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[2014] ZAGPPHC 112
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Aloe Vera of America INC v Tiasho Pharmaceutical CO.Ltd (39872/2013) [2014] ZAGPPHC 112; 2014 BIP 166 (GP) (14 March 2014)
IN THE HIGH COURT OF SOUTH AFRICA
[GAUTENG DIVISION, PRETORIA]
CASE NUMBER: 39872/2013
In
the matter between:
ALOE
VERA OF AMERICA
INC
........................................................................
Applicant
And
TIASHO PHARMACEUTICAL CO.
LTD
.......................................................
Respondent
DATE OF HEARING: 06 March 2014
DATE OF JUDGMENT: 14 March 2014
JUDGMENT
CILLIERS AJ
[1]
The Respondent, a corporation organised
and existing under the laws of Japan brought trade mark applications
numbers 2009/207770-1
in classes 5 and 32, in terms of the provisions
of Sections 10(12) and 10(14) of the Trade Marks Act, 194 of 1993
(“the Act").
The Respondent’s business was founded
in 1912 in Japan and it is centered around the development,
manufacture and commercialisation
of pharmaceutical and
health-related products. The Respondent's business is global and the
device used in the present trade mark
application is featured on the
Respondent's website. The Respondent’s trade mark device is
used in numerous jurisdictions
worldwide.
[2]
The Applicant opposed the trade mark
applications and the opposition thereof was referred to this Court by
the Registrar of Trade
Marks in terms of the provisions of Section
59(2) of the Act.
Factual background
[3]
The Applicant is an American company.
[4]
The Applicant aims to provide natural
products, based on aloe vera and other natural elements, which
promote health, wellness and
vitality. These products include
nutritional and weight-management products, beauty products and
health rings. The Applicant predominantly
markets these products on a
device trade mark that depicts an eagle.
[5]
The distributor of the Applicant’s
products in South Africa, inclusive of those products marketed under
the Applicant’s
registered trade mark is Forever Living
Products South Africa (Pty) Ltd - a South African company.
[6]
The Applicant is the proprietor in South
Africa of the device trade mark in a number of classes and in
relation to various goods
and services. They include:
(i)
Under registration number 2007/00068 in
class 5,
Eagle device in respect of the following goods:
“Pharmaceutical veterinary and sanitary
preparations; dietetic substances adapted for medical use, food for
babies; plasters,
materials for dressings; material for stopping
teeth, dental wax/disinfectants/preparations for destroying vermin;
fungicides,
herbicides”;
(ii)
Under registration number 2007/00070 in
class 32,
Eagle device in respect of the following goods:
“beers, mineral and aerated waters and
other non-alcoholic drinks; fruit drinks and fruit juices; syrups and
other preparations
for making beverages;
[7]
The Applicant’s trade mark
registrations were effective from 2 January 2007.
[8]
The Respondent’s application for
registration of device trademarks are the following:
(i)
Trademark application number 2009/20770,
in class 5 Eagle device in respect of the following goods:
"pharmaceutical preparations; medicinal
drinks; tonics [medicines
]/
vitamin preparations; nutritional
preparations for medical use; nutritional additives for medical
purposes; nutritional supplements
for medical purposes; food
supplements for medical supplements; drugs for medical purposes;
dental material; bracelets for medical
purposes; oiled paper for
medical purposes; sanitary masks; pharmaceutical wafer; gauze for
dressings; capsules for pharmaceutical
purposes; capsules for
medicines; eye patches for medical purposes; ear bandages;
incontinence diapers; semen for artificial insemination;
menstruation
bandages; menstruation tampons; sanitary napkins; menstruation pads;
sanitary pads; sanitary panties; sanitary nickers;
menstruation
nickers; absorbent cotton; absorbent wadding; lacteal flour for
babies; lactose [milk sugar]; fly catching paper;
adhesive plaster;
court plaster; sticking plasters; bandages for dressing; collodion
for pharmaceutical purposes; mothproofing
paper; breast-nursing pads;
dietetic foods adapted for medical purposes; dietetic beverages
adapted for medical purposes. ”;
and
(ii)
Trademark application 2009/20771, in
class 32 Eagle device in respect of the following goods:
“carbonated drinks [refreshing
beverages]; isotonic beverages; nonalcoholic beverages;
energising beverages; fruit drinks
and fruit juices; weigh beverages;
vegetable juices [beverages], "
[9]
The Respondent’s trade mark
applications were advertised for position purposes in the Patent
Journal on 24 November 2010.
[10]
The Applicant acquired a significant
reputation and goodwill in its Eagle device trade mark through the
use made of the Eagle device
trade mark by the Applicant and by its
distributor within the Republic of South Africa i.e. Forever Living
Products South Africa
(Pty) Ltd.
[11]
It is not contested that the Applicant
is a multi-billion dollar operation on a global scale, that is has
five branches in South
Africa with over 500 000 authorised
distributors, that it had reached consumers on a large scale and have
become well-known in
many countries all over the world, and that the
sales figures during the relevant time when the
Respondent’s trade mark applications were filed in October 2009
amounted to
over R214 000 000.
[12]
The Applicant’s Eagle device trade
mark and the Respondent’s Eagle device trade mark for which it
applied for registration
have the following appearance when viewed
directly adjacent to one another:
[13]
The applicant, in my view, clearly is an
interested person, being a person having some real and direct
interest in the mark itself
or in the subject matter of an opposition
referred to in Section 10 of the Act.
[1]
The provisions of Section 10(12) and
Section
10(14)
of the
Trade Marks Act, 194 of 1993
[14]
Section 10(12) of the Act provides that
a mark which is inherently deceptive or the use of which would be
likely to deceive or cause
confusion, is contrary to law, is contra
bonos mores or is likely to give offence to any class of persons
shall not be registered.
[15]
Section 10(14) of the Act, in relevant
part reads as follows:
"(10) 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. ”
[16]
It is evident from the above provisions
of Section 10(12) of the Act and Section 10(14) of the Act that the
pivotal question to
be decided is whether the Respondent’s
proposed Eagle device would be likely to deceive or cause
confusion. This is so because the ultimate
function of a trade mark is to be a source of identification.
[17]
The onus of proving that there is no
likelihood of consumer deception or confusion is on the appellant who
is seeking such registration.
In the present matter this onus rests
on the Respondent.
[2]
[18]
The approach to be followed in
determining the degree of similarity between the respective trade
marks and the likelihood that the
registration of the proposed trade
mark would give rise to consumer deception or confusion was stated as
follows:
“The similarities and differences in the
two marks, an assessment of the impact which the Defendant’s
mark would make
upon the average type of consumer who would be likely
to purchase the kind of goods to which the marks are applied. This
notional
customer must be conceived of as a person of average
intelligence, having proper eye sight and buying with ordinary
caution. The
comparison must be made with reference to the sense,
sound and appearance of the marks. The marks must be viewed as they
would
be encountered in the market place and against the background
of relevance surrounding circumstances. The marks must not only be
considered side by side but also separately. It must be borne in mind
that the ordinary purchaser may encounter goods, bearing
the
Defendant’s mark, with an imperfect recollection of the
registered mark and due allowance must be made for this. If each
of
the marks contains a main or dominant feature or idea the likely
impact made by this on the mind of the consumer must be taken
into
account. As it has been put, marks are remembered rather by general
impressions or by some significant or striking feature
then by a
photographic recollection of the whole. And finally consideration
must be given to the manner in which the marks are
likely to be
employed as, for example the use of name marks in conjunction with
the generic description of the goods. ”
[19]
The likelihood of deception or confusion
is accordingly the jurisdictional fact for putting a bar on the
registration of a trade
mark.'''
[20]
The determination of the presence of the
above jurisdictional fact involves a value judgment and the ultimate
test is 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. Likelihood refers to a reasonable probability, in
contradistinction
to a reasonable possibility.
[3]
[21]
In considering the likelihood (or
reasonable probability) of deception or 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 used and that
registered trade marks do
not create monopolies. The issue regarding
the creation of monopolies was recently convincingly explained in
this
Q
division :
"The importance of only claiming
protection in classes in which the Applicant actually intends to
function is under lied by
an anti-monopoly policy. In modern times
South Africa and countries with comparable intellectual property
rights have sought to
limit monopolies. This is because monopolies
are in principle anticompetitive and contrary to the generally
excepted principles
of a free economy. As we know all intellectual
property rights are granted for a limited period only. In terms of
Section 37(1)
of the Act the registration of a trade mark is for a
period of ten years from the date of fding of the application for
registration
and thereafter the registration can be renewed for
periods of ten years. In South Africa there has been a marked trend
to limit
anti-competitive practices. This is evident from a body of
statues and regulations regulating this field. ”
[22]
The concepts of confusion or deception
refer to the notion that someone believes something that is false or
incorrect in that bewilderment,
doubt or uncertainty is caused.
[4]
Confusion or deception is present when there is a probability that a
substantial number of persons will be deceived into thinking
that the
respective products are the same or that a material connection exists
between the respective products.
[5]
[23]
The reasonable likelihood of deception
or confusion of the respects of sense, sound and appearance are to be
considered and the
presence of any one of these aspects will suffice
to give rise to deception or confusion and would be sufficient for a
finding
that the proposed trade mark is likely to give rise to
deception or confusion.
[6]
[24]
In the aforesaid regard it bears
emphasis to make it plain that it is not
incumbent on the holder of the trade mark to
show that every person
interested or concerned in the class of goods
for which his trademark has
been registered would probably be deceived or
confused. It is sufficient if the
probability is established that a substantial
number of such persons will be
12
deceived or confused.
[25]
The present application amounts to
so-called “registration proceedings", in contradistinction
to so-called ‘'infringement
proceedings’*. In
registration proceedings it is to be considered what the Applicant in
the application for registration
of the trade mark (the present
Respondent) will be permitted to do if registration is granted and
not what the Respondent has done
or what he intends doing.
[7]
The comparison to be undertaken in the present proceedings is one
solely between the registered trade mark and the mark as applied
for
by the Respondent.
[8]
[26]
In applying the above principles it is
the general impression/idea conveyed by the mark which must be
considered in the process
of valuing the reasonable likelihood of
deception or confusion
[9]
In applying this the dominant features of the competing trade marks
play a decisive role in the test for whether or not they are
capable
of co-existence
[10]
and the proper approach for the Court is to transport itself
notionally from the Court Room to a particular market place and to
place itself in the position of those who
17
buy the products under competing marks.
The application for registration
[27]
The starting point for an assessment of
similarity must be with reference to
18
the classification system itself.
[28]
The Respondent’s trade mark
application 2009/20770 Eagle device is in class 5 and the Applicant
is the registered proprietor
under trade mark registration 2007/00068
Eagle device in class 5. The Applicant’s registration under
number 2007/00068 is,
in the following respects similar to the
Respondent’s trade mark application number 2009/20770 in class
5:
“pharmaceutical”, "sanitary
preparations"; “dietetic substances"; "dental
materials
[29]
The Respondent’s proposed trade
mark application 2009/20771 Eagle device in class 32 coincides in the
following respects with
the Applicant’s trade mark registration
number 2007/00070 Eagle device in class 32:
“beverages”, including mineral and
aerated waters and other non-alcoholic drinks, fruit drinks and fruit
juices.
[30]
In applying the reference to the
classification system itself as the starting point for an assessment
of similarity it is clear
that the Respondent can compete directly
with the Applicant in terms of its products.
[31]
In my view the aforesaid apparent
similarity and the fact that the Respondent can produce, market and
sell essentially the same
products in the same classes within the
Republic of South Africa is not conclusive of the determination of
the reasonable likelihood
of deception and confusion.
[32]
In the consideration of the reasonable
likelihood of deception and confusion it is also, in addition to
consideration of the classification
system, required to make a global
appreciation of the visual, oral or conceptual similarity of the
marks in question, based on the overall
impression given by the marks, bearing in mind, in particular, their
distinctive and dominant
components.
[11]
[33]
The Applicant contends that the
depiction of eagles in the Applicant’s registered trade mark
and in the Respondent’s
proposed trade mark is confusingly
similar in the following respects:
(i)
Both device marks clearly depict eagles;
(ii)
Both of the eagles depicted have
outstretched wings which reach upwards. The prominent wings of the
eagles depicted in each device
are an eye catching and dominant
feature of the marks;
(iii)
In addition to visual similarity, when
looking at the two devices in question and describing them, members
of the public are likely
to refer to both devices as eagle devices;
(iv)
As both devices depict eagles, they are
conceptually identical.
[34]
The Respondent contends as follows with
regards to a global appreciation of the visual, oral or conceptual
similarity of the marks
in question:
(i)
While both marks depict an eagle it is
clear on comparison of the marks that the manner in which the eagles
are represented is wholly
dissimilar;
(ii)
The Applicant’s Eagle device trade
mark depicts the profile of an eagle apparently taking flight, or
landing on a branch.
The eagle is depicted in a realistic, lifelike
manner and it is solid in colour and appearance, without any shading
or detail to
distinguish its physical features;
(iii)
The Respondent’s eagle device
trade mark is depicting an eagle facing forward, body bowed and head
turned to the side with
its wings symmetrically outstretched behind
its body. The device is depicted in a character style, with the
detail of its physical
appearance sharply featured.
[35]
In my view, and if this Court transports
itself notionally from the court room to the particular market place
in which the Applicant
and the Respondent operates and if it places
itself in the position of those who buy the products of the Applicant
and the Respondent
under competing marks, the visual and conceptual
similarity of the marks in question is not of such a degree of
similarity as to
give rise to the likelihood of consumer deception or
confusion. I have no doubt that the depictions of eagles, so
dissimilar as
it is in the present matter, will not lead to deception
or confusion of a significant number of consumers.
[36]
The ultimate function of a trade mark is
to be a source of identification and, in my view, the differences in
the visual or conceptual
similarity of the marks in question, viewed
both adjacent to one another and separately, are not such that there
is a reasonable
likelihood of consumer deception of confusion between
the marks and the products. Similarly, I am not of the view that a
reasonable
likelihood exists that the overall impression of consumers
would be that the origin of the products are the same or that a
connection
exists between the Applicant and the Respondent.
[37]
The above is, in my view so even if the
doctrine of imperfect recollection is taken into consideration.
[38]
The only similarity between the marks,
on a visual level, is that both marks depict an eagle. The Applicant
cannot claim a monopoly
on the use of an eagle - irrespective of the
manner in which it is depicted - within the classes in which the
applicant’s
trade mark device is registered. To hold otherwise
would, in my view, be tantamount to sanctioning the creating of a
monopoly by
the Applicant in this regard.
[39]
1 am accordingly in agreement with the
submission by counsel for the Respondent that this mere fact i.e.
that both marks depict
an eagle is simply not sufficient to render
the marks confusingly similar and that the Applicant is not entitled
to claim a monopoly
over every depiction of an eagle or a similar
large bird of prey.
[40]
In consideration of the oral similarity
of the marks in question the Applicant contends that members of the
public are likely to
refer to both devices as Eagle devices. There is
no evidence on the papers to support the contention, but for the
general contention
that both devices depict an eagle and that members
of the public may refer to both as Eagle devices.
[41]
In my view the visual dissimilarity
between the respective devices also, as a relevant factor to consider
in the consideration of
the global appreciation of the respective
trade marks, renders the above unlikely. Even if I am wrong in this
finding I have already
held that the Applicant is not entitled to
claim a monopoly over every depiction of an eagle or a similar large
bird of prey.
[42]
In the result, in my view, a global
appreciation of the visual, oral and conceptual similarity of the
marks in question, based on
the overall impression given by the
marks, bearing in mind, in particular their distinctive and dominant
components, cannot give
rise to a conclusion that a reasonable
likelihood of deception or confusion exists.
[43]
It follows that the application
must fail. In the result I make the following order: 1.
The application is dismissed;
2.
The Applicant is ordered to pay the
costs.
SIGNED AT PRETORIA ON THIS 14 DAY OF MARCH
2014.
Cilliers, AJ
Acting Judge of the High Court of South
Africa Appearances:
For Appellant: Adv.: L G Killmatrtin
Instructed by: Adams & Adams
For Respondent: Adv.: P Cirone Instructed
by: Spoor & Fisher
2
SmithKline Beecham Consumer Brands
(Pty) Ltd v Unilever Pic
[1995] ZASCA 26
;
1995 (2)
SA 903
(A) at 909G- 91 OH.
4
Plascon Evans Paints Ltd v
Van Riebeeck Paints (Pty) Ltd
1984 (3) SA
623A
at 631.
5
Cowbell AG v ICS Holdings
Ltd
2001 (3) SA 941
(SCA) at 947H.
7
Cannon Kabushiki Kiasha v Metro-Goldwin-Meyer
inc. (formerly Pathe
Communications Co.)
[1999] RPC 117
(ECJ) at para 28.
8
Foshini Retail Group (Pty) Ltd v
Jan Frederik Coetzee (unreported
judgment by the full bench in the North Gauteng High Court): Case no
A1/11, dated 18 January 2013.
12
Plascon Evans Paints v Van Riebeeck Paintis
(supra) at 640G-I.
17
Laboratoire Lacharte v Armour-Dial Inc
v Armour-Dial Inc 1976 (2)
(SA) 744 (T) at 746B.
18
Foshini Retail Group (Pty) Ltd v Jan Frederik
Coetzee (supra) at para
[27].
[1]
Central African Hotels (PVT) Limited
v Choice Hotels International
Inc. 2002 B1P 116 (TPD). This
decision was approved in Accurate Watch
Company v Accurace Watches Limited SAPJ June 2004 196 (RTM) at
200-201.
[2]
SmithKline Beecham Consumer
Brands (Pty) Ltd v Unilever Pic (supra)
at 909G-910H.
[3]
Cowbell AG v ICS Holdings Ltd (supra)
at 947I-H, read with the
Upjohn Company v Mercks and Another
1987 (3) SA 221
(T) at 224 and
SmithKline Beecham Consumer Brands (Pty) Ltd v Unilever Pic (supra)
at 912H.
[4]
John Craig (Pty) Ltd v Dupa Clothing
Industries
1977 (3) SA 144
(T)
at 150H.
[5]
John Craig (Pty) Ltd v Dupa Clothing
Industries (supra) at 151C
1
'
John Craig (Pty) Ltd v Dupa Clothing
Industries (supra) at 151 and
the authority cited therein.
[7]
Adcock Ingram v Cipla Metpro (265/2011)
[2012] ZASCA 39 (29 March
2012).
[8]
Placon Evans Paints v Van Riebeeck
Paints (supra) at 640G-I.
[9]
Registrar of Trade Marks v American
Cigarette Co.
1966 (2) SA 560
(A) at 576D-E.
[10]
Registrar of Trade Marks v American Cigarette
Co. (supra) at 576H.
[11]
Sable BW Puma AJ, Rudolf Dassler and
Dassler Sport [98] RPC 199
(ECJ) at 224.