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[2014] ZAGPPHC 371
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Brown v Edcon Ltd (39873/2013) [2014] ZAGPPHC 371; 2014 BIP 185 (GP) (13 May 2014)
IN
THE HIGH COURT OF SOUTH AFRICA
(GAUTENG
DIVISION, PRETORIA)
CASE NO: 39873/2013
DATE: 13 MAY 2014
In the matter
between:
JOEL
BROWN
…................................................................................................................................
Applicant
and
EDCON
LTD
…..................................................................................................................................
Opponent
JUDGMENT
FOURIE, J:
[1] The Applicant is
a businessman residing in the United Kingdom. He is the trade mark
Applicant for application 2010/09603-4 STONE-DRI
in classes 18 and
25. He is also the owner of Baker Street Clothing Ltd, a company duly
incorporated under the laws of the United
Kingdom. The opponent is
Edcon (Pty) Ltd, a South African company and a leading clothing,
footwear and textiles retailing group
trading through a range of
retail formats. The Opponent is opposing the Applicant’s
application for the registration of the
abovementioned trade mark.
[2] The Opponent is
the proprietor in South Africa of trade mark registration no.
1997/18423 STONE HARBOUR in class 25 in respect
of clothing, footwear
and headgear which was registered on 1 December 1997. According to
the Opponent it has acquired a significant
goodwill and reputation in
the mark STONE HARBOUR in South Africa in respect of goods falling
within the scope of those goods to
which the subject trade mark
application relates.
[3] The opposition
is based on
Sections 10(12)
and (14) of the
Trade Marks Act, 194 of
1993
. This opposition has been referred to this court by the
Registrar of Trade Marks in terms of
Section 59(2)
of ihe Act.
[4]
Section 10
provides that certain marks (referred to in the sub-sections) shall
not be registered as trade marks. In terms of sub-section (12)
that
is:
“
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;’’
According to
sub-section (14) such a mark is also:
“
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;"
[5] The grounds of
opposition brought under both
Sections 10(12)
and (14) turns on the
same question: Whether or not the mark that the Applicant seeks to
register is so similar to the Opponent’s
registered trade mark
that the use thereof, in relation to the goods in respect of which it
is sought to be registered, would be
likely to deceive or cause
confusion.
[6]
The test to be applied was set out by the Supreme Court of Appeal in
Cowbell AG v ICS
Holdings Ltd
2001(3)
SA 941 (SCA) at par 10 (with regard to
Section 17(1)
of the old Trade
Marks Act of 1963 which was similarly worded to Section 10(14) of the
present Act):
“
[t]he
ultimate test is, after all, as I have already indicated, whether on
a comparison of the two marks it can properly be said
that there is a
reasonable likelihood of confusion if both are to be used together in
a normal and fair manner, in the ordinary
course of business."
(par. 10 at p. 947.)
It
was also pointed out in the same judgment that
''likelihood"
refers
to a reasonable probability and the likelihood of confusion must be
appreciated globally and that
“
Global
appreciation of the visual, aural or conceptual similarity of the
marks in question, must be based on the overs
1
!
impression given by the marks, bearing in mind, in particular, their
distinctive and prominent components."
(par. 10 at p. 948.)
[7]
When comparing the two marks one should also bear in mind the
difference between
“
deception"
and
“
confusion
The
former means to cause someone to believe something which is false and
the latter means bewilderment, doubt or uncertainty
(John
Craig (Pty) Ltd v
Pupa
Clothing Industries
1977(3)
SA 144 (T) at 150H). The question of the likelihood of confusion or
deception is often a matter of first impression and
does not require
one to peer too closely at the registered mark and the alleged
infringement to find similarities and differences
(Puma
AG Rudolf Dassler Sport v Global Warming
(Pty)
Ltd
2010(2)
SA 600 (SCA) at par. 9). Also, in considering the question of
possible deception or confusion, proper allowance must be
made for
the imperfection of human recollection and perception
(John
Craig (Pty) Ltd v Pupa Clothing Industries (Pty) Ltd
,
supra,
at
153D-G). However, due regard must also be had to the dominant feature
of each of the marks in issue
(International
Power Marketing
(Pty)
Ltd v Searles Industrials (Pty) Ltd
1983(4)
SA 163 (T) at 168H). When comparing the two marks one should, as
observed by Colman i in
Labor
-
fofre
Ls
ch
artre
SA v Armour-Dia! Inc
1975(2)
SA 744 (T) at 74SD,
“
transport
(oneself), notionaily, from the courtroom or ihe study, to the market
place".
This
means that ana should try to look at the marks as they will be seen,
if they are both in fair and normal commercial use, by
the
hypothetical consumers of the goods concerned.
[8]
it was submitted on behalf of the Opponent that the marks
STONE-DRI
and
STONE HARBOUR
are
confusingly similar in both sight, sound and meaning. It was also
argued that the dominant feature of each of the marks is the
word
STONE'
and
that this is the most memorable feature of each mark. It was pointed
out that the word
“
STONE’,
when
used in relation to goods in classes 18 and 25, is unusual. There is
an absence of any natural association with the goods in
question that
makes this mark distinctive. Therefore, it was submitted that the
relevant consumer (being a person of average intelligence)
is likely
to be confused between the Applicant’s
STONE-DRI
mark
and that of the Opponent’s
STONE
HARBOUR
mark.
[9]
Although there was no appearance on behalf of the Applicant, he
pointed out in his Answering Affidavit that the only point of
similarity between the two marks is the word
"STONE’.
According
to him the use of the word
“
STONE"
is
common in the market place and in particular in the fashion and
clothing industry, in support of this submission he annexed register
page r rintouts obtained from ths Trade Marks Office reflecting
various trade marks incorporating the word “
STONE
,
including marks such as
STONE
COMFORT,
BLUE
STONE, STONE
ISLAND
and
STONEWASHED
(all
in class 25 and of different proprietors). According to the Applicant
it should therefore be evident from the register pages
that the word
“
STONE'
is
common to the fashion and clothing industry and is not associated
with the Opponent.
[10]
In my view the question to be decided is whether, on a comparison of
the two marks, there is a reasonable likelihood of confusion
if both
are to be used together in the ordinary course of business. A similar
question was considered by the Supreme Court of Appeal
in
Bata
Ltd
v Face
Fashions CC and Another
2001(1)
SA 844 (SCA). In that matter a company incorporated in Canada was the
proprietor of several trade marks including the word
“Power”,
registered in class 25 under the old Trade Marks Act of 1963. It was
alleged that the mark “Power House”
was likely to be
confused with the “Power” trade mark. In rejecting this
argument the court said the following (par.
10):
“
Counsel
for the appellant submitted that the common element in both marks,
the word 'Power', was likely io lead to confusion despite
the fact
that it is used in combination with the word ‘House’ on
the first respondent’s clothing, if full ef.'ect
is given to
this argument it would result in the appellant having
a
virtual monopoly
to use the word ‘Power’ on clothing. According to the
evidence, however, there are numerous trade marks
registrations in
South Africa in respect of clothing which incorporate or include the
word ‘Power’. It is an ordinary
word in everyday use, as
distinct from an invented or made-up word, and it cannot follow that
confusion would probably arise if
it is used in combination with
another word.”
[11]
In my view, the above
dictum
applies
with equal force to this application. If full effect is given to the
argument that the word
‘‘
STONE’
was
likely to lead to confusion, despite the fact that it is used in
combination with a different word (i.e.
“
HARBOUR’
as
opposed to “DR/”), it would result in the Opponent having
a virtual monopoly to use the word
“
STONE’
on
goods in respect of classes 18 and 25. Furthermore, according to the
evidence, there are various trade mark registrations in
South Africa
in respect of the fashion and clothing industry which incorporates
the word
‘
STONE’.
Also,
in this regard, it appears to be an ordinary word in everyday use in
distinction to an invented or made-up word. Therefore,
in my view, it
cannot follow that confusion would probably arise.
[12]
However, there is aiso another question to be considered. Viewing the
marks as a whole or looking at the dominant features
of each mark, is
it not likely that consumers might be confused or deceived into
believing that goods in respect of classes 18
and 25 bearing the
words
"STONE-DRT
have
a connection with the registered trade mark
“
STONE
HARBOUR
’
?
Put differently, as was also argued by counsel for the Opponent, is
it not likely that consumers might believe them to be
“
horses
from the same stable
”
?
The following
dictum
in
the
Bata
-judgment,
where a similar question was considered, is apposite in this regard
(par. 11):
“
in
my view, the common element of the Appellant’s and the First
Respondent’s marks is of minor significance when the
marks are
looked at as a whole. It is not possible to ignore the word ‘House’
in the First Respondent’s mark.
I have considerable difficulty
in imagining that the notional purchaser of the First Respondent’s
clothing would focus attention
only on the word ‘Power’.
The word ‘House’ is as significant as the word ‘Power
1
and the two words used together sufficiently distinguish the First
Respondent’s clothing from that of the Appellant.”
[13]
In my view the same principle applies to the present matter. When
both marks are looked at as a whole there is a significant
difference
I
T-tween
‘
"STOKE
HARBOUR'
and
“
STQKE-DRJ'.
Although
tha first word in both marks is the same, there is no similarity
between ‘
HARBOUR
”
and
"DRi”.
This
is aiso the distinguishing factor between the two marks. Furthermore,
according to the evidence presented by the Applicant
it appears that
the word
“
STONE”
is
commonly used in respect of various trade mark registrations.
Therefore, in my view, the average consumer would not be confused
or
deceived into believing that the goods concerned have a connection
with one another in the normal course of trade. I should
also mention
that as a matter of first impression I had considerable difficulty to
imagine, having regard to the dominant features
of each mark, that
there is a probability or likelihood of confusion.
[14]
In coming to this conclusion I did not lose sight of where the onus
lies. The onus of proving that there is no likelihood of
consumer
deception or confusion rests on the Applicant who is seeking such
registration
(Smithkline
Beecham Consumer Brands (Pty) Ltd v Unilever
1995(2)
SA 903 (A) at 910A-B). In my view the Applicant has discharged this
onus and for the reasons set out above, I am of the
view that there
is no likelihood of consumer deception or confusion. In the result
the application for registration must succeed.
[15] I make the
following order:
(a) The application
for registration of trade mark 2010/09603-4 STONE-DRI in classes 18
and 25 be and is hereby granted;
(b) The costs
for opposing the application shall be paid by the Opponent.
D S FOURIE
JUDGE OF THE HIGH
COURT
12 May 2014