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[2014] ZAGPPHC 361
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Unilever PLC v Kemtek (Pty) Ltd (48157/13) [2014] ZAGPPHC 361 (12 June 2014)
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
Case
Number: 48157/13
DATE:
12/6/2014
In
the matter between:
UNILEVER
PLC
APPLICANT
and
KEMTEK
(PTY) LTD
RESPONDENT
Coram:
HUGHES J
JUDGMENT
Delivered
on: 12 June 2014
Heard
on: 18 March 2014
HUGHES
J
1.
The applicant (opponent), Unilever PLC,
filed an opposition to a trade mark filed in terms of section 10 (14)
of the Trade Marks
Act 194 of 1993 (“the Act”), by Kemtek
(Pty) Ltd. This opposing application is brought in terms of section
21 of the
Act.
2.
The applicant is a British company that
globally manufactures and distributes fast-moving consumer goods in
the categories of food,
homecare, personal care, nutrition, health,
hygiene and beauty.
3.
Relevant to this case is the fact
that the applicant is the proprietor of the following trade mark
registrations:
3.1.
79/6706 FAIR & LOVELY Class 3 (registered on 12 December 1979) ,
specifications being:-
bleaching
preparations and other substances for laundry use; cleaning,
polishing, scouring, and abrasive preparations; soaps; perfumery,
essential oils, cosmetics, hair lotions, dentifrices included in this
class.
3.2.
92/08618 FAIR & LOVELY Class 3 (registered on 12 October 1992),
specifications being:-
soaps; perfumes,
essential oils, cosmetics, non-medicated toilet preparations, oils
creams and lotions for the skin, skin lighteners,
preparations for
the hair, dentifrices, anti-perspirants, deodorants for personal use.
Both
these trade mark registrations are endorsed “
Registration
of this trade mark shall give no right to the exclusive use of the
word FAIR and LOVELY separately and apart from the
mark.”
4.
The respondent (trade mark applicant), is a
Botswana incorporated company and is the proprietors in South Africa.
They have two
trade mark registration:
4.1
2005/21223 FAIR & CLEAR Class
5 (registered on 5 October 2005) specification being: -
Pharmaceutical and veterinary
preparations, sanitary preparations for medical purpose; 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.
4.2
2005/21222 FAIR & CLEAR Class 3
specifications being: -
bleaching
preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps, perfumery,
essential oils, cosmetics, hair lotions, dentifrices.
5.
The trade mark application being opposed by
the applicant is specifically in respect of the trade mark
application no. 2005/21222
FAIR & CLEAR in Class 3.
6.
A condonation application was filed by the
applicant due to the fact that the parties had agreed to several
extensions to the opposition
term and the respondent refused to agree
to a further extension beyond the 31 January 2009. The Registrar was
duly notified of
all these extensions. The respondent’s refusal
for a further extension was the reason the applicant sought
condonation and
a further extension. This condonation
application and further extension is not being opposed, as a result
an extension and
condonation of the opposition term is duly granted.
7.
The applicant contends that “FAIR &”
in its trade mark “FAIR & LOVELY” is the dominant and
distinctive
feature of its trade mark. Thus the use of “FAIR &”
by the respondent in its proposed trade mark “FAIR &
CLEAR”
will lead to deception and confusion. The applicant contends that
this is further compounded by the use of the conceptually
similar
words thereafter being “LOVELY” and “CLEAR”.
Besides these factors there is also the fact that
the two trade marks
“FAIR & LOVELY” and “FAIR & CLEAR”
are both visually and phonetically very
similar. Lastly, these two
trade marks, “FAIR & LOVELY” and “FAIR &
CLEAR” are both used in Class
3, that being for relatively the
same goods.
8.
The application is based on section 10 (14)
and for convenience and for easy reference I set out the section
below:
10.
Unregistered
trade marks
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:
(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 the 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.
9.
From a reading of the above section it is
clear that the
onus
lies with the respondent who seeks to register the trade mark to
prove, that there is no reasonable probability, that the proposed
trade mark would give rise to the likelihood of causing deception or
confusion with the consumer.
10.
The respondent’s case is that the two
trade marks, “FAIR & CLEAR” and “FAIR &
LOVELY”, are
not deceptive or confusingly similar. It submits
that the only common denominator between the marks is the word
“FAIR”.
It states that there are other marks that use the
word “FAIR” and “FAIR &”. Some examples
given by
the respondent are “
fairlady”
“fairtone” “skin fair”
“
fair & white” “fair
& handsome”
. The respondent
also contends that one has to compare the two marks visually,
phonetically, conceptually and take into account
that the “&”
symbol is not intrinsic to the applicants mark but merely descriptive
and as such it is devoid of
trade mark significances.
11.
The applicant argued that it was incorrect
for the respondent to say that the word “FAIR” was the
common denominator.
The applicant submits that it is the words “FAIR
&” that it contends is the dominant feature of its trade
mark.
It conceded that even though there was another trade mark
applicant that applied for the trade mark “FAIR & WHITE
PARIS”
under trade mark application number 2007/19101, this
application they intend to oppose. The crux of the applicant’s
discontent
lies in the use of “FAIR &” and this is
what it contends is the common feature that makes the two marks
visually
and phonetically similar. The proposed mark is in the same
class as that of the applicants and is designed to be used for skin
care products. The applicant persist that the dominant feature of the
“FAIR & LOVELY” trade mark is the “FAIR
&”.
The applicants go further and state that when one examines the use of
the words “LOVELY” and “CLEAR”
in the Class
that they appear, for the use of skincare product, both denote ‘fair
and beautiful i.e. free of blemishes’.
In the circumstances as
they would be registered in the same class, there would be a
likelihood that this would cause deception
and confusion to the
consumer.
12.
The guidelines in addressing matters of
this nature were set out in the
Plascon-
Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A)
at 641
where Corbett JA stated:
“
The
determination of these questions involves essentially a comparison
between the mark used by the defendant and the registered
mark and,
having regard to
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
customer 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 eyesight 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 relevant 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 customer must
be taken into account. As it
has been put, marks are
remembered rather by general impressions or by some significant
or striking feature than 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 a generic description of the goods.”
13.
I believe that the starting point in this
matter is the fact that the trade mark of the applicant has an
endorsement thereupon.
Thus as per the endorsement the applicants
cannot have an exclusive rights claim in the word ‘“
FAIR”
and “LOVELY” separately and apart from the mark’
.
In laymen’s terms exclusivity cannot be claimed for either word
of the trade mark separately and it cannot be claimed apart
from how
it appears from the mark. We are well aware that if one has an
exclusive right this is to the exclusion of others whilst
if its
non-exclusive it is not to the exclusion of others. Thus as the
endorsement indicated the two word’s when used separately
exclusivity could not be claimed, likewise if they were together
other than in the form in which they appeared in the mark. In
the
circumstances of this matter in stands to reason that the applicant
cannot claim exclusivity for the word “FAIR”
or “LOVELY”.
14.
However the case of the applicant is that
the claim it wishes to exercise is over the common dominate feature
of “FAIR &”.
The symbol “&”,
ampersand, meaning it denotes the conjunction word “and”.
A conjunction word is a combining
word, thus when used in isolation
is not distinctive. In a combination with another word it gains some
characteristic in the operation
of joining the two words on either
side of ‘
and or &’
.
15.
On an examination of the next words that
being “LOVELY” and “CLEAR” in isolation they
are clearly not visually
or phonetically similar.
LOVELY
means
(adj)
beautiful; (
inf
)
highly enjoyable- loveliness
(n)
CLEAR
means
(adj)
bright, not dim; transparent; without blemish; easily seen or heard;
unimpeded, open; free from clouds; quit (of); plain, distinct,
obvious; keen, discerning; positive, sure
.*(adv)
plainly; apart from
.*(vti)
to make or become clear; to rid (of), remove; to free from suspicion,
vindicate; to disentangle; to pass by or over without touching;
to
make a profit – clearness
(n)
.
The
aforesaid is taken from
Webster’s
Reference Library Concise Edition ENGLISH DICTIONARY New Edition
.
16.
Examination of the marks visually the only
common denominator to me is the “FAIR &”.
Phonetically they differ but
for the “fair and” used in
the beginning of the phrase. The marks phonetics differs by the use
of the word “LOVELY”
and “CLEAR”. It is
common cause that the word “FAIR” does not have an
exclusive right over it and
has a disclaimer thereupon instead. It is
an ordinary word thus the endorsement, an exclusive right cannot
exist thereon. Moving
to the symbol “&” which denotes
the word “and” as such it is conjunctive, descriptive and
as such is
of no significance in the grand scheme of trade marks. The
endorsement is clear that the word of the trade mark “FAIR &
LOVELY” cannot be used exclusively separately and use apart
from how they appear from the mark. Bearing this in mind the
applicant cannot in my view seek to use the word “FAIR”
together with the conjunctive “&” as a trade
mark for
it goes against the gain of the endorsement on the original trade
mark. To my mind the applicant is trying to gain a monopoly
over the
use of the words “FAIR &” even in the face of the
endorsement.
17.
In my view the words that are of relevance
that set the one mark apart from the other are the words “LOVELY”
and “CLEAR”.
It is evident from the meanings attributed
to the two words that the marks are set apart from each other.
Further, that the meanings
of these words are completely different as
adjectives (‘describing words’) or nouns as is set out in
paragraph 15 above.
My view is that on an examination of the meanings
attributed to these two words they clearly do not denote the same
thing.
18.
Having stated above that both “FAIR”
and “&” are both devoid of trade mark significance,
we are thus
left with the only words that have significance, that
being “LOVELY” and “CLEAR”, and when a
comparison
is conducted to the marks there can be no doubt that the
ordinary consumer will not be deceived or confused. I am of the view
that
these words “LOVELY” and “CLEAR” are
clearly dominant, distinctive and distinguish the two marks from each
other. This coupled with their different meanings, to my mind, sets
the marks apart and as such there is no way a consumer could
be
confused or deceived.
Refer to Cowbell
AG v ICS Holdings Ltd 2001 (3) SA941 (SCA) at 947I-948D
.
“…
The
decision involves a value judgment and '[t]he ultimate test is, after
all, as I have already indicated, whether on a comparison
of the two
marks it can properly be said that there is a reasonable likelihood
of confusion if both are to be used together in
a normal and fair
manner, in the ordinary course of business'.
(SmithKline
Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham South
Africa (Pty) Ltd) v Unilever plc
1995 (2) SA 90
3 (A) at 912H.)
'Likelihood' refers to a reasonable probability (ibid at 910B),
although the adjective 'reasonable' is perhaps surplusage. In
considering whether the use of the respondent's mark would be likely
to deceive or cause confusion, regard must be had to the
essential function of a trade mark, namely to indicate the origin
of the goods in connection with which it is used
(The
Upjohn Company v Merck and Another1987 (3) SA 221 (T) at 227E - F;
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (formerly
Pathé
Communications Corporation)
[1999] RPC 117
(ECJ) para 28).
Registered
trade marks do not create monopolies in relation to concepts or
ideas. More recently this Court in
Bata
Ltd v Face Fashion CC and Another
2001 (1) SA 844
(SCA) at 850 para
[9]
pointed
out that the approach adopted in
Sabel
BV v Puma AG, Rudolf Dassler Sport
[1998] RPC 199
(ECJ) at 224
accords
with our case law. There it was said that the likelihood of confusion
must 'be appreciated globally'
(cf
Organon Laboratories Ltd v Roche Products (Pty) Ltd1976 (1) SA 195
(T) at 202F - 203A)
and that the 'global appreciation of the visual, aural or
conceptual similarity of the marks in question, must be based on
the
overall impression given by the marks, bearing in mind, in
particular, their distinctive and dominant components'.
Compare
SmithKline at 910B - H and Canon paras [16] - [17].
”
19.
This case is a classic case of the
applicant seeking to create a monopoly of the words “FAIR &”
from an endorsed
existing trade mark. It is common cause amongst the
parties that there are other products on the market that have used
the word.
“FAIR” and “FAIR &”. This
is because of the fact that they do not hold trade mark
significance.
It is therefore untenable to allow a situation
where the applicant intends to create, as is intended by way of this
opposition,
a situation where these ordinary words gain exclusivity
and as such will not be able to be used by other proprietors.
20.
In conclusion I find that the respondents
have discharged the onus and the respondent’s “FAIR
& CLEAR”
trade mark does not offend against the provisions
of
section 10(14)
of the
Trade Marks Act 194 of 1993
.
21.
In the circumstances the following order is
made:
21.1
The opposition by the applicant is
dismissed with costs.
___________________________
W.
Hughes Judge of the High Court
Delivered
on: 12 June 2014
Heard
on: 18 March 2014
Attorney
for the Applicant:
SPOOR
& FISHER
Building
No 13
Highgrove
Office Park
Oak
Avenue
Centurion
Tel:
012 676 1129
Ref:
LT300887/HGB
Attorney
for the Respondent:
ADAMS
& ADAMS
Lynnwood
Bridge
4
Daventry Street
Lynnwood
Manor
PRETORIA
Tel:
012 432 6000
Ref:
OT30991ZA00/SK/NSH