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[2014] ZAGPPHC 369
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Woolworths (Pty) Ltd v KR Agencies CC (4288/14) [2014] ZAGPPHC 369; 2014 BIP 191 (GP) (13 June 2014)
REPUBLIC
OF SOUTH AFRICA
IN
THE GAUTENG DIVISION OF THE HIGH COURT, PRETORIA
CASE
NO: 4288/14
DATE:
13 JUNE 2014
REPORTABLE
NOT
OF INTEREST TO OTHER JUDGES
In
the matter between:
WOOLWORTHS (PTY) LTD
…............................................................................................
Opponent
and
KR
AGENCIES
CC
..............................................................................................
Trade
Mark Applicant
JUDGMENT
J
W LOUW. J
[1] KR Agencies CC,
to whom I shall refer as KR, filed an application for registration of
trade mark 2007/18441 in class 25 in respect
of clothing, footwear
and headgear on 11 July 2007. The trade mark is depicted below.
[See
PDF]
[2] Woolworths (Pty)
Ltd, to which I shall refer as Woolworths, opposes KR's application
for registration of the trade mark (the
opposed mark). The opposition
was initially brought before the Registrar of Trade Marks, who
transferred the matter to the High
Court in terms of the provisions
of s 59(2) of the Trade Marks Act, 194 of 1993 (the Act).
[3] Woolworths is
the proprietor of trade mark 1996/07455 JT ONE. It is also the
proprietor of trade mark 1996/10355 JT ONE device,
which is depicted
below. Both trademarks are registered in class 25 in respect of
clothing, footwear and headgear.
[SEE
PDF]
[4] The basis of
Woolworth's opposition is that KR's application for registration
offends against the provisions of ss 10(12), 10(14)
and 10(17) of the
Act. KR asserts that its trade mark is distinctive and does not
offend against these provisions. The sections
provide as follows:
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:
………
(12)
a mark which is inherently deceptive or the use of which would be
likely to deceive or cause confusion, be contrary to law,
be
contra
bonos mores,
or
be likely to give offence to any class of persons;
………
.
(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;
…………
(17)
a mark which is identical or similar to a trade mark which is already
registered and which is well-known in the Republic, if
the use of the
mark sought to be registered would be likely to take unfair advantage
of, or be detrimental to, the distinctive
character or the repute of
the registered trade mark, notwithstanding tie absence of deception
or confusion, unless the proprietor
of such trade mark consents to
the registration of such mark.
[1]
[5] It is common
cause that the goods in respect of which the opposed mark is sought
to be registered are the same as those covered
by Woolworths'
registered marks. KR does also not deny that Woolworths' marks are
well known. The opposition in terms of ss 10(12)
and 10(14) therefore
turns on the same question, i.e. whether the opposed mark is so
similar to the Woolworths marks that the use
thereof in relation to
the same goods will be likely to deceive or cause confusion.
[6]
The
approach to be followed when comparing trade marks in order to
determine whether they are confusingly or deceptively similar,
was
set out as follows in the well-known judgment of Plascon-Evans Paints
Ltd v Van Riebeeck Paints (Pty) Ltd
[2]
:
"
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."
[7]
In
Bata Ltd v Face Fashion CC and Another
[3]
the following was said by the Supreme Court of Appeal
[4]
in regard to the principles laid down in Plascon-Evans:
"These
principles are well known and need not be repeated in detail. It
suffices to say that not only should the marks be compared
side by
side but consideration must be given to whether the average customer
in the marketplace would probably be deceived or confused
by their
similarity. Corbett JA made it clear that the main or dominant
features of the marks in question as well as the general
impression
and any striking features were all factors to be considered in
deciding whether there was a likelihood of confusion
or deception. A
similar approach was adopted by the European Court of Justice in
Sabe
/
BV v Puma AG, Rudolf Dassler Sport
[1998]
RPC 199.
At 224 it was said that the likelihood of confusion must
r
be
appreciated globally’ 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 disti
nctive
and dominant components'.”
[8]
In
Adidas
Sportschuhfabriken Adi Dassier KG v Harry Wait & Co (Pt) Ltd
[5]
the following was said
[6]
:
"The
marks must not only be considered when placed side by side, but
regard must be had to the position of prospective purchasers
who may
see the two marks at different times and under different
circumstances. Due allowance must be made for imperfect recollection,
and, I should imagine, in the circumstances of the present case, for
imperfect perception. The marks must be considered as wholes;
one
must look for the main idea, or the general impression, conveyed to
the mind by each of the marks and at the essential features,
rather
than the exact details, of each."
[9]
In
Adidas
AG and Another v Pepkor Retail Limited
[7]
,
the SCA said the following
[8]
:
“
It must be
borne in mind that the question of the likelihood of confusion or
deception is a matter of first impression and that
‘one should
not peer too closely at the registered mark and the alleged
infringement to find similarities or differences’.
The court
must not consider the question of deception or confusion as if the
purchaser of the goods will have had the opportunity
of carefully
considering the marks and even comparing them side by side. They must
look at the marks as they will be seen in the
marketplace and take
into account a notional purchaser: ‘a person of average
intelligence, and proper eyesight, buying with
ordinary caution’.”
[10] Visually, the
dominant feature of the Woolworths device or logo mark is clearly the
letters
'jt'
in lower case. That is the
"main idea" or "general impression" which will,
in my view, be conveyed to the minds
of prospective customers. That
is also the dominant feature or main idea of the opposed mark. Viewed
globally, and not peering
at the marks too closely, the stylised
'j'
and
't'
of both marks are very
similar. It was submitted by Mr. Marriott, who appeared for
Woolworths, that the strapline "Your name
can depend on it"
which appears below the 'jt' element of the opposed mark, does not
serve to distinguish the opposed mark
from the Woolworth's logo mark
and that its laudatory nature means that the public, who are aware of
Woolworths' well-known JT
ONE brand, are equally likely to associate
it with the Woolworths' JT ONE brand. I agree with this submission.
[11]
In
regard to the Woolworths' JT ONE trade mark (1996/07455), there is
very little, if any, visual similarity between it and the
opposed
mark. Mr. Marriott, who appeared for Woolworths, however submitted
that, when the aural similarity of the marks is considered,
potential
clients are likely to ask for, e.g.,
'JT'
or
'JT's"
pants
rather than for 'JT's Your name can depend on it' pants. In this
regard, it has been pointed out that there is a tendency
for people
to abbreviate the names of things.
[9]
Woolworths has provided evidence of the fact that members of the
public refer to its JT ONE products simply as
'JT'.
In
my view, there can be little doubt that this is what will occur in
practice. KR has, in support of its defence of honest concurrent
use,
to which reference will be made below, annexed copies of selected
invoices from as far back as 1997. On those of the invoices
which are
legible, the items in question are described either as
'J
T
S' or
'JT".
KR
itself therefore abbreviated the name of its products. The strapline
was also not used on KR's promotional material, photographs
of which
are attached to KR's answering affidavit.
[12] KR contends
that it has made honest concurrent use of the opposed mark and that
it is therefore entitled to registration of
the mark in terms of the
provisions of s 14(1) of the Act, which reads as follows:
(1)
In the
case of honest concurrent use or of other special circumstances which
may make it proper to do so, the registrar may, on
application in the
prescribed manner,
register,
subject to such conditions and limitations, if any, as he may think
fit to impose, a trade mark the registration of which
would otherwise
offend against the provisions of paragraph (6), (14), (15) or (17) of
section 10.
The "prescribed
manner" is to be found in regulation 17 of the regulations
published in terms of the Act, which provides
that:
An
application in terms of the provisions of section 14(1) of the Act
shall be made on Form TM1 accompanied by a statement of case
and an
affidavit in support of it.
[13] KR has not
complied with these requirements. It can therefore not succeed with
its reliance on s 14(1). It was submitted by
Mr. Wheeldon, who
appeared for KR, that the answering affidavit deposed to by Mr.
Khalid Kharwa on behalf of KR is sufficient compliance
with the
regulation. I disagree. The regulation is worded in peremptory terms.
What KR should have done, is to convert its application
for
registration to an application in terms of s. 14(1) and to comply
with the requirements of regulation 17. But even if I were
wrong in
this regard, the facts set out by Mr. Kharwa in the answering
affidavit do not support an application in terms of s 14(1).
KR
claims that it has used a mark which is the same as the opposed mark
under licence from a UK company, T-Shirt Connection Ltd.,
from about
1997. This mark was registered in the name of the UK company with
effect from 30 June 1997. The mark lapsed on 30 June
2007 due to
non-renewal. KR then applied for registration of the opposed mark in
its own name on 11 July 2007.
[14] Use of a trade
mark under licence does not confer any rights in the trade mark to
the licensee in view of the provisions of
ss 38(1) and (2) of the
Act, which read as follows:
(1)
Where
a registered trade mark is used by a person other than the proprietor
thereof with the licence of the proprietor, such use
shall be deemed
to be permitted use for the purposes of subsection (2).
(2)
The
permitted use of a trade mark referred to in subsection (1) shall be
deemed to be use by the proprietor and shall not be deemed
to be use
by a person other than the proprietor for the urposes of section 27
or for any other purpose for which such use is material
under this
Act or at common law."
[15]
No
rights in the opposed mark therefore accrued to KR during the period
1997 to 2007. Those rights accrued to the UK company. Mr.
Kharwa
states in his affidavit that the UK company ceased to exercise any
control over the use of the opposed mark in 1999 and
that it became
increasingly unresponsive to KR until 2004 when the UK company ceased
trading. KR agreed with the UK company that
it would assign the mark
which was registered in its name to KR, but this never materialised
and when the mark fell due for renewal
in 2007, KR applied for
registration of the mark in its own name. As was correctly pointed
out by Mr. Marriott, the fact that a
company ceased trading does not
mean that it is no longer capable of holding intellectual property
rights such as the right to
a trade mark. The fact that the UK
company ceased to exercise any control over the use of its mark also
does not assist KR. The
SCA in A M Moolla Group Ltd and Others v The
GAP Inc and Others
[10]
made it clear
[11]
that licensing of a trade mark does not require quality control. The
defence based on honest concurrent use is therefore flawed
and stands
to be dismissed.
[16]
KR
further relies on the fact that Woolworths has not provided any
evidence of actual confusion despite the fact that KR has been
using
the opposed mark for approximately fourteen years. Evidence of actual
confusion or deception can be useful, but it is not
a requirement in
order to prove the likeiihood of confusion or deception. That is for
the court to decide. In Adidas AG v Pepkor
Retail Limited,
[12]
the SCA said the following:
"taking
into account the difficulties associated with the admissibility and
the weight to
be
given to such evidence, no significance can be attached to the
absence of this evidence."
[17]
A
possible, and even probable, reason for the absence of evidence of
actual confusion is to be found in the fact that KR specialises
in
the supply of clothing for promotion purposes. Mr. Kharwa states that
these items are often branded with company names before
they are
distributed or sold to the end user and that it is common for
clothing, particularly shirts, to bear the names or initials
of
people, bands and places either to appeal to customers or for
advertising. It is also common for clothing to be sold under the
name
or mark of a designer, thereby identifying the source of the garment.
My understanding of this evidence is that the opposed
mark, if it
appears on these items, will be much less conspicuous than the
promotional branding which appears thereon. The fact
that the opposed
mark has, to date, only been used on clothing sold for promotion
purposes does not mean that, if registration
is permitted, it may not
be used for other purposes in the future. What must be considered is
the notional use of the opposed mark
in respect of the goods if
registration were to be permitted.
[18] Applying the
principles to which I have referred above, I conclude that the
opposed mark is so similar to the Woolworths marks
that the fair and
normal use thereof in relation to the goods in respect of which
registration is sought, will be likely to deceive
or cause confusion.
It follows that registration of the opposed mark is prohibited by
virtue of the provisions of ss 10(12) and
10(14) of the Act.
[19] In view of this
conclusion, I find it unnecessary to deal with the opposition based
on s 10(17) of the Act.
[20]
In the result, I make the following order:
[l] The application
of KR Agencies CC for registration of trade mark 2007/18441 jt's Your
name can depend on it logo in class 25
is refused.
[2] KR Agencies CC
is ordered to pay the costs of the opposition to registration,
including the costs of counsel.
APPEARANCES
For
applicant for registration: Mr. R Wheeldon, Johannesburg.
For
opponent: Adv. G.D. Marriott
Adams
& Adams, Pretoria.
[1]
The
proviso to s 10 was not relied upon by KR and is therefore not
relevant for present purposes.
[2]
[1984] ZASCA 51
;
1984
(3) SA 623
(A) at 6401 - 641E
[3]
2001
(1) SA 844 (SCA)
[4]
At
850D-G
[5]
1976
(1)SA 530 (T)
[6]
At
536A-B
[7]
[2013}
ZASCA 3
(28 February 2013)
[8]
At
par. [22]
[9]
See
Budweiser
Budvar National Corporation
v
Anheuser-Busch
Corporation,
2002
BIP 126 at 129E
[10]
2005
(6) SA 568 (SCA)
[11]
At
par. [40]
[12]
Supra,
at
par. [27]