trade Marks Act, 193 of 194 (The
Act)
1
,
before the Registrar of Trade Marks. This functionary, exercising her
discretion under s 59(2), has referred the dispute to this
court for
adjudication.
3. A number of
reproductions of the marks appear in the papers but a difficulty I
face is that none of these reproductions adequately
depicts the mark.
I was asked by counsel to compare for the enquiry that follows the
reproductions of the opponent’s marks
at pp357 and 358 of the
papers and those of the trademark applicant at pp 20 and 165.
I shall confine
myself to these reproductions.
4.
The opponent’s mark registered under no. 1967/05284, the
Rothmans label, has as its dominant features a coat of arms or
crest
device above a rectangular central feature or background, upon which
is superimposed an oval shaped central feature, which
is surrounded
by a border. Within the mark itself are descriptive words, the most
striking of which is the name
Rothmans.
The
mark is endorsed as being limited to the colours white, gold, red and
blue.
5. The opponent’s
mark registered under no. 2001/04548, the nude label, has as its
dominant feature a device which would be
oval but for the fact that
its two sides are cut away to create a four sided figure with the top
and bottom lines curving up and
down respectively. The registration
of the nude label is subject to endorsements: firstly, to the effect
that the colour blue is
an essential and distinctive feature of the
mark and, secondly, that the blank spaced within the mark may be
occupied by other
matter which must be of a descriptive or
non-distinctive nature ora trade mark of which the opponent is a
permitted user. Superimposed
on the blue device is a coat of arms or
crest. The whole device is enclosed by a narrow gold coloured border.
A small read oval
appears below blue device.
6.
The mark for the registration of which the trademark applicant has
applied, the Sir label, is similarly in Class 34 and consists
of a
roughly oval shaped device, also with its sides cut off and with the
top line of the device showing two relatively shallow
curved cut outs
on its sides and a deeper cut out in its centre. In the centre cut
out appear the words
sir
KING SIZE.
This
main device is superimposed on a rectangle which protrudes from the
sides of the main device. The Sir label contains no restrictions
as
to colour.
7. This means that
if the Sir label proceeds to registration, the trade mark applicant
will be allowed to present its mark in the
market place with the
central device coloured exactly the same as the opponent’s nude
label and with the small red oval below
it.
8. This case
concerns the marks under which cigarettes may be marketed. Cigarettes
are tobacco products, as defined in the Tobacco
Products Control Act,
83 of 1993 (the TBCA). Under s 3(9)(b) of the TBCA, a retailer may
display a tobacco product at his place
of business only in such a way
that no person will be able to handle the product before paying for
it. This means for present purposes
that the purchaser of cigarettes
may only buy cigarettes through the intermediation of a
representative of the retailer; in simple
terms by handing the
purchase price to the retailer or his assistant, after which the
latter hands the pack or carton of cigarettes
to the purchaser.
9. Many brands of
cigarettes are sold in packs of 20 or cartons of such packs.
Cigarettes are today almost all of a length described
in the industry
as king size. Cigarettes of different brands are not readily
distinguishable. The purchaser will distinguish his
preferred brand
from others by the get up of the packaging in which the cigarettes
are presented. The packaging of the different
brands will be largely
of the same or similar size. The purchaser with whom I am concerned
will generally know the name of the
brand he wants to buy and will
ask for it by name. The notional purchaser within South Africa will
be literate in a language which
uses the Latin script and many
purchasers will realise on examining the pack which is handed to him
whether his requested brand
has been handed to him or not. But not
every such purchaser will examine the cigarette pack he has been
handed. In my view, a not
negligible number of purchasers,
particularly those who buy their cigarettes in a busy supermarket,
will glance at the get up of
the pack handed to him and then put it
in his bag or pocket.
10. I need not
analyse the opponent’s separate grounds of objection. They have
a common feature which is decisive for present
purposes. Upon
objection, the Sirs label is only registrable if the trade mark
applicant can show on a preponderance of probabilities
that the Sirs
label is not substantially and confusingly similar to the opponent’s
marks.
11.
As there is no difference discernable on a comparison of the actual
cigarettes within the notional packs bearing the marks in
issue, I
need only compare the marks to resolve this question. In doing so, I
should not have regard to extraneous matter such
as the manner in
which the competing marks have actually been used or, indeed, whether
the marks have been used at all. What I
must consider is how the
marks
could
be
used, having regard to the terms upon which the registered marks have
been registered and the terms upon which the proposed Sirs
label
would be registered if registration were ordered. As
Webster
and Page,
South
African Law of Trade Marks say at para 6.6, with reference to what
the authors describe as an
obiter
dictum
in
Danco Clothing
(Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd
[1991] ZASCA 121
;
1991
4 SA 850
A 860C, duly adapted in the light of subsequent
jurisprudence, the question is whether it is more likely than not
that a not negligible
number of ordinary members of the buying public
would be deceived or confused, as a result of the use of the mark in
question,
as to the origin of the goods.
Webster
and Page
make
the point that deception would occur of the similarity between the
marks would cause members of the purchasing public to assume
that
goods bearing the marks came from the same source while confusion
would occur if they were merely caused to wonder if the
goods had a
common origin.
12.
The determination of these questions involves essentially a
comparison between the marks in issue 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
having average intelligence, 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. Marks
are remembered
rather by general impressions or by some significant
or striking feature than by a photographic recollection of the whole.
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.
2
13.
The question, as I have said, is not what the trademark applicant
says it intends doing, but what it will be permitted to do
if its
mark is allowed to proceed to registration.
3
Confusion need not be lasting for it to disqualify a mark from
registration. It is sufficient if it is confusing only for a short
time, sufficient to attract initial interest, albeit that the
confusion might later be cleared up.
4
14. I have come to
the conclusion that the trade mark applicant has failed to show that
the competing marks will not cause confusion
for a short time. This
is because the general conformation of the marks are similar; the
goods comprising and the conformation
of the packaging of the two
competing products are well nigh identical; a not negligible number
of purchasers will be buying the
products in crowded shops and will
not subject the product they are handed with any great scrutiny; the
purchases themselves do
not require a great outlay of money (by
today’s standards); and, decisively, because the mark as
presently submitted for
registration by the trademark applicant might
have as its dominant colour in its central device the shade of blue
of the opponent’s
nude label with a red oval below it. Had the
trade mark applicant’s proposed mark excluded the possibility
that the colours
blue and red might be used in this context, I might
well have come to a different conclusion.
15.
Counsel were agreed that the court has a discretion in a case such as
this to remove the likelihood of confusion by limiting
the proposed
mark by endorsement.
5
1
considered whether I should exercise such a discretion in this case.
I decided that I should not. This is because there was no
request for
the exercise of the discretion and I do not think that it would be
appropriate for the court, as opposed to the parties,
to develop a
suitable endorsement.
16. The opposition
must accordingly succeed. I make the following order:
1. The opposition is
upheld;
2. Trade mark
application no. 2006/04784 SIR label in Class 34 is refused;
3. The trade mark
applicant must pay the costs of the opposition.
NB Tuchten
Judge of the High
Court
25 February 2015
RothmansSir48154.13
1
References
to statutory material in this judgment will be to the Trademarks Act,
unless otherwise stated.
2
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984
3 SA 623
A 640-641
3
Adcock
Ingram Intellectual Property (Pty) Ltd v Cipla Medpro (Pty) Ltd
2012
4 SA 238
SCA paras 14-15
4
Orange
Brand Services Ltd v Account Works Software (Pty) Ltd
(970/12)
[2013] ZASCA 158
(22 November 2013)
5
Adcock
Ingram Intellectual Property (Pty) Ltd v Cipla Medpro (Pty), supra
,
para 17.