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[2015] ZAGPPHC 190
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TPN Group (Pty) Limited v Ebay Inc (37922/13) [2015] ZAGPPHC 190; 2017 BIP 57 (GP); 2015 BIP 213 (GP) (16 March 2015)
REPUBLIC OF SOUTH
AFRICA
IN THE GAUTENG
DIVISION OF THE HIGH COURT, PRETORIA
CASE NO: 37922/13
DATES HEARD: 24
-25/02/2014
DATE: 16 March 2015
NOT REPORTABLE
NOT OF INTEREST TO
OTHER JUDGES
In
the matter between:
TPN
GROUP
(PTY)
LTIMITED
.
.....................................................................
Applicant
and
EBAY
INC
.......................................................................................................
Opponent
JUDGMENT
J
W LOUW, J
[1]
The applicant, to whom Ishall refer as TPN, filed two applications
with the Registrar of Trade Marks on 14 October 2010 for
the
registration of the trademark RENTBAY, one in class 35 and one in 36.
The opponent, to whom Ishall refer as eBay, opposed the
granting of
the applications. On 5 June 2013, the registrar referred the
proceedings to the court in terms of the provisions of
s 59(2) of the
Trade Marks Act, 194 of 1993 (the Act).
[2]
The services in respect of which TPN applied for registration of the
mark RENTBAY in class 35 are the following:
'advertising;
business
appraisal;
business
management
assistance;
business
information,
inquiries,
investigations,
management
and
organising
consultancy;
business
research;
commercial
or
industrial
management
assistance;
compilation
and
systemization
of
information
into
computer
databases;
data
search
in
computer
files
(for
others);
marketing
research
and
studies;
on-line
advertising
on
a
computer
network;
procurement
services
for
others;
statistical
information.'
[3]
The services for which TPN applied for registration of the mark in
class 36 are the following:
'Financial
information;
financial
evaluation;
financial
and credit
analysis;
financial
blacklisting
services;
real
estate
affairs
of all
kinds
and
descriptions;
services
pertaining
to
the
provision
of
information
relating
to
the
leasing
of
real
estate, real estate
agencies,
real
estate
brokers
and
real
estate
management.'
[4]
eBay is, and was at the date of filing of TPN's applications on 14
October 2010, the proprietor of the following registered
trade marks
in class 35:
EBAY
(filing date 6 May 1999); EBAY (special form) (filing date 6 May
1999); EBAY (special form in colour) (filing date 3 December
2007).
The appearance of the special form is as follows:
[SEE PDF FOR
IMAGES]
The
colours of the letters of the special form in colour are, from left
to right, red, blue, yellow and green. It is stated in the
registration certificate that the combination of these colours is an
essential and distinctive feature of the mark and that the
combination of the colours created by the overlapping letters, i.e
dark green, purple and orange is also a distinctive feature
of the
mark.
[5]
The services in respect of which the EBAY and EBAY (special form)
marks were registered, were
'On-line
trading
services'.
The services in respect of which the EBAY (special form in colour)
mark was registered, were the following:
'The bringing
together for the benefit of others a variety of goods including
providing online marketplaces for sellers and buyers
of goods and
services; providing evaluative feedback and ratings of sellers' goods
and services, the value and prices of sellers'
goods, buyers' and
sellers' performance, delivery and overall experience in connection
therewith; providing a searchable online
advertising guide featuring
the goods and services of online vendors; providing a searchable
online database for buyers and sellers;
advertising and advertisement
services; customer loyalty services and customer club services for
commercial, promotional and advertising
purposes; promoting the goods
and services of others.
[6]
eBay contends that TPN's trade mark applications offend against the
provisions of ss 10(14), 10(12), 10(17) and 10(6) of the
Act.
Section
1 0(14)
[7]
Section 10(14) prohibits the registration of 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.'
[8]
Two inquiries are therefore necessary: are the two marks identical or
sufficiently similar, and are the services in respect
of which TPN
intends to use the RENTBAY mark the same as or similar to the
services in respect of which eBay's marks are registered,
so that
there exists a likelihood of deception or confusion? In New Media
Publishing (Pty) Ltd v Eating Out Web Services CC
1
,
Thring J said the following
2
:
" 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'."
The
dictum
was approved of by the Supreme Court of Appeal in
Mettenheimer
and
Ano.
v
Zonquasdrif
Vineyards and
Others.
3
[9]In
British
Suger
Pie
v
James
Robertson
&
Sons
Ltd
4
it was held
5
that the following factors are relevant when considering
whether there is similarity of goods and services:
(a) The respective
uses of the respective goods or services;
(b) The respective
users of the respective goods or services;
(c) The physical
nature of the goods or services;
(d) The respective
channels through which the goods or services reach the market;
(e) In the case of
self-serve consumer items, where in practice they are respectively
found or likely to be found in supermarkets
and in particular whether
they are, or are likely to be, found on the same or different
shelves;
(f) The extent to
which the respective goods or services are competitive. This inquiry
may take into account how those in trade
classify goods, for instance
whether market research companies,who of course act for industry, put
the goods or services in the
same or different sectors.
[10]
Ms Southwood, who appeared for TPN, conceded on behalf of TPN that
the services of advertising and online advertising on a
computer
network in its class 35 application are identical to or encompass the
services of providing a searchable online advertising
guide featuring
the goods and services of online vendors, advertising and
advertisement services, and promoting the goods and services
of
others for which the eBay colour logo has been registered.
[11]
It was submitted by Mr. Morley SC, who appeared for eBay, that the
further services in respect of which TPN has applied for
registration
in class 35 are similar to the services for which the eBay colour
logo has been registered. It is, in my view, not
necessary that there
should be similarity in respect of each one of the respective
specified services of the parties. Iagree, however,
that there is
some similarity between at least some of TPN's further specified
services and those in respect of which eBay's colour
logo trade mark
has been registered. As was, however, pointed out in Bata Ltd v Face
Fashions CC and Ano.
6
, the word 'similar' is almost always a difficult word to construe.
The court referred in this regard to what was said by Schreiner
ACJ
in R v Revelas viz
7
.
that there are
"degrees of
similarity or likeness, some approaching, and exceptionally perhaps
even reaching, sameness, others amounting to
no more than a slight
resemblance. The similarity may be basic or superficial, general or
specific."
The
similarity between TPN's further services and those in respect of
which eBay's colour logo mark has been registered can, in
my view, at
best be described as basic or superficial.
[12]
It was further argued by Mr. Morley that the services in respect of
which TPN has applied for registration in, respectively,
classes 35
and 36 are similar to the
"online
trading
services"
for which eBay's other two marks are registered
in class 35. Iagree that at least some of those services can be
considered to be
trading services and that they can be provided
online. The first definition of the noun
"trade"
in
the Concise Oxford Dictionary is
"the
buying
and
selling
of
goods
and
services".
TPN will obviously be offering to provide the specified services to
persons who are interested in those services if its applications
proceed to grant. It is, in fact, already doing so. It is stated in
its answering affidavit that it offers an online rental property
listing service. It is also a tenant credit bureau which collates,
monitors and supplies data and information on tenant behaviour
to its
clients at all levels of the rental industry. The services are
offered from its website, i.e. online. TPN is obviously selling
those
services to its clients, and it will continue doing so if its
applications proceed to registration.
[13]
As far as TPN's application for registration in class 36 is
concerned, it needs to be pointed out that it was stated in
Foschini
Retail
Group
(Pty)
Ltd
v
J.F.
Coetzee
8
,
a
decision of the Full Court of this Division, that the starting point
for an assessment of similarity must be with reference to
the
classification system itself and that the fact that the goods or
services are in different classes would indicate, at least
prima
facie,
that the goods or services are not similar. This
statement appears to have been made
obiter,
as the court
proceeded to consider whether the appellant's registered marks and
those for which the respondent had applied for
registration, which
were all in different classes, were similar. The court found them not
to be similar and accordingly dismissed
the appeal against the
registrar's judgment in which the registrar dismissed the appellant's
objection to the registration of the
trade marks for which the
respondent had applied. Iwould, with respect, disagree with the
conclusion that the fact that the goods
or services are in different
classes would be a
prima
facie
indication that the
goods or services are not similar. Whether goods or services are
similar must be determined objectively with
reference to all relevant
factors, including those mentioned in
British
Sugar
referred to in para [9] above.
[14]
The following inquiry is whether TPN's mark RENTBAY is identical or
similar to eBay's EBAY, EBAY (special form) and EBAY (special
form in
colour) marks. It was not contended by eBay that the marks are
identical. They clearly are not. The question, therefore,
is whether
the marks are so similar that the use of the mark RENTBAY in relation
to the services in respect of which it is sought
to be registered,
and which are similar, to the extent mentioned above, to the services
in respect of which eBay's marks are registered,
would be likely to
cause deception or confusion.
[15]
It was stated in
Cowbell
AG
v
JCS
Holdings
Ltd
9
that the decision involves a value judgment and that
"[t]he
ultimate
test
is,
after
all,
as
I
have
already
indicated,
whether
on
a
comparison
of
the
two
marks
it
can
properly
be
said
that
there
is
a
reasonable
likelihood
of
confusion
if
both
are
to
be
used
together
in
a
normal
and
fair
manner,
in
the
ordinary
course
of
business'.
(SmithKline
Beecham Consumer Brands (Pty) Ltd (formerly known as
Beecham
South
Africa
(Pty)
Ltd)
v
Unilever
pie
[1995] ZASCA 26
;
1995
(2)
SA
903
(A)
at
912H.)
'Likelihood'
refers
to
a
reasonable probability (ibid at 9108),
although
the
adjective
'reasonable'
is
perhaps
surplusage.
In
considering
whether
the use of the respondent's mark would be likely to deceive
or
cause
confusion,
regard
must
be
had
to
the essential function of a
trade
mark,
namely
to
indicate
the
origin
of
the
goods
in
connection
with
which
it
is
used
{The
Upjohn
Company
v
Merck
and
Another
1987
(3)
SA
221
{T}
at
227E
-
F;
Canon
Kabushiki
Kaisha
v
Metro-Goldwyn-Mayer
Inc
(formerly
Pathe
Communications
Corporation)
[1999]
RPC
117
(ECJ)
para
28).
Registered
trade
marks
do
not
create
monopolies
in
relation to
concepts
or
ideas.
More
recently
this
Court
in
Bata
Ltd
v
Face
Fashion
CC
and
Another
2001
(1)
SA
844
(SCA)
at
850
para
[
9]
pointed
out
that
the
approach
adopted
in
Sabel
BV
v
Puma
AG,
Rudolf
Dass/er
Sport
[1998]
RPC
199
(ECJ)
at
224
accords
with
our
case
law.
There
it
was
said
that
the
likelihood
of
confusion
must
'be
appreciated
globally'
(cf
Organon
Laboratories
Ltd
v
Roche
Products
(Pty)
Ltd
1976
(1)
SA
195
(
T}
at
202F
-
203A}
and
that
the
'global
appreciation
of
the
visual,
aural
or
conceptual
similarity
of
the
marks
in
question,
must
be
based
on
the
overall
impression
given
by
the
marks,
bearing
in
mind,
in
particular,
their
distinctive
and
dominant
components'."
[16]
In
Bata
,
the appellant was the proprietor of the
registered trade mark
'Power
.
It had sought an order
restraining the respondents from using the trade marks
'Power
House'
and
'Powerhouse'.
The court said the following
10
:
"[10]
Counsel
for
the
appellant
submitted
that the
common
element
in
both
marks,
the
word
'Power',
was
likely
to
lead
to
confusion
despite
the
fact
that
it
is
used
in
combination
with
the
word
'House'
on
the
first
respondent's
clothing.
If
full
effect
is
given
to this argument it would
result
in
the
appellant
having
a
virtual
monopoly
to
use
the
word
'Power'
on
clothing. According to the evidence, however,
there are
numerous trade
mark
registrations
in
South
Africa
in
respect
of
clothing
which
incorporate
or
include
the
word
'Power'.
It
is
an
ordinary
word
in
everyday
use,
as
distinct
from
an
invented
or
made-up word,
and
it
cannot
follow
that
confusion
would
probably
arise
if
it
is
used
in
combination
with
another
word.
[11]
What
has
to
be
considered,
therefore,
is
whether
the
notional
customer
of
average
intelligence,
viewing
the
marks
as
a
whole
or
looking
at
the
dominant
features
of
each
mark,
is
likely
to
be
confused
or deceived
into
believing
that
clothing
bearing
the
words 'Power
House'
have
a
connection
in
the
course of
trade with
the 'Power'
trade
mark.
In
deciding
this
issue
I
have
regard
only
to
the
respondents'
'Power
House'
mark
without
the
distinctive
dog
device.
In
my
view,
the
common
element
of
the
appellant's
and
the
first
respondent's
marks is
of
minor
significance
when
the
marks
are
looked
at
as
a
whole.
It
is
not
possible
to
ignore
the
word
'House'
in
the
first
respondent's
mark.
I have
considerable
difficulty
in
imagining
that
the
notional
purchaser
of
the
first
respondent's
clothing
would
focus
attention
only
on
the
word
'Power'.
The
word
'House'
is
as
significant
as
the
word
'Power'
and
the
two
words
used
together
sufficiently
distinguish
the
first
respondent's
clothing
from
that
of the
appellant.
[12]
The
result
is
the
same whether
the
two
marks
are
viewed
side
by
side
or
in
the
marketplace
where
clothing
is
sold.
The
overall
impression
which
is
created
is
that
the
marks
do
not
resemble
each
other
closely
and
the
average
customer
would
not
be
confused
or
deceived
into
believing
that
clothing
bearing
the
'Power
House'
mark
is
clothing
made
or
sold
by
the
appellant.
Accordingly
it
has
not
been
established
that
the
marks
resemble
each
other
so
closely
that
deception
or
confusion
is
likely
to
arise.
The
appellant's
contentions
based
on
s
34(1)(a) must therefore
fail.”
[17]In
the present matter, a similar argument was advanced on behalf of
eBay, viz. that the common element in both marks was the
word 'Bay'
and that this would be likely to lead to confusion or deception
despite the fact that TPN used the word in combination
with the word
'Rent' and eBay used it in combination with 'e'.If full effect was
given to this argument, it would, as in the case
of the word
'Power
in
Bata,
result in eBay having a virtual monopoly to use the
word
'Bay'
in respect of the services for which it is
registered and services similar thereto. As in the case of
'Power
,
the word
'Bay'
is an ordinary word and not an
invented word and it would, similarly, not follow that confusion
would arise if it is used in combination
with another word. The
evidence of TPN shows that there are some forty trade mark
registrations in classes 35 and 36 in which the
word 'Bay' is used as
part of the mark.
[18]
It was submitted by Mr Morley that the dominant part of eBay's marks
is the word
'Bay"
.
Ido not agree. In my view, the
word
'Rent'
in TPN's trade mark and the 'e' in eBay's trade
marks are equally signifiant. The marks must be viewed as a whole.
The word
'Rent'
in TPN's mark will not simply be discounted by
the notional user of TPN's services. Bearing in mind that each of the
marks has
two equally significant features, the overall impression
created by the marks is that they do not resemble each other closely,
either visually, aurally or conceptually. The average user of the
relevant services will in my view not be confused or deceived
into
believing that the word Rentbay has a connection in the course of
trade with eBay.
[19]
It follows that the objection based on s 10(14) cannot succeed.
Section
1 0( 1 2)
[20]
Section 10(12) of the Act provides that a mark shall not be
registered as a trade mark if the mark-
'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.'
[21]
The dispute in respect of s 10(12) was whether the use of the mark
RENTBAY would be likely to deceive or cause confusion as
contemplated
by the section. The test for deciding the issue was formulated as
follows in
Danco
Clothing
(Pty)
Ltd
v
Nu-Care
Marketing
Sales
and
Promotions
(Pty) Ltd:
11
"The
exercise
in
that
case
is
to
contrast
the notional use by the
respondent
of
its
mark
in
a
normal
and
fair
manner
with
the
reputation
of
the
appellant
(encompassing
its
mark
in relation
to
the
goods
it
sells)
in
order
to
determine
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
identical
mark
on
the
respective
goods,
as
to
their
origin."
[22]
It was therefore incumbent upon eBay to show that it had, as at the
filing date of TPN's applications (14 October 2010), acquired
a
reputation (encompassing its marks in relation to its services) in
the Republic. If it did have such reputation, the onus would
be on
TPN to negate the reasonable possibility of deception or confusion.
12
[23]
The evidence relied upon by eBay to prove a reputation was that of Ms
Amber Bay Leavitt who is employed by eBay in the United
States in the
position of intellectual property counsel. She joined eBay in 2010.
She states that the facts to which she attests
are within her
personal knowledge, unless the context indicates otherwise, and that
certain of these facts she extracted from the
properly kept
continuous records of eBay to which she has access and which she
personally reviewed. She deposed to the affidavit
during September
2012
[24]
TPN challenges Ms Leavitt's evidence on the basis that she did not
have personal knowledge of facts relating to eBay's reputation
prior
to 2010, that her evidence in this regard is hearsay and that it
should be struck out. TPN, however, conceded in its replying
affidavit, without admitting the underlying factual allegations, that
eBay and its trade marks EBAY and EBAY logo were well-known
in South
Africa at the relevant date in relation to an online auction site.
The concession is, in my view, sufficient to establish
the
jurisdictional fact of eBay having a reputation (encompassing its
marks in relation to its services) in South Africa at the
relevant
date. Online auction services are clearly included in the type of
services for which eBay's marks were registered.
[25]
The question then is whether it is more likely than not that a not
negligible number of ordinary members of the public would
be deceived
or confused as a result of the use by TPN, in relation to its
services, of the mark RENTBAY as to the origin of the
mark. Ihave
found in relation to s 10(14) that deception or confusion is
unlikely. This finding applies equally to s 10(12). The
objection in
terms of s 10(12) must accordingly also fail.
Section
10(17)
[26]In
terms of s 10(17), a mark may not be registered as a trade mark if
the mark-
'is
identical
or
similar
to
a
trade
mark
which
is
already
registered
and
which
is
well-known
in
the
Republic,
if
the
use
of
the
mark
sought
to
be
registered
would
be
likely
to
take
unfair
advantage
of,
or
be
detrimental
to,
the
distinctive
character
or
repute
of
the
registered
trade
mark,
notwithstanding
the
absence
of
deception
or
confusion,
unless
the
proprietor
of
such
trade
mark
consents
to
the
registration
of
such
mark
.'
[27]
It was held in
McDonald's
Corporation
v
Joburgers
Drive-Inn
Restaurant
(Pty)
Ltd
and
Ano
13
that
a mark is well known in the Republic if it is well known to persons
interested in the goods or services to which the mark relates.
As to
the question how well the mark should be known to such persons, the
court held
14
that the degree of knowledge of the marks that is required is similar
to that protected in the law of passing off , which
is that it
must be known to a substantial number of people. As already
mentioned, TPN conceded that eBay and its trade marks EBAY
and EBAY
logo were well-known in South Africa at the relevant date in relation
to an online auction site. This can only mean that
eBay was well
known at the relevant date to a substantial number of people
interested in participating in an online auction service.
[28]
Dealing with s 34(1)(c) of the Act, which is the counterpart of s
10(17), the following was said by Nugent AJA, as he then
was, in
National
Brands
Ltd
v
Blue Lion
Manufacturing
(Pty)
Ltd
15
:
'(T)he section
protects
the
proprietor
of
a
registered
trade
mark
only
against
the
use
of
a
mark
that
is
'identical
or
similar'
to
the
registered
trade
mark.
The
word
'similar'
as
it
is
used
in
the
section
has
its
ordinary meaning,
which
is
'a
marked
resemblance
or
likeness'
(Bata
Ltd
v
Face
Fashions
CC
2001
(1)
SA
844
(SCA)
at
8520)
and
'marked'
in
turn
means
'easy
to recognise'
(The
Oxford
English
Dictionary)."
[29]
A further meaning of the word 'marked' given in the Shorter Oxford
Dictionary is
'(of words or forms) distinguished by a particular
feature'
. I have found that each of eBay's and TPN's marks has
two equally significant features. The word "
Bay'
is
common to both. What distinguishes them from each other is the
'E'
or '
e'
in the eBay marks and the word
'RENT'
in the
RENTBAY
mark. They therefore
have different distinguishing features. It can accordingly not be
said that there is a marked resemblance
between the marks.
[30]
It follows that the use by TPN of its RENTBAY mark would not be
likely to take unfair advantage of, or be detrimental to, the
distinctive character or repute of eBay's registered marks. The
objection based on s 10(17) can therefore not succeed.
Section
10(6)
[25]
The relevant part of this section provides that a mark shall not be
registered as a trade mark if the mark-
'on
the
date
of
application
for
registration
thereof,
or,
where appropriate,
of
the
priority
claimed
in
respect
of
the
application
for
registration
thereof,
constitutes,
or
the
essential
part
of
which
constitutes,
a
reproduction,
imitation
or
translation
of
a
trade
mark
which
is
entitled
to
protection under
the
Paris
Convention
as
a
well-known
trade
mark
within
the
meaning
of section
35
(1)
of
this
Act
and
which
is
used
for
goods
or services
identical
or
similar
to
the
goods
or services
in
respect
of
which
the
trade mark
is
we/I-known
and
where
such
use
is
likely
to
cause
deception
or
confusion.'
[26]
The objection based on s 10(6) cannot, in my view, succeed for the
simple reason that the Rentbay mark does not constitute
a
reproduction, imitation or translation of the eBay registered marks,
neither does the essential part thereof constitute a reproduction,
imitation or translation thereof. Ihave found that the Rentbay and
eBay marks both consist of two equally significant features
or parts.
The word
'bay'
is therefore not the essential part of the
RENTBAY mark.
[27]
The result of the above conclusions is that all of eBay's objections
must fail. I accordingly make the following orders:
(a) eBayInc's
opposition to application no. 2010/23707 for registration of the mark
RENTBAY in class 35 and to application no 2010/23708
of the mark
RENTBAY in class 36, both in the name of TPN Group (Pty) Ltd, is
dismissed with costs.
(b) The said
applications may proceed to grant.
Counsel
for Opponent: Adv. G.E. Morley SC
Instructed
by : Adams & Adams, Pretoria
Counsel
for Applicant for registration: Adv. F. Southwood
Instructed
by : Fullard Mayer MorrisonInc, Johannesburg
1
[2005] ZAWCHC 20
;
2005
(5)
SA
388
(CPD)
2
at
3940-G
3
2014
(2)
SA
204
(SCA)
para
[
I
I
]
4
[1996]
RPC
281
(ChD)
5
at
296-297
6
2001
(I ) SA 844 (SCA) para [14]
7
1
1959 (I ) SA 75 (A) at 808-C
8
Case
no.
A1/
11
in
the
North
Gauteng
High
Court
(unreported)
9
2001
(3)
SA
941
(SCA)
para
(10]
10
at
paras
[I
0]
to
[12]
11
[1991] ZASCA 121
;
1991
(4)
SA
850
(AD)
at
861F
-
G.
Although
the
test was
fonnulated
with
reference
to
s
16(
I
)
of
the
1963
Trade
Marks
Act,
the
wording
in
question
was
retained
in
s
I
0(12).
The
test
is
therefore
equally
applicable
to
s
I
0(12).
See Webster
&
Page,
South
African
Law
of
Trade
Marks,
para
6.6.6,
p.
6-15.
12
Danco
Clothing,
supra,
at 8600-E
13
1997
(I)
SA
I
(AD)
at
384E
14
at
384H-385D
15
2001
(3)
SA
563
(SCA)
at
para
[12]