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[2015] ZAGPPHC 316
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Lotte Confectionary Co Ltd v Orion Corporation (49422/2013) [2015] ZAGPPHC 316; 2015 BIP 224 (GP) (1 April 2015)
IN
THE HIGH COURT OF SOUTH AFRICA
(GAUTENG
DIVISION, PRETORIA)
Case
No: 49422/2013
DATE:
1/4/2015
No
reportable
Not
of interest to other judges
In
the matter between:
LOTTE
CONFECTIONARY CO
LTD
...................................................................................
Applicant
and
ORION
CORPORATION
......................................................................................................
Respondent
JUDGMENT
D
S FOURIE, J:
[1]
This is an application in terms of section 24(1) of the Trade Marks
Act, No 194 of 1993 (“the Act”) for the removal
of trade
mark registration number 1996/01129 CHOCOPIE from the Register of
Trade Marks. The application is opposed by the respondent
who is the
trade mark proprietor.
THE
PARTIES
[2]
The applicant is a Korean company and manufacturer of confectionary,
candy biscuits, chocolates, snacks and ice-cream.
It also
manufactures a chocolate-coated biscuit sandwich pie which it markets
under the name LOTTE CHOCOPIE and which it plans
to export to South
Africa in the near future. The respondent is also a Korean
company and also a manufacturer of confectionary,
candy, biscuits,
chocolates, snacks and ice-cream. It is the proprietor of trade
mark registration No 1996/01129 CHOCOPIE
which forms the subject of
this application.
GROUNDS
FOR REMOVAL
[3]
In 1996 the respondent secured a
registration for the trade mark CHOCOPIE in Class 30 in respect of –
“
chocolates; ice-creams,
biscuits, wafers, caramels, candies; breads; cakes; chewing
gum; non-medicated confectionary;
chocolate beverages
with milk, chocolate-based beverages, cocoa-based beverages;
cookies, pies, puddings, pastry all containing
cocoa or chocolate or
having a chocolate flavour.”
[4]
The applicant seeks in terms of section
24(1) of the Act the expungement of the mark from the Register of
Trade Marks on the grounds
that it is an entry wrongly made in or
wrongly remaining on the Register because it is contrary to the
provisions of sections 10(2)(a)
and (b) as well as section 10(12) of
the Act.
RELEVANT
PROVISIONS OF THE
TRADE MARKS ACT
[5
]
Section 9
sets out the positive attributes
necessary to render a mark registrable. It provides as follows:
"(1) In order to be
registrable, a trade mark shall be capable of distinguishing the
goods or services of a person in respect
of which it is registered or
proposed to be registered from the 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.
(2) A mark shall be considered to
be capable of distinguishing within the meaning of ss (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.”
[6]
Section 10
sets out the negative attributes
which would make a mark unregistrable. The relevant part of
section 10
provides as follows:
"The following marks shall
not be registered as trade marks or, if registered, shall, subject to
the provisions of
section 3
and
70
, be liable to be removed from the
register:
…
(2) a mark which –
(a) is not capable of
distinguishing within the meaning of
section 9
; or
(b) consists exclusively of a sign
or an indication which may serve, in trade, to designate the kind,
quality, quantity, intended
purpose, value, geographical origin or
other characteristics of the goods or services, or the mode or time
of production of the
goods or of rendering of the services;
…
(12) a mark which 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;”
[7]
An entry wrongly made in or wrongly
remaining on the Register is dealt with in
section 24(1).
It
provides as follows:
"In the event of
non-insertion in or omission from the register of any entry, or of an
entry wrongly made in or wrongly remaining
on the register, or of any
error or defect in any entry in the register, any interested person
may apply to the court or, at the
option of the applicant and subject
to the provisions of
section 59
, in the prescribed manner, to the
registrar, for the desired relief, and thereupon the court or the
registrar, as the case may
be, may make such order for making,
removing or varying the entry as it or he may deem fit.”
[8]
Section 51
contains provisions relating to
the evidential value of the validity of the original registration of
the trade mark. It provides
as follows:
"In all legal proceedings
relating to a registered trade mark (including applications under
section 24)
the fact that a person is registered as the proprietor of
the trade mark shall be prima facie evidence of the validity of the
original
registration of the trade mark and of all subsequent
assignments and transmissions thereof.”
[9]
Having regard to these provisions, I shall
now consider the question whether an order for the expungement of the
trade mark should
be granted or not.
AN
ENTRY WRONGLY MADE IN THE REGISTER
[10]
As I understand the case for the applicant,
it is alleged that the mark was
ab
initio
unregistrable and that the
registration thereof was therefore made without sufficient cause.
The words “an entry wrongly
made” apply primarily to the
registration of a trade mark contrary to the provisions of the Act.
The relevant date
for the purposes of deciding whether or not the
entry was wrongly made is the effective date of the registration of
the mark, namely
1996. It is therefore necessary to prove on
the facts existing at that date that the entry was made without
sufficient cause
(
Sportshoe (Pty) Ltd v
Pep Stores (SA) (Pty) Ltd
1990 (1) SA
722
(A) at 726E).
[11]
The evidence presented on behalf of the
applicant consists mainly of various Internet printouts and
information with regard to a
visit to sweet and confectionary
wholesalers in Pretoria. According to the supporting affidavits
it appears that the Internet
printouts were obtained and the visit to
the sweet and confectionary wholesalers conducted during January
2009. It was pointed
out on behalf of the respondent that this
evidence is not supportive of any facts existing at the date that the
entry was made
(1996) to establish a
prima
facie
case that the mark was registered
without sufficient cause.
[12]
Having regard to the rebuttable presumption
in favour of validity (sec 51), I am of the view that a Court should
not lightly and
without due consideration of all the evidence,
conclude that on the relevant date the Registrar made a mistake or
caused an entry
to be wrongly made or did not apply his mind
properly. In the absence of sufficient evidence to justify such
a conclusion
and having regard to the provisions of section 51, I
have to accept that the Registrar was satisfied with the respondent’s
application for registration on the relevant date, i.e. 1996.
The evidence presented does not reach back to this date.
Therefore, I am of the view that the applicant has failed to make out
a case that the registration of the respondent’s trade
mark is
an entry wrongly made in terms of section 24(1).
AN
ENTRY WRONGLY REMAINING ON THE REGISTER
[13]
According to the learned authors of the
South African Law of Trade Marks
(Webster & Page,
South African Law
of Trade Marks
, 4
th
Edition, p 13-16(2) par 13.17) the reference to an entry which
is wrongly remaining on the Register is intended primarily
to cover
cases where trade marks have become deceptive or lost their
distinctiveness as a result of acts occurring after registration.
This includes the possibility that a mark can also lose its
distinctiveness by being used by several unconnected companies
without
control. The relevant date for determining the validity
of such an entry is the date of the application for removal
(
Sportshoe (Pty) Ltd v Pep Stores (SA)
(Pty) Ltd
,
supra
,
at 726E). The date of the application appears to be 8 October
2009. Although there is a lapse of approximately 8 months
after
obtaining the evidence referred to above, it still relates to a
subsequent state of affairs.
[14]
It was contended on behalf of the applicant
that the CHOCOPIE trade mark is descriptive and not capable of
distinguishing as required
by section 9 of the Act. It was also
submitted that CHOCOPIE is nothing more than an abbreviation of the
term “chocolate
pie” which is a chocolate pastry
consisting of an outer crust and a filling. It was finally
contended, with reference
to section 10(12), that the CHOCOPIE trade
mark is inherently deceptive of the goods “chocolate beverages
with milk, chocolate-based
beverages and cocoa-based beverages”.
[15]
In answer thereto it was submitted on
behalf of the respondent that CHOCOPIE
per
se
is not a word in the English
language. The recognition of it as a combination of the two
words CHOCO and PIE might not be
readily apparent when it is
associated with wares other than pies. It was also contended
that CHOCOPIE is not inherently
descriptive or deceptive, since the
wares in respect of which it is registered are self-evidently not
“pies”.
[16]
Since distinctiveness is the very essence
of a trade mark, it should follow that once a trade mark has ceased
to be distinctive
it should be removed from the Register (Webster &
Page, supra, p 13-17 par 13.17.3). The capability of a mark to
distinguish
is a factual issue and must be considered having regard
to all the evidence and relevant circumstances (
Beecham
Group v Triomed (Pty) Ltd
2003 (3) SA
639
(SCA) par 20).
[17]
This brings me to a consideration of the
evidence. The deponent on behalf of the applicant refers in his
affidavit to certain
product images and Internet printouts which
according to him is evidence to show the widespread and extensive use
of the abbreviation
within every day descriptors such as
“choco-cherry”, “choco-cream”, “choco-brown”,
“choco-slab”
and “choco-mint”.
According to the confirmatory affidavit of the attorney all of these
products (listed as product
images) were purchased in South Africa
and the printouts were made from South African websites. It is
also alleged, with
reference to another annexure containing product
images, that there are at least two other manufacturers using the
word “CHOCOPIE”
as a descriptor in relation to
confectionary products in South Africa.
[18]
In the answering affidavit it is pointed
out that the respondent has registered rights in CHOCOPIE dating back
over 14 years and
that the unlawful use of CHOCO-marks by third
parties can hardly serve as a ground for the relief sought by the
applicant.
It is also alleged that it was the respondent who
coined the unusual combination of “chocolate” and “pie”
into the novel word CHOCOPIE for its goods and then proceeded to use
and register that combination as a trade mark. The deponent
also indicated that although it is alleged that CHOCO is used in
South Africa, he is unaware of such use. Had the respondent
been aware of it, it would have acted to stop it.
[19]
In
Triomed
(Pty) Ltd v Beecham Group
,
supra,
at 533E Smit J pointed out that a mark
is inherently not capable of distinguishing when it cannot do the job
of distinguishing without
the public first being educated that the
sign is a trade mark. Another consideration in determining
whether a mark is inherently
capable of distinguishing is whether
other traders are likely, in the ordinary course of their business
and without any improper
motive, to desire to use the same mark, or
some mark merely resembling it, upon or in connection with their own
goods (
Distillers Corporation (SA) v
Stellenbosch Farmers Winery
1979 (1) SA
532
(T) at 536G).
[20]
The respondent does not dispute that there
are products reflecting the use of the word “CHOCO” in
combination with other
words. According to the evidence before
me the various Internet printouts and product images clearly show the
widespread
and extensive use of the abbreviation within every day
descriptors such as “choco-cherry”, “choco-brown”
and “choco-mint”. Futhermore, it also appears that
there are at least two other manufacturers using the word
“CHOCOPIE”
as a descriptor in relation to confectionary products in South
Africa. This became apparent during
a visit at Sweet and
Confectionary Wholesalers in Pretoria by one of the attorneys acting
on behalf of the applicant. According
to the images annexed to
the founding affidavit there is also another CHOCOPIE product, being
an ice-cream named SUCKERS CHOCOPIE.
Again, these allegations
have not been denied by the respondent.
[21]
It therefore appears that subsequent
to registration the respondent’s trade mark has become
surrounded by various other marks
of a similar nature which appears
to be an established practice in the trade. The fact that the
deponent on behalf of the
respondent was unaware of this practice is
in my view no answer. The respondent is apparently trading in
South Africa and
as trade mark proprietor supposed to protect its
interests. Inaction may result in a trade mark losing its
distinctiveness
which, in my view, is the case here.
[22]
Having regard to the evidence it seems to
me that the respondent’s trade mark has lost its
distinctiveness for mainly two
reasons: first, there is
sufficient evidence to show the widespread and extensive use of the
abbreviation “choco”
within every day descriptors and
second it appears that other traders are, in the ordinary course of
their business and probably
without any improper motive, using the
same mark in connection with their own goods. In the
result I have to conclude
that the respondent’s trade mark is
no longer capable of distinguishing as required by the provisions of
section 9(1) read
with section 10(2)(a) of the Act. In view of
this conclusion it is not necessary to consider whether the mark is
also inherently
deceptive.
ORDER
(1)
It
is ordered that trade mark registration number 1996/01129 CHOCOPIE in
Class 30 registered in the name of the respondent (Orion
Corporation)
be removed from the Register in terms of section 24(1) of the Trade
Marks Act 194 of 1993;
(2)
The
respondent is ordered to pay the costs of this application.
______________
D S FOURIE
Judge of the
High Court
Pretoria
Date: