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[2015] ZAGPPHC 222
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Chantelle v Designer Group (Pty) Ltd (A743/2013) [2015] ZAGPPHC 222; 2015 BIP 231 (GP) (24 April 2015)
IN
THE HIGH COURT OF SOUTH AFRICA
/ES
(
GAUTENG
DIVISION, PRETORIA
)
CASE
NO: A743/2013
TM
CASE NO: 2007/05561
DATE:
24/4/2015
REPORTABLE
NOT
OF INTEREST TO OTHER JUDGES
IN
THE MATTER BETWEEN
CHANTELLE
....................................................................................................................
APPELLANT
(Opponent in the tribunal
a
quo
)
AND
DESIGNER
GROUP (PTY)
LTD
..................................................................................
RESPONDENT
(Trade
mark applicant in the tribunal
a quo
)
JUDGMENT
PRINSLOO,
J
[1] This
is an appeal against the dismissal by the Registrar of Trade Marks of
the appellant's opposition to the registration by
the respondent of a
trade mark CHANTELLE.
[2] The
respondent applied for the registration of the mark CHANTELLE under
trade mark application 2007/05561 in Class 3 in respect
of:
"
Soaps,
perfumery, essential oils, cosmetics, fragrances, deodorants and
deodorizers, anti-perspirants and body care products.
"
("The
Class 3 application.")
[3] The
Class 3 application was filed by the respondent on 15 March 2007
and advertised in the
Patent Journal
on 26 March 2008.
[4] The
appellant is the registered owner of a trade mark with the identical
name, CHANTELLE, registered already in 1964 under no
1964/01137, in
Class 25 ("the appellant's trade mark").
[5] The
appellant's trade mark is of full force and effect in this country.
[6] The
appellant's trade mark is registered in Class 25 in respect of the
following:
"
Girdles,
brassiers, articles of underclothing and swim suits (being
articles of clothing), all being knitted or made wholly
or
principally of knitted materials; and stockings.
"
[7] Not long
after the advertisement of the Class 3 application in the
Patent
Journal
, in March 2008, the appellant's attorney wrote a letter
to the respondent, c/o its attorney, in July 2008, requesting it to
withdraw
the Class 3 application.
It is
convenient to quote an extract from this letter for illustrative
purposes:
"Our
client has been using the trade mark CHANTELLE in relation to
articles of clothing designed for women since 1949.
Our client
has made extensive use of its CHANTELLE trade mark in relation to
such products in many countries of the world, including
South
Africa. As a result of such use, the trade mark CHANTELLE in
relation to such goods has acquired an enormous reputation
and
goodwill vesting in our client. We submit that the CHANTELLE
trade mark is in fact a well-known trade mark in South Africa
in
relation to such goods.
In
addition to its common law rights, our client has also secured
registration of the CHANTELLE trade mark in many countries of
the
world. In South Africa, our client's trade mark is registered
under trade mark registration no 1964/01137 CHANTELLE
in Class
25.
It
has come to our client's attention that you have caused an
application to be filed for the trade mark CHANTELLE in relation to
goods in Class 3. Our client is of the opinion that your
registration and use of the trade mark CHANTELLE in relation to
the
goods of interest to you will result in confusion with our client's
well-known CHANTELLE trade mark. In the circumstances
our
client is of the opinion that your application offends the provisions
of section 10(12), 10(14) and 10(17) of the South African
Trade Marks
Act 194 of 1993
."
[8] The
respondent's answer to this letter was short and sweet:
"Our
client will not withdraw its application."
[9] Although
subsections (12) and (17) of section 10 of the Trade Marks Act 194 of
1993 ("the Act") are also mentioned
in the letter of
demand, the appellant's opposition to the Class 3 application is
based primarily on the provisions of section
10(14) of the Act, which
stipulate:
"10.
Unregistrable trade marks
. – The
following marks shall 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 mark."
[10]
Section 14, mentioned in section 10(14), has to do with "honest
concurrent use" and, although it was mentioned in
passing in an
opposing affidavit offered by the respondent, it was not an issue in
these particular proceedings.
[11] It
is also common cause that the appellant did not consent to the
registration of the proposed CHANTELLE mark in terms of the
Class 3
application, as foreshadowed in section 10(14).
[12] The
dispute involving the appellant's opposition to the Class 3
application led to a hearing in the tribunal of the Registrar
of
Trade Marks ("the Registrar") and in a written judgment
dated 21 June 2013, the Registrar found against the appellant
and
made the following order:
"(a) Trade mark application no 2007/05561 CHANTELLE
in Class 3 was to proceed to registration and
(b)
the opposition was dismissed with costs."
[13] The
appellant, in terms of section 53 of the Act, noted an appeal against
this decision of 21 June 2013 of the Registrar,
and the appeal
came before us, sitting as a Full Court of this Division.
[14]
Before us, Ms Joubert appeared for the appellant, and Ms Cirone
appeared for the respondent.
A brief
overview of the evidence
(i)
Patrice
Kretz ("Kretz")
[15]
Kretz is the chairman and executive officer of the appellant, which
is a French company.
[16] His
undisputed evidence is that the appellant designs, manufactures and
markets lingerie brands throughout the world.
As such, the
appellant's garments are specifically designed and aimed at women.
The appellant has been dedicated to the art
of creating great
fitting, high quality intimate apparel, designed to enhance a woman's
beauty and self-image, for more than hundred
years (according to an
allegation made in the replying affidavit, the appellant has been in
business since 1876). The appellant
is the world's largest
French intimate apparel company and its constantly rising turn-over
reached 380 million Euro in 2007.
(The founding affidavit,
supporting the objection, is dated October 2008.)
[17] It
is undisputed that the appellant's 1964 CHANTELLE trade mark in
Class 25 is validly registered and in full force and
effect.
The appellant therefore owns statutory rights in the trade mark
CHANTELLE in South Africa.
[18] The
appellant's trade mark is used throughout many countries world wide,
including South Africa, in relation to the goods
for which it is
registered. The appellant has extensively used its CHANTELLE
mark in South Africa for many years. Documentation
is attached,
emanating from an upmarket boutique in Cape Town, confirming its
dealings with the appellant's CHANTELLE goods.
This is not
disputed.
[19] The
goods in relation to which the appellant's trade mark is registered
and used, are items of fashion, particularly intended
for and aimed
at women. The appellant's CHANTELLE goods are stocked in and
sold through various retail outlets and fashion
orientated stores.
Normally the appellant's CHANTELLE goods are sold in relative close
proximity to competitive brands.
Such retail outlets also
frequently stock and sell cosmetics and fragrances.
[20]
Articles of clothing such as those of the appellant, as well as
cosmetics and fragrances, all constitute items of fashion.
Such
items are mostly used by women. They go hand in hand with a
person's appearance for a promotional photo-shoot, a day
at the
office, a night on the town or otherwise. These items of
fashion compliment each other and are often sold in close
proximity
to each other in the same retail outlet. Such retail outlets
dealing in items of fashion are quite common in South
Africa and
include stores such as Edgars, Truworths, Foschini and Woolworths.
[21]
Kretz submits that the appellant's CHANTELLE goods can
notionally
be sold in any fashion outlet, including stores such as those
referred to (but not limited only to them) where cosmetics and
fragrances
are located and sold in close proximity to clothing and
other garments.
[22]
Kretz then simply records that the proposed trade mark in the Class 3
application, CHANTELLE, is identical to the appellant's
trade mark,
CHANTELLE. The respective parties' marks are therefore so
similar as to be likely to confuse or deceive.
This is one of
the central issues of the case and will be dealt with later.
[23]
Kretz then refers to the provisions of section 10(14) of the Act,
and, correctly, points out that a mark is unregistrable if
it is
identical to a registered trade mark belonging to a different
proprietor (like here) or so similar to the registered trade
mark
that use thereof, in relation to the goods in respect of which it is
sought to be registered, which are the same as or similar
to those
goods in respect of which the trade mark is registered, would be
likely to deceive or cause confusion (unless the proprietor
of the
trade mark consents to the registration of the new mark, which is not
the case here).
[24]
Kretz then submits that the test for confusing similarity for the
purposes of section 10(14) involves a visual, conceptual
and phonetic
comparison of the marks, bearing in mind the
notional
use of the marks in relation to the goods for which they are
registered and sought to be registered, respectively. He
submits
that the goods featuring in the Class 3 application are
similar to and related to the goods covered by the appellant's trade
mark.
[25] The
witness goes on to state that the appellant relies on the principles
laid down in
Danco Clothing (Pty) Ltd v
Nu-Care Marketing Sales & Promotions (Pty) Ltd and another
[1991] ZASCA 121
;
1991 4 SA 850
(AD) ("
Danco
").
A discussion of
Danco
follows later.
[26]
Kretz submits that the respective uses of the respective goods are
similar and overlap in that they are likely to be used as
items of
fashion to improve a person's appearance. The respective users
of the respective goods are the same in that such
use would be made
by people "wishing to improve their appearance, models, and
mostly women". He submits that the
physical nature of the
goods is that they are both applied to the human body to affect a
person's appearance or physical nature
and are
notionally
sold in close proximity to each other. The respective trade
channels through which the goods reach the market also
notionally
overlap and in this regard the witness again makes reference to
Danco
.
The witness also submits that the parties' respective goods are
competitive in that it is a regular occurrence for manufacturers
of,
for example, clothing brands to extend their product lines to also
include other items of fashion such as cosmetics and fragrances.
[27] In
conclusion, the witness submits that the use of the mark CHANTELLE
relating to the Class 3 application, in the course of
trade, would be
likely to cause confusion and deception in that members of the public
would be likely to believe that the respondent
is, or is associated
with the appellant. There is no connection between the
respondent's and the appellant's goods.
The respondent's
CHANTELLE mark does not distinguish its goods from goods identified
by the appellant's CHANTELLE mark. (The
emphasis on the
repeated use by the witness of the phrases "notional use",
"notional" and "notionally"
is my own, for
reasons which will appear later.)
(ii)
Alicia
Castleman ("Ms Castleman")
[28] She
is a candidate attorney employed by the appellant's attorney or, more
correctly, was so employed when deposing to a supporting
affidavit in
October 2008.
[29] On
8 October 2008 she visited a prominent shopping mall in Centurion,
Gauteng, and in particular the retail outlets Edgars,
Truworths and
Foschini.
[30]
During her visit to the department store Edgars, she noted a number
of clothing brands as well as perfumes under the same brand
sold in
close proximity to each other, namely ADIDAS, ROXY, PUMA, GUESS and
BONDIBLU.
[31] She
is also personally aware that there are a number of perfumes sold in
the department stores Edgars, Truworths and Foschini
which are also
sold as clothing under the same brand. These include PRADA, LA
COSTE, CALVIN KLEIN, CHANEL, DIOR, GUCCI and
DIESEL. (She
mentioned more, but I only quoted some of the brands from her list.)
[32] To
her affidavit, Ms Castleman then attaches no less than fifteen sets
of register sheets (extracts from the Trade Marks register)
evidencing the common ownership by clothing manufacturers of marks in
both Class 3 and Class 25.
I only
mention a few, for the sake of brevity: CHRISTIAN DIOR, HUGO BOSS,
CHANEL, CALVIN KLEIN, LA COSTE, PRADA SA, BONDI BLU and
PUMA.
[33] Ms
Castleman then concludes by submitting that in the light of the
aforegoing, it appears as though it is common for manufacturers
of
clothing to extend their product range under the same mark to, for
example, cosmetics and fragrances. She confirms that
she also
found that these goods are sold in close proximity to each other, all
in the same department stores.
(iii)
Ian
Wilson Martin Isdale ("Isdale")
[34] He
is a director of the respondent, based in Germiston, Gauteng.
He is the only witness on behalf of the respondent,
and deposed to
the answering affidavit.
[35] The
respondent was formed in 1995 as a business specialising in supplying
fragrance and personal care products to the retail
market and has
grown considerably "to become one of the leading suppliers
of personal care products in South Africa today".
[36] The
respondent sells an extensive range of personal care products under
the mark DESIGNER NOTES. The mark CHANTELLE is
used by the
respondent for products in that range. The CHANTELLE product
was launched in May 2002 and distributes its CHANTELLE
products to
various stores throughout South Africa and also has a presence in
Botswana and Namibia. The CHANTELLE product
is the respondent's
best selling female variant targeting females in the primary age
group from 16 to 35. In the financial
year ending
September 2008 CHANTELLE products were sold at ex-factory value of
over R4 million. The respondent also
conducted aggressive
advertising campaigns to promote its products, including the
CHANTELLE products.
[37]
Isdale submits that the CHANTELLE mark has "undoubtedly"
become well-known in South Africa and the mark, when used
in relation
to goods in Class 3, particularly cosmetic products, has been
associated in the minds of the public with the respondent
at all
relevant times.
[38]
Throughout the whole of the more than six years that the respondent's
CHANTELLE products have been sold in South Africa, the
respondent has
not heard of a single case of confusion with the appellant's goods
nor received a single complaint from the appellant
regarding any
confusion.
Of
course, such "complaint" manifested itself in the
appellant's opposition to the Class 3 application.
Moreover,
it was argued on behalf of the appellant, correctly in my view, that
it is unlikely that consumers who were confused or
deceived by or
between the origin of the appellant's CHANTELLE products and that of
the respondent, would go to the trouble of
contacting the
manufacturer to register or record such confusion. A regular
user of the appellant's CHANTELLE products,
stumbling upon the
respondent's CHANTELLE cosmetics, notionally in the same store, may
purchase the latter assuming a common origin
with that of the
appellant's products. It is precisely because of such
deception, that the consumer will not ever think of
registering a
complaint.
[39]
Isdale testifies that the appellant's claims that its goods are
"items of fashion" is "intentionally misleading":
the appellant's registration is in respect of girdles, brassiers and
other articles of underclothing and swim-suits and stockings.
According to the appellant's website, so Isdale states, the
appellant's trade is very restricted and it trades in
lingerie, particularly intimate apparel and figure enhancement
products. He argues that different types of "fashion
items" are sold in different ways through different trade
channels. He argues that the assertion that the appellant's
goods are stocked in and sold through various retail outlets and
fashion orientated stores "is irrelevant" as there
is
no relevant evidence that this statement relates to trade in South
Africa. In the replying affidavit, Kretz insists that
the
evidence shows that in South Africa in many instances articles of
clothing and perfumery are sold side by side or in close
proximity.
He repeats his submission that the appellant's goods are items of
fashion and, in any event, lingerie and related
products are products
used by women, like the applicant's products.
[40]
Isdale complains that there is no "credible evidence" that
the appellant's goods are sold in stores such as Edgars,
Truworths,
Foschini or Woolworths or that they are sold in close proximity to
cosmetics and fragrances in the same retail outlets
in South Africa.
In
reply, Kretz counters this by submitting that having regard to the
nature of the goods of the parties, the respective use of
the goods,
the trade channels through which the appellant's and the respondent's
goods can
notionally
be retailed, there is a likelihood of deception or confusion between
the respective trade marks (emphasis added).
[41]
Isdale argues that although the marks of the parties are the same (in
fact, it is common cause that they are identical) they
are used and
are to be used in relation to "totally different" goods and
the use would not be likely to deceive or cause
confusion.
[42] In
the answering and replying affidavits, both parties dispute the
allegations of the other that its mark had acquired a substantial
reputation over the years.
[43]
Isdale argues that members of the public who shop at the large
departmental and clothing stores do not expect the same mark
on
"unrelated goods" to indicate the same origin. He
also argues that the respective trade channels through which
the
goods concerned reached the market do not overlap. In reply,
these statements are disputed. Kretz argues that the
evidence
shows that the respective trade channels where the goods of the
applicant and the opponent can
notionally
be retailed are certainly overlapping (emphasis added). He
insists that both consumers and retailers associate the goods
of
interest to the appellant with the goods of interest to the
respondent and
vice versa
.
Kretz submits that in many cases the goods of interest to the
appellant are shown in close proximity to the goods of interest
to
the respondent.
[44]
Isdale argues that the major South African brands for products that
are of the same nature as the appellant's goods, and he
mentions
brands like PLAYTEX, WONDERBRA, TRIUMPH INTERNATIONAL and others, are
known only for those goods and not for cosmetic
products. This
is disputed in reply.
[45]
Isdale argues that the public knows that cosmetics and fragrances
identified by the mark CHANTELLE originate from the respondent.
He does not motivate the statement in any way, neither does he offer
any independent or other evidence in support thereof.
Indeed,
with the exception of sales figures and the photograph of a CHANTELLE
product featuring in an advertisement, none of the
evidence of Isdale
is supported independently from other sources. I make this
remark because of the all important issue of
onus
to which I will revert.
The
Danco
judgment
[46] The
appellant had been the registered proprietor of two "French
Connection" trade marks in Class 25 in respect
of clothing
since 1980 and 1983 respectively. In 1987 the respondent became
the proprietor of the identical "French
Connection" mark in
Class 3 of the register in respect of, broadly, cosmetics and
toiletries. It must be added
that the appellant had built up a
substantial reputation for its "French Connection" clothing
which was sold through
national chain stores with numerous branches
throughout the country. There is a side issue, for present
purposes, in the
sense that the appellant had planned to branch out
into cosmetics and toiletries which I will not dwell on for purposes
of this
judgment.
[47] The
appellant applied for the expungement of the respondent's mark from
the Trade Mark register on the grounds that the use
by the respondent
of the identical mark offended against the provisions of,
inter
alia
, section 17(1) of the previous
Trade Marks Act no 62 of 1963 ("the Old Act") in that its
use in relation to cosmetics
was likely to deceive or cause confusion
in view of the use by the appellant, in relation to clothing, of its
earlier marks registered
in Class 25. The appellant's evidence
as to the likelihood of confusion, which evidence was properly
supported by other sources,
was that clothing, on the one hand, and
cosmetics, toiletries, perfumery and sun-tan preparations, on the
other hand, were sold
in close proximity and through the same trade
channels such as large departmental and clothing stores; that
customers at retail
stores of that kind would, as a matter of course,
associate a mark on cosmetics with the identical mark on well-known
and popular
brands of clothing; and that the appellant's mark on
clothing had indeed been well-known and popular in 1985.
[48] The
appellant failed in the court
a quo
,
mainly on technical grounds flowing from an argument as to whether
the appellant had the necessary
locus
standi
. The court
a quo
made no findings on the merits. The judgment of the court
a quo
is reported at
1990 2 SA 619
(T).
[49] On
appeal, the finding of the learned judge
a
quo
as to the
locus
standi
argument was reversed.
[50] On
appeal, as to the merits, it was held (I quote from the headnote at
852C-F but will visit the actual remarks of the learned
Judge of
Appeal hereunder) that, for purposes of comparison, use of the mark
by both parties concerned was to be
postulated
, and that the
issue was whether such a
postulated
and fair use by the
respondent of the "French Connection" mark in relation to
cosmetics in 1985 would have been likely
to cause confusion or
deception when compared with the use by the appellant of the "French
Connection" mark in connection
with items of clothing.
It was
further held that in expungement proceedings under section 33 of the
Act (the "Old Act") the
onus
rested upon the applicant for expungement, if he relied,
inter
alia
, on section 17(1) of the (Old)
Act, to establish on a balance of probabilities that the
notional
use
of the mark in a fair and normal
fashion – in this instance, by the appellant in respect of
clothing and by the respondent
in respect of cosmetics – would,
more likely than not, be deceptive or at least confusing in regard to
the source of the
respective goods.
It was
further held that, having regard to the nature of the goods (the
appellant's clothing and the respondent's cosmetics), their
respective uses, and the trade channels through which the appellant's
and respondent's goods could
notionally
be retailed, that the likelihood of confusion or deception among a
substantial number of persons had been established on the
probabilities
(emphasis added). The appeal was accordingly
allowed.
[51] Section
17(1) of the Old Act reads as follows:
"(1)
Subject to the provisions of sub-section (2), no trade mark shall be
registered if it so resembles a trade mark belonging
to a different
proprietor and already on the register that the use of both such
trade marks in relation to goods or services in
respect of which they
are sought to be registered, and registered, would be likely to
deceive or cause confusion."
This
appears to be, by and large, the counter-part of the present section
10(14). Subsection (2) of section 17, referred to
in section
17(1), of the Old Act, has to do with "honest concurrent use or
of other special circumstances" which, as
I have indicated, is
not a subject which played a part in these proceedings.
[52] At 860A-B
the learned Judge of Appeal says the following:
"This
is a case, not of different marks in the same class, but of the same
mark in different classes. The marks in question
being
identical, their resemblance goes without saying; what remains to be
contrasted is the use of the identical mark in relation
to different
classes of goods."
From
what has already been stated, it is obvious that the circumstances in
the present case are exactly the same. It was common
cause
before us that the two CHANTELLE marks are identical. The same
classes (3 and 25) come into play.
[53] I
turn to the issue of
notional
use, emphasised earlier in this judgment, and repeatedly referred to
by Kretz in the founding affidavit of the appellant.
[54] In
Danco
,
at 860B-D, the learned Judge of Appeal states:
"Such
use, it is trite, does not have to be actual. For purposes of
the comparison use of the trade mark by both parties
concerned is
postulated. The issue is whether such a postulated normal and
fair use by the respondent of the trade mark 'French
Connection' in
relation to a range of cosmetics would be likely to cause confusion
or deception when compared with a notional use
by the appellant of
the trade mark 'French Connection' in connection with items of
clothing ... It is equally trite that
the deception or
confusion must be in regard to the source or origin of the respective
goods ..."
[55] According
to the
Shorter Oxford English Dictionary
volume 2 p1947,
"notional" means:
"2. of knowledge etc: purely speculative; not based
on fact or demonstration;
3. existing only in thought; imaginary;
4.
hypothetical; for the purposes of a particular interpretation or
theory."
[56] The
learned authors Webster and Page
South African Law of Trade Marks
,
updated loose-leaf edition paragraph 7.16 state the following under
the heading "normal and fair use":
"The
test which has been put forward for comparison of marks under section
10(12) requires normal and fair use by the applicant
of the trade
mark it is seeking to register to be postulated, while the test
suggested for section 10(14) requires the tribunal
to postulate
notional use by the opponent of his registered mark in respect of
some or all of the goods covered by the registration
and use in a
normal and fair manner of the applicant's trade mark in respect of
any of the goods covered by his application for
registration.
In infringement proceedings notional use of the plaintiff's trade
mark is to be considered. Whether notional
use of the
defendant's mark has to be taken into account is as yet undecided.
Notional
use is any normal and fair use which a party could make of his trade
mark. This includes not only the range of goods
(or services)
in respect of which such use could take place or the field of actual
purchases but also the fact that the trade mark
may be used in
association with descriptive matter."
[57] In
paragraph 12.8.4, under the heading "notional user", the
learned authors state:
"The
English courts have adopted the view that the manner in which the
respective parties have actually used the marks in question
is not
the determining factor in deciding whether there is a probability of
deception or confusion in infringement proceedings;
what is a
determining factor is how they can use the marks provided only it is
used in a fair and normal manner."
And
further:
"In
accordance with this doctrine the fact that the defendant has used
the mark upon goods of a particular quality and has
sold them in a
particular market at a particular price is irrelevant, so also the
fact that the plaintiff has used the registered
marks on goods of a
different quality and has sold them at a different price in a
different market.
What is relevant
is the fact that the plaintiff, as registered proprietor, is entitled
to use his mark upon goods of the same quality
to be sold at the same
price in the same market, and it is this fact that the court must
take into account in considering the likelihood
of deception or
confusion.
" (Emphasis
added.)
[58] The
learned authors state that the doctrine was first adopted in South
Africa in 1974 and thereafter applied in a number of
decisions.
I do not propose dealing with more of those particulars.
[59] In
paragraph 12.23 the learned authors consider,
inter
alia
, the requirement "that the
goods or services must be so similar to those in respect of which the
mark is registered that in
such use there exists the likelihood of
deception or confusion".
The
learned authors also deal with
Danco
and then they refer to
New Media
Publishing (Pty) Ltd v Eating Out Web Services CC and another
[2005] ZAWCHC 20
;
2005 5 SA 388
(C) where the learned Judge says the following at
394D-H:
"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
.
"
(Emphasis added.)
In this
regard, of course, the marks relating to the present case are
identical. Consequently, as a general proposition, if
the
approach of the learned Judge is correct, the fact that the marks are
identical should bolster a case for confusion and similarity,
rather
than militate against it.
[60] In
Eating
Out
, the learned Judge, at 394F-G, quotes the learned authors,
Webster and Page
,
op cit
as stating the following with
reference to section 34(1)(b) of the Act:
"On 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."
This
passage is quoted by the learned authors themselves at 12-42.
The
passage in
Eating Out
is also quoted with approval in
Mettenheimer
v Zonquasdrif Vineyards
2014 2 SA 204
(SCA) at 209D F.
[61] With
regard to the factors to be taken into account in an effort to
determine whether or not there is similarity between the
goods, a
case often referred to is that of
British Sugar plc v James
Robertson & Sons Ltd
[1996] RPC 281
where the learned Judge,
at 296-297, proposes that the following factors may be relevant in
considering whether or not there is
similarity:
"(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 acts of service;
(d) the respective trade 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
enquiry 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."
The
learned authors,
Webster and Page
,
paragraph 12.23 p12-41, criticise the approach of the English Judge
in the sense that he appears to regard the question of the
similarity
of goods as being wholly independent of the particular mark.
The learned authors, as I have already pointed out,
argue that the
test cannot be applied to the degree of similarity between the goods
or services without having regard to the degree
of similarity between
the marks. They also argue that the learned English Judge did
not appear to take due account of the
British Act itself which
"requires the court to determine whether there is a likelihood
of confusion arising from the combined
effect of the similarity
between the marks and similarity between the goods or services in
question and that the degree of similarity
in each respect may well
affect the question of whether their combined effect is to produce a
likelihood of confusion or deception".
It is
perhaps appropriate, then, to consider the factors listed in
British
Sugar
against the background of the
remarks of criticism made by the learned authors: it seems to me that
the evidence of Kretz, on behalf
of the appellant, already quoted in
greater detail above, is informative on this subject and it is also,
as explained, to a large
extent undisputed. The appellant has
extensively used its mark in South Africa for many years. Its
goods are items
of fashion, particularly intended for and aimed at
women. Its goods are stocked in and sold through various retail
outlets
and fashion orientated stores. Normally its goods are
sold in relative close proximity to competitive brands. Such
retail outlets also frequently stock and sell cosmetics and
fragrances. Articles of clothing such as those of the
appellant,
as well as cosmetics and fragrances, all constitute items
of fashion. Such items are mostly used by women. They go
hand in hand with a person's appearance. These items of fashion
compliment each other and are often sold in close proximity
to each
other in the same retail outlet. Importantly, the appellant's
goods can notionally be sold in any fashion outlet,
including stores
such as Edgars, Truworths and others where cosmetics and fragrances
are located and sold in close proximity to
clothing and other
garments.
Kretz
goes on to submit that the respective uses of the respective goods
are similar and overlap in that they are likely to be used
as items
of fashion to improve a person's appearance. He suggests that
the respective users of the respective goods are the
same in that
such use would be made by people wishing to improve their appearance
"and mostly women". With these
submissions I find
myself in respectful agreement.
Kretz
then goes on to suggest that the physical nature of the goods "is
that they are both applied to the human body to affect
a person's
appearance or physical nature and are notionally sold in close
proximity to each other". It is not clear
whether the
learned English Judge, in
British Sugar
,
when stating that the "physical nature of the goods" is a
factor relevant when considering whether or not there is similarity,
meant that the test in this regard is whether the physical nature of
the goods are the same or similar. On this narrow
interpretation,
I cannot agree with Kretz that the cosmetics and the
clothing are physically similar. The learned Judge of Appeal,
in
Danco
,
at 860G H, also said, correctly in my respectful view, that the
goods are widely divergent in nature. The learned Judge
in
Danco
, of
course, did not have the benefit of considering
British
Sugar
, which was reported well after
Danco
.
On the broader approach evidently propagated by Kretz, namely that
"the physical nature of the goods is that they are
both applied
to the human body to affect a person's appearance", there may be
a, somewhat tenuous, case to be made out for
an argument, if that is
what Kretz has in mind, that the physical nature of the goods are
similar in that sense. However,
it seems to me that such an
approach would be artificial and unconvincing.
Perhaps more
persuasively, Kretz argues that the respective trade channels through
which the goods reach the market also notionally
overlap. In
this regard, Kretz also relies on the following remarks by the
learned Judge of Appeal in
Danco
at 861C-E:
"It
was a matter for comment that there was no evidence of actual
deception or confusion – but since there were no side
by side
sales of the respective commodities this is hardly surprising.
According to the evidence the respondent did not market
its deodorant
product through the retail channels being utilised by the appellant.
Having
regard to the evidence relating to the nature of the goods (the
appellant's clothing and the respondent's cosmetics), their
respective use, and the trade channels through which the appellant's
and the respondent's goods can
notionally
be retailed, the likelihood of deception or confusion amongst a
substantial number of persons has, in my opinion, been established
on
the probabilities." (Emphasis added.)
Against
this background, I find myself in respectful agreement with the
submission of Kretz, particularly if one constantly bears
in mind the
principles flowing from the doctrine of notional use.
It seems
to me that the same remarks should apply to the learned English
Judge's factor (e), dealing with the self-service consumer
items and
where the competing goods are likely to be found with reference to
the same or different shelves. At least notionally,
which is
the relevant consideration, it would seem that a case for similarity
is made out.
Finally,
Kretz turns to factor (f) in
British
Sugar
, dealing with the extent to which
the respective goods or services are competitive. The learned
English Judge appears to
qualify this by linking the enquiry to trade
classification and whether or not the goods would be found in the
same or different
sectors. Kretz submits that the goods are
competitive "in that it is an often (
sic?
)
occurrence for manufacturers of, for example, clothing brands to
extend its product lines to also include other items of fashion
such
as cosmetics and fragrances". In this regard Kretz relies
on the uncontested evidence of Ms Castleman, which
I earlier
described in detail and will not repeat. In the light of
the evidence of Ms Castleman, and the application
of the doctrine of
notional use, and, finally, the manner in which the English Judge
appeared to qualify his proposed factor (f)
relating to the
competitiveness of the goods, it appears that there is merit in the
submissions of Kretz. Against this background,
it seems to me
that a conclusion that a case has been made out for similarity in the
present instance would not be inappropriate.
I am also of the
view that such a conclusion must be fortified by the application of
the doctrine of notional use and that the
issue of similarity and the
likelihood of confusion must be determined from the combined effect
of the similarity between the marks
and similarity between the
goods. For the apparent failure by the learned English Judge to
take the latter aspect into account,
he was duly criticised,
as I pointed out, by the learned authors
Webster
and Page
.
[62]
I return to
Danco
.
[63]
At 860G-861C the learned Judge of Appeal says the following:
"Cosmetics and clothing, being goods accommodated
in different classes on the register, are indeed goods of a widely
divergent
nature. According to the appellant the link between
these classes of goods is established by a variety of
considerations.
Clothing, on the one hand, and cosmetics,
toiletries, perfumery and sun-tan preparations, on the other, are
sold, according to
the undisputed evidence, in close proximity,
through the same trade channels such as large departmental and
clothing stores, of
which Edgars and Truworths are examples. In
addition, several prominent and knowledgeable persons in the trade
have deposed
that customers in retail outlets of this sort would as a
matter of course associate a mark on cosmetics with the identical
mark
on well-known and popular brands of clothing; and that the
appellant's mark was indeed well-known and popular on clothing in
1985.
This is a trend which began with prestige goods, and
which has been adopted by a number of manufacturers of more popular
brands
of clothing who now market cosmetics, perfumery and the like
under the same brand names as their clothing. Cohen then
states:
'It
is my experience that, resulting from the above trend, the public now
associate a particular brand of cosmetics, perfumery,
toiletries or
sun-tan preparations with clothing bearing the same trade name.'
This
assertion was neither contradicted or qualified."
[64]
Before us, Ms Cirone for the respondent argued that the present
matter is distinguishable from
Danco
.
She said that in
Danco
the court found that the appellant's trade mark had a substantial
reputation in clothing. She submitted that this was the
starting point from which the court proceeded to determine likelihood
of deception or confusion as to the source or origin of the
goods.
She submitted that
Danco
is distinguishable from the present matter on the basis that it was
decided prior to the promulgation of the (current) Act.
The Old
Act did not afford, according to her, protection to well-known trade
marks. She submitted that
Danco
sought to protect proprietors of well-known trade marks. She
relied on the same passage from the judgment, from 860H onwards,
which I have quoted. She argued that the court held in
Danco
that the proprietor of a well-known Class 25 trade mark was, on the
strength of the well-known status of the mark, able to impede
the
registration of a similar or identical Class 3 trade mark on the
basis that there would be confusion. She argued that
this is
because of the "trend" that well-known fashion clothing
manufacturers also market perfumes and cosmetics.
Because, so
it was submitted, the present appellant did not make out a case that
its CHANTELLE mark is well-known, the judgment
in
Danco
is distinguishable.
[65] In
his judgment now under attack, the learned Registrar quoted the
submissions made before him by counsel for the respondent
(then the
applicant for registration of a trade mark) and adopted that
reasoning as correct.
[66] I
am not persuaded that this argument offered by the respondent, and
adopted by the learned Registrar, is correct.
Firstly,
and inasmuch as it may be relevant, which I consider not to be the
case, there is, in my view, no compelling support on the evidence
for
Ms Cirone's argument that "the appellant has not made
out a case that its CHANTELLE trade mark is well-known".
Kretz, as I have pointed out, offered the following evidence which is
largely undisputed: he is the chairman and executive officer
of the
appellant. The appellant designs, manufactures and markets
lingerie brands throughout the world. The garments
are
specifically designed and aimed at women. The appellant has
been dedicated to creating these quality items of clothing
to enhance
a woman's beauty and self-image for more than a hundred years.
The appellant has been in business since 1876.
It is the
world's largest intimate apparel company with a rising turn-over of
some 380 million Euro in 2007. Kretz has
personal
knowledge of all this, speaks with authority and has been
with the appellant since 1985. The appellant's
mark is used
throughout many countries world-wide, including South Africa.
The appellant has extensively used its CHANTELLE
mark in South Africa
for many years. Supporting evidence, in the form of the
Waterfront boutique's documents, was submitted.
The appellant's
CHANTELLE goods are stocked in and sold through various retail
outlets and fashion orientated stores.
In the
face of this evidence, the learned Registrar, in his or her judgment,
said the following:
"In
this instance currently before the Tribunal the Opponent could not
adduce evidence of its alleged involvement in the design,
manufacture
and marketing lingerie for more than 100 years. As such the
Tribunal could not find the Opponent's mark to be
well-known, so as
for the principles in the
Danco
case to also be applicable to this case."
In my
view, this remark represents a clear misdirection on the part of the
learned Registrar considering the unequivocal and undisputed
evidence
of Kretz on the point.
In any
event, the
onus
,
as I will illustrate, is on the respondent to dispel the likelihood
of confusion amongst consumers.
Secondly,
the argument offered on behalf of the respondent,
as I understand it, fails to take the doctrine of the notional user
into account,
either properly or at all. I have dealt with
this doctrine at some length, but may be permitted to revisit the
following
words of the learned authors (paragraph 12.8.4):
"In
accordance with this doctrine the fact that the defendant has used
the mark upon goods of a particular quality and has
sold them in a
particular market at a particular price is irrelevant, so also is the
fact that the plaintiff has used the registered
marks on goods of a
different quality and has sold them at a different price in a
different market. What is relevant is the
fact that the
plaintiff, as registered proprietor, is entitled to use his mark upon
goods of the same quality to be sold at the
same price in the same
market, and it is this fact that the court must take into account in
considering the likelihood of deception
or confusion."
I also take
the liberty, recognising that I may be neglecting the ever present
requirement of brevity in the circumstances, to revisit
the words of
the learned Judge of Appeal in
Danco
at 860B-C:
"Such
use, it is trite, does not have to be actual. For purposes of
the comparison use of the trade mark by both parties
concerned is
postulated. The issue is whether such a postulated normal and
fair use by the respondent of the trade mark 'French
Connection' in
relation to a range of cosmetics would be likely to cause confusion
or deception when compared with a notional use
by the appellant of
the trade mark 'French Connection' in connection with items of
clothing ... It is equally trite that
the deception or
confusion must be in regard to the source or origin of the respective
goods."
While at it,
and still paying only lip-service to the requirement of brevity, I
revisit the following words of the learned Judge
of Appeal at 861D:
"It
was a matter for comment that there was no evidence of actual
deception or confusion – but since there were no side
by side
sales of the respective commodities this is hardly surprising.
According to the evidence the respondent did not market
its deodorant
product through the retail channels being utilised by the appellant."
Ms Joubert for
the appellant also referred us to the following remarks by the
learned Judge in
Kahn's Chemical Industry CC v Unilever plc
2004 BIP 107 (RTM) at 109C F, with the learned Judge acting as
the Registrar of Trade Marks:
"The
dispute between the parties is whether the applicant's mark is so
similar to the opponent's mark 'that the use thereof
in relation to
goods ... in respect of which it is sought to be registered and which
are the same as or similar to the goods ...
in respect of which such
trade mark is registered, would be likely to deceive or cause
confusion' (section 10(14) of the Act).
The wording of this
subsection does not require any party to prove extensive use.
The manner or extent of use of marks by
the respective parties would
only be relevant should it have a bearing on a finding as to whether
or not there is a likelihood
of deception or confusion as to the
origin of the goods. In one case it may carry much weight but
may be wholly irrelevant
or of very slight insignificance in
another. The premise is that each party uses its mark in a
normal and fair manner.
Whether or not contesting marks could
likely deceive or cause confusion is a matter of fact to be decided
on the facts of each
particular case. It is common cause
that the applicant bears the
onus
of proof to satisfy this tribunal that there is no reasonable
probability of deception or confusion and that the mark is therefore
registrable."
Against
this background, it seems to me that the main thrust of the
respondent's argument, namely that the appellant had failed
to make
out a case that its trade mark is well-known, is in any event of
little or no consequence.
While the
learned Registrar, in the judgment under consideration, remarked only
fleetingly (record pp98 and 99) to the fact that
the appellant's
(then the Opponent's) counsel alluded to the issue of notional use,
the learned Registrar took this no further
and never dealt with this,
what I consider to be, important subject in the judgment. In my
view, this is another material
misdirection on the part of the
learned Registrar. Perhaps not surprisingly, paragraph 1.4 of
the notice of appeal reads
as follows:
"In
this regard, the Registrar failed to have regard to the normal and
fair use both the appellant and the respondent may make
of their
respective trade marks, as he was required to do. The Registrar
specifically erred in having regard to the manner
in which the
respective parties' goods were in fact marketed and sold, rather than
the notional use that could be made of these
goods."
Thirdly,
as the learned Judge pointed out in
Kahn's
Chemical Industry
, the wording of
section 10(14) does not require any party to prove extensive use.
Indeed, that
issue may come into play in proceedings under section 10(17) which
did not come before us, and where the requirement
of deception and
confusion is also dispensed with.
Fourthly,
while the learned Judge of Appeal, in
Danco
,
did indeed make reference to well-known and popular brands of
clothing he did not single out these aspects in his conclusionary
remarks at 861E, which I am also taking the liberty to revisit:
"Having
regard to the evidence relating to the nature of the goods (the
appellant's clothing and the respondent's cosmetics),
their
respective use, and the trade channels through which the appellant's
and the respondent's goods can
notionally
be retailed, the likelihood of deception or confusion amongst a
substantial number of persons has, in my opinion, been established
on
the probabilities." (Emphasis added.)
[67] In
the circumstances, I am not persuaded that the principles laid down
in
Danco
are distinguishable from the present case.
Brief
remarks about the issue of confusion
[68] Ms
Joubert, for the appellant, pointed out that it has been held that it
is not necessary that the deception or confusion created
by the
similarity of the marks be more than momentary. Proof of the
likelihood of initial confusion, even though it is capable
of being
cleared up, is sufficient –
International
Power Marketing (Pty) Ltd v Searles Industrials (Pty) Ltd
1983 4 SA 163
(TPD) at 170A-B.
[69] Ms
Joubert also referred us to the following passage from
Orange
Brand Services v Account Works Software
[2013] ZA SCA 158
(22
November 2013) at paragraph [13]:
"...
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 may later be cleared up."
[70] In
paragraph 7.2 of their work, the learned authors
Webster and Page
state:
"The
deception or confusion need last only a fraction of time and only one
of the persons involved need be deceived or confused.
In
practical terms this means that proof of the likelihood of initial
confusion, even though it is capable of being cleared up,
is
sufficient."
[71] An
argument offered on behalf of the respondent, on the issue of
confusion, was that the appellant's goods, protected by its
Class 25
mark, cannot be described as "clothing". It was
argued that it would rather be "underwear, undergarments
and
swim-wear" but not clothing.
The very
classification of the appellant's goods in terms of its Class 25
registration describes the "girdles, braziers, articles
of
underclothing and swim-suits" as articles of clothing.
Despite this, the learned Registrar adopted the argument of
the
respondent and found that the goods are "not clothing".
In my view this is a clear misdirection on the part
of the learned
Registrar. At coastal resorts and swimming areas, for example,
one finds people walking around all day, doing
shopping and embarking
on other activities, in their swimming outfits and swimming trunks.
In the
Concise Oxford Dictionary
,
p176, "clothes" are defined as "things worn to cover
the body and limbs". "Clothing" is "clothes
collectively".
[72] In
all the circumstances, and on the weight of the evidence, I have come
to the conclusion that it is likely that the average
observant
consumer of the appellant's goods, stumbling upon the respondent's
cosmetics, bearing the identical mark, notionally
in the same shop
and notionally a few counters away, would be confused and deceived
into believing, albeit perhaps momentarily,
that the cosmetics of the
respondent originate from the same source as the clothing of the
appellant. The fact that the appellant's
products consist of
lingerie and swim-wear, as opposed to "outer" garments,
would, in my view, make no difference to
this incidence of confusion
and deception.
The all
important issue of
onus
[73] On behalf
of the appellant we were referred to the following passage in
Accurate Watch Co v Accurist Watches Ltd
2004 BIP 115 (RTM) at
117B-C:
"The
applicant has the
onus
of proving that a trade mark qualifies for registration. If
there is any doubt whether the mark should be registered, the
application should be refused. What the applicant has to
establish is that there is no reasonable probability, ie no
likelihood,
of consumer deception or confusion."
-
See also the
Upjohn Co v Merck and
another
1987 3 SA 221
(TPD) at 224C-I.
[74]
The learned authors,
Webster and Page
, put it as follows in
paragraph 6.6.7:
"There is an
onus
upon the applicant seeking
registration to satisfy the Registrar that there is no reasonable
probability of confusion or deception.
If
the Registrar is left in doubt on the issue of likelihood of
deception or confusion it is his duty to refuse registration."
-
The relevant authorities are in the footnotes on p6-16.
[75]
While the
onus
in proceedings for the registration of a mark rests upon the
applicant for registration to negate the reasonable possibility of
confusion with marks already in use (like here, and as stated also in
Danco
at
860D) the learned Judge of Appeal, in
Danco
,
points out that in subsequent proceedings for the expungement of a
mark the
onus
rests upon the applicant for expungement (like in
Danco
).
That, of course, does not apply in the present instance, but the mere
fact that the appellant in
Danco
,
applying for expungement, succeeded in discharging the
onus
under what I have found to be comparable circumstances, could suggest
that the present respondent could have a difficult
onus
to discharge in its quest to prove the contrary.
[76] The
learned Registrar, in the judgment under discussion, failed to apply
these relevant principles relating to
onus
at all. His or her conclusionary finding that "the
Opponent (read appellant) failed to prove that the applicant's (read
respondent's) application was in breach of the provisions of section
10(14) of the Act" is clearly wrong. This is another
material misdirection on the part of the learned Registrar which, in
my view, together with the other misdirections I have listed,
would
enable this court to interfere with the judgment of the learned
Registrar.
Conclusion
[77] In
view of the aforegoing, I have come to the conclusion that the
respondent failed to discharge the
onus
of proving that there is no reasonable probability of confusion or
deception in this particular case.
[78] At
the very least, I am of the view that the Registrar, on a proper
consideration of the case, should have been left in doubt
on the
issue of likelihood of deception in which case it was his or her duty
to refuse registration in any event.
[79]
In the result, the appeal ought to succeed.
The
order
[80]
I make the following order:
1.
The appeal is upheld with costs.
2. The order of the Registrar of Trade Marks is set
aside and replaced with the following:
"(i)
the opposition to the application for registration is upheld;
(ii)
the application for registration of the subject trade mark is
refused;
(iii) the trade mark applicant is
ordered to pay the costs of the opposition."
W
R C PRINSLOO
JUDGE
OF THE GAUTENG DIVISION, PRETORIA
A743-2013
I
agree
M
F LEGODI
JUDGE
OF THE GAUTENG DIVISION, PRETORIA
I
agree
C
PRETORIUS
JUDGE
OF THE GAUTENG DIVISION, PRETORIA
HEARD
ON: 18 MARCH 2015
FOR
THE APPELLANT: Ms I JOUBERT
INSTRUCTED
BY: SPOOR & FISHER
FOR
THE RESPONDENT: Ms P CIRONE
INSTRUCTED
BY: ADAMS & ADAMS