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1984
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[1984] ZASCA 51
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Plascon-Evans Paints (TVL) Ltd. v Van Riebeck Paints (Pty) Ltd. (53/84) [1984] ZASCA 51; [1984] 2 All SA 366 (A); 1984 (3) SA 623; 1984 (3) SA 620 (21 May 1984)
IN
THE SUPREME COURT OF SOUTH AFRICA
(
APPELLATE DIVISION
)
In the matter between:
PLASCON-EVANS PAINTS LIMITED
.... Appellant
and
VAN RIEBEECK PAINTS (PROPRIETARY) LIMITED
⦠Respondent
Coram: CORBETT, MILLER et NICHOLAS, JJA, GALGUT et HOWARD, AJJA.
Date of hearing
: 27 February 1984.
Date of judgment
: 21 May 1984
JUDGMENT
CORBETT
JA:
Appellant, a company dealing in paints and allied
2
products, is the proprietor of a trade mark registered in terms of
the Trade Marks Act 62 of 1963 ("the Act"). The trade
mark
in question consists of the word "Micatex". It was
registered on 13 September 1971 in respect of the following goods
falling within class 2 of the fourth schedule of the Trade Marks
Regulations, 1963 (the regulations current at the time of
registration):
"Paints, varnishes (other than insulating varnish), enamels (in
the nature of paint), distempers, lacquers, preservatives
against
rust and against deterio-ration of wood and anti-corrosives, all
containing mica".
Respondent is a company also carrying on business as a dealer in
paints and allied substances.
3
Early in 1980 appellant instituted motion proceedings against
respondent in the Cape Provincial Division, alleging that respondent
was using a mark which infringed appellant's registered trade mark
and also was wrongfully passing off its goods as being those
of the
appellant; and claiming interdicts against infringement and against
passing off and consequential relief. The application
was opposed by
respondent, which also applied for the striking out of certain
passages in a replying affidavit filed by appellant.
The matter came
in the first instance before VAN HEERDEN J. At the hearing appellant
did not proceed with the cause of action based
upon an alleged
4
passing off. Further, it was agreed between the parties that certain
material in the replying affidavit should be struck out. The
Court,
having heard argument, granted an interdict restraining respondent
from infringing appellant's trade mark, made an order
for the
delivery up for destruction of all goods, etc. bearing the offending
mark and awarded appellant costs of suit (including
the costs of two
counsel), save for the costs occasioned by the application to strike
out, which costs were awarded to respondent.
Respondent appealed to the Full Bench of the Cape Provincial Division
against the whole of this judgment and order, save for the
portion
relating
5
to the costs of the application to strike out. Respondent also filed
an application to place certain additional evidence on affidavit
before the Court, tendering at the same time to pay the wasted costs
arising from the application. The Full Bench (VAN DEN HEEVER
J, BAKER
and SCHOCK JJ concurring) allowed the appeal with costs, save for the
costs of the application to adduce additional evidence
on affidavit,
but failed, presumably through oversight, to substitute any order for
that of the Court of first instance. It would
seem, however, from the
tenor of the judgment of the Full Bench that it intended to
substitute an order dismissing the application
with
6
costs. Appellant applied to the Full Bench for leave to appeal to
this Court. The application was opposed by respondent. The Full
Bench
granted leave and ordered respondent to pay the costs occasioned by
its opposition.
Before 1 consider the issues and arguments raised on appeal, it is
necessary that I should recount the salient facts, as they appear
from the affidavits. In this connection I should mention two points.
Firstly, at the commencement of the hearing before us appellant's
counsel informed the Court that he did not intend to argue the
alleged passing off. I think counsel acted wisely for, in my opinion,
appellant did not establish,
7
on the papers, a cause of action for passing off. It is thus not
necessary, in retailing the facts, to refer to the evidence relating
solely to passing off.
Secondly, the affidavits reveal certain disputes of fact. The
appellant nevertheless sought a final interdict, together with
ancillary
relief, on the papers and without resort to oral
evidence.
In such a case the general rule was stated by VAN WYK J
(with whom DE VILLIERS JP and ROSENOW J concurred) in
Stellenbosch
Farmers' Winery Ltd v Stellenvale Win
e
ry
(Pty) Ltd
,
1957 (4) SA 234
(C) at p 235 E-G, to be:
".... where there is a dispute as to the facts a final interdict
should only be granted in notice of motion proceedings if
the facts
as stated by the respondents
8.
together with the admitted facts in the applicant's affidavits
justify such an order.... Where it is clear that facts, though not
formally admitted, cannot be denied, they must be regarded as
admitted".
This rule has been referred to several times by this Court (see
Burnkloof Caterers Ltd v Horseshoe Caterers Ltd
.,
1976 (2) SA
930
(A), at p 938 A-B;
Tamarillo (Pty) Ltd v B N Aitken (Pty) Ltd
,
1982 (1) SA 398
(A) at pp 430-1;
Associated South African Bakeries
(Pty) Ltd v Oryx & Vereinigte Backereien (Pty) Ltd en Andere
,
1982 (3) SA 893
(A), at pp 923 G - 924 D). It seems to me, however,
that this formulation of the general rule, and particularly the
second sentence
thereof, requires some clarification and, perhaps,
qualification. It is correct that, where in proceedings on notice of
motion
9
disputes of fact have arisen on the affidavits, a final order,
whether it be an interdict or some other form of relief, may be
granted if those facts averred in the applicant's affidavits which
have been admitted by the respondent, together with the facts
alleged
by the respondent, justify such an order. The power of the court to
give such final relief on the papers before it is,
however, not
confined to such a situation. In certain instances the denial by
respondent of a fact alleged by the applicant may
not be such as to
raise a real, genuine or
bona fide
dispute of fact (see in
this regard
Room Hire Co. (Pty) Ltd v Jeppe Street Mansions (Pty)
Ltd
,
1949 (3) SA 1155
(T), at pp 1163-5;
Da Mata v Otto, NO
,
1972 (3) SA 585
(A), at p 882 D - H).
10
If in such a case the respondent has not availed himself of his right
to apply for the deponents concerned to be called for
cross-examination
under Rule 6(5)(g) of the Uniform Rules of Court
(cf.
Petersen v Cuthbert & Co Ltd,
1945 AD 420
, at p 428;
Room Hire
case, supra, at p 1164) and the court is satisfied
as to the inherent credibility of the applicant's factual averment,
it may proceed
on the basis of the correctness thereof and include
this fact among those upon which it determines whether the applicant
is entitled
to the final relief which he seeks (see eg.
Rikhoto v
East Rand Administration Board
,
1983 (4) SA 278
(W), at p 283 E -
H). Moreover, there may be exceptions to this general rule,
9
B as, for example, where the allegations or denials of the respondent
are so far-fetched or clearly untenable that the Court is
justified
in rejecting them merely on the papers (see the remarks of BOTHA AJA
in the
Associated South African Bakeries
case, supra, at p 924
A).
10
From the papers in this case it appears that as a result of various
transactions, the details of which are not relevant, appellant
acquired from other companies, whose assets now vest in appellant,
the rights to various trading styles, including "the Plascon
Parthenon Paint Company", the "Crown Asbestos Paint
Company" and "Crown Cebestos" and also the regis-tered
trade mark "Micatex". The latter was legally assigned to
appellant on 3 January 1979 with effect from 15 November 1978.
Some use had been made of the Micatex trade mark by appellant's
predecessors in title, but it was only after appellant became
entitled thereto (evidently
11
some time before the formal assignment to appellant) that the trade
mark was exploited on a large scale. Appellant used it with
reference
to a texture coating sold by it. The term "texture coating"
denotes to the trade and to the purchasing public
a thick paint-like
coating or paint primarily applied to the exterior surfaces of
buildings. Because of its thick texture it produces
a thick covering
which hides surface imperfections, such as those encountered in
prefabricated concrete slabs and off-shutter concrete,
and fine
cracks in imperfect plaster finishes. It furthermore produces an
extremely durable finish, which is not easily damaged
or destroyed.
12
The desirable qualities of texture coatings have rendered them
extremely popular in this country and they are produced by numerous
paint manufacturers. All these manufacturers describe their products
as "texture coatings", "textured coatings",
"texture paints" or by minor variations of these terms. The
term texture coating is also in general use in the building
trade and
contract specifications often stipulate for texture coatings of
various kinds.
The texture coating sold by appellant under its Micatex trade mark
contains the silicate known as mica. The mica ingredient in
the
texture coating constitutes approximately 9 per cent by weight of the
13.
texture coating as a whole. It is what is termed a "filler".
The other ingredients of appellant's texture coating are
pigment and
other fillers (not including mica) plus-minus 34 per cent; emulsion
(resin) 19 per cent; and water 38 per cent. The
use of mica as an
ingredient is confined to specialty paints, such as texture finishes,
to which it imparts additional strength
and resistance to checking
and cracking. Another filler substance which Micatex contains is
marble.
From the middle of 1978 appellant mounted a concentrated and costly
promotional campaign, through the media of the press, the radio
and
television, in order to publicise its product Micatex and increase
the
14.
sales thereof. In the course of this campaign Micatex was portrayed
as a particularly effective "textured exterior coating"
or
"exterior coating". Appellant also produced and distributed
sales pamphlets and brochures. The total cost of the campaign
over
the period August 1978 to July 1979 exceeded R300 000. Sales figures
over the period January 1978 to July 1979 for the Reef
area, Natal
and the Cape Province show that as from July/August 1978, when the
campaign commenced, there was a dramatic and sustained
increase in
the monthly sales of appellant's Micatex. This is demonstrated by the
following figures, which are not seriously disputed:
15.
Period
T
otal sales (in litres) of Micatex
Jan to July
1978 63 594 (7 months) Aug 1978 to Jan 1979 603 863 (6 months) Feb to
July 1979 835 170 (6 months)
In about October 1978 it came to appellant's notice that respondent
was selling and offering for sale in the Cape Province a texture
coating under the mark "Mikadek". Appellant immediately
objected to the use of this mark as being,
inter alia
, an
infringement of its trade mark Micatex. Without making any
concessions respondent agreed to desist from further use of the
mark
Mikadek. Respondent thereafter filed applications for registration in
its name of the marks
16
"Mikadecro" and "Mikacote" in respect of paints
and similar products. The word "Dekro" is respondent's
"housemark" and apparently this in part inspired the
conception of the marks Mikadek and Mikadekro.
In about April 1979 appellant became aware of the fact that
respondent was selling and offering for sale in the Cape Province a
texture coating under the mark Mikacote. The container in which the
product was marketed also bore the housemark "Dekro".
This
use of the mark Mikacote was not authorized by the appellant and,
according to appellant, was an infringement of its rights
as the
proprietor of the registered mark, Mibatex. Appellant's attorneys
thereafter wrote on its behalf to respondent
17
objecting to this use by respondent of the mark Mikacote, demanding
that it cease and making various other demands, which need
not be
detailed. This elicited a reply from respondent's attorneys denying
infringement and refusing to accede to appellant's demands.
Respondent continued to use the mark Mikacote in this way and was
evidently still doing so at the time of the hearing before VAN
HEERDEN J... During the course of a related appeal in the matter of
Plascon-Evans Paints (Tvl) Limited v Decro Paint and Hardware
(Pty) Ltd
, which was heard by us on the day following the hearing
of the present matter and in which the same issues arose, we were
informed
by counsel that respondent had ceased
18
to market its products under the Mikacote mark. Though this renders
the real issues between the parties moot, it unfortunately
does not
relieve us of the task of deciding this appeal.
With regard to the use by respondent of the mark Mikacote it is
relevant to note that 'respondent's texture coating does contain
mica, the breakdown of this product, shown as a percentage by weight,
being the following: pigment and other fillers (not including
mica)
32,97; mica 8,72; emulsion (resin) 19,44; water 36,39; additives
2,48. Mikacote does not, however, contain marble, one of
the
ingredients of Micatex.
19
The goods in relation to which the marks Micatex and Mikacote were
being used were offered for sale in hardware stores, multiple
stores,
general dealer's stores and similar outlets. They were purchased,
inter ali
a, by word of mouth, either over the counter or over
the telephone, or by selection by appearance. The purchasers included
not only
persons skilled in the paint trade, but also persons having
no specialized knowledge and merely wanting to perform painting work
themselves or by means of unskilled employees. It is averred by
respondent that such purchasers nevertheless "generally have
a
more than rudimentary knowledge of the products and the substances
contained in them".
20
In order to substantiate its claim that respondent was passing off
its product Mikacote as appellant's product Micatex appellant
adduced
evidence of three "trap" approaches made to certain of
respondent's retail outlets in the northern suburbs of
Cape Town.
Precisely what occurred on these three occasions is in dispute; but
what does emanate clearly from the undisputed evidence
in regard
thereto is that the sales assistants at respondent's outlets sold and
offered for sale respondent's texture coating under
the name
Mikacote. Thus, for example, Mrs M Thacker, a saleslady employed by
respondent at its shop in Goodwood, stated that â
" on a number of occasions prospective
customers have asked us whether we do stock Micatex, but we have
always stated unequivocally that we do not, but that we in fact
21.
stock Mikacote, which is not the same product as Micatex, as the
former does not contain marble, whereas the latter does".
And, in another instance, Mr Cilliers, the manager of a retail store
operated by respondent in Belville, conceded that in an interview
with Mr H E A Wesson, a director of one of appellant's subsidiaries,
he (Cilliers) wrote on a Dekro data sheet relating to Mikacote
the
words "is presies dieselfde as Micatex". He explained that
what he intended to convey was that Mikacote fulfilled the
same
function as Micatex.
Prior to launching the notice of motion proceedings appellant caused
a search to be made in the records of the Registrar of Trade
Marks in
regard
22
to all trade marks containing the word "Mica". There were
at the time five such marks. None of them was registered in
the same
class as Micatex. Moreover, there was no other trade mark registered
in class, 2 of the fourth schedule, other than Micatex,
which
incorporated the words "Mica" or "Mika". In fact
there is no evidence of any use in South Africa in respect
of paint
or allied products of any trade mark containing the word "Mica",
save for the use by appellant of the trade
mark "Micatex"and
the use by respondent of the marks "Mikadek" and
"Mikacote".
On appeal to us the argument revolved mainly around three basic
issues. These were:
23.
(1) Whether the use by respondent of the mark Mikacote was use as a
trade mark.
(2) Whether the use by respondent of the mark Mikacote infringed
appellant's rights as the registered proprietor of the trade mark
Micatex.
(3) Whether the use by respondent of the mark Mikacote was protected
by the provisions of s. 46(b) of the Act. In addition, respondent's
counsel emphasized the disputes of fact raised by the affidavits and
pointed out that appellant never sought to resolve these issues
by
means of oral evidence. I have already dealt with this aspect of the
matter. The existence of disputes of
24.
fact does not, as I have indicated, necessarily preclude a final
interdict being granted. The main consequence is simply that,
in
terms of the above-mentioned general rule, where the affidavits in
this case raise real and bona
fide
disputes of fact, the
appellant is bound to accept the respondent's version of the facts.
I proceed now to consider the three basic issues.
Use
as
a trade mark
It is provided by s. 44(1)(a) that subject to certain provisions of
the Act, which are not immediately relevant, the rights acquired
by
registration of a trade mark shall be infringed by -
"(a) unauthorized
use
as a
trade mark
in relation
to goods or services in respect of which the trade mark is
registered, of a mark so nearly resembling it as to be likely
to
deceive or cause confusion." (My italics.)
25.
In the Court of first instance counsel then appearing on behalf of
respondent (different counsel represented respondent before
us)
conceded that respondent had been unauthorizedly using the mark
Mikacote as a trade mark in relation to goods in respect of
which
appellant's trade mark was registered. In this Court, however,
respondent's counsel partly withdrew this concession and submitted
that the use of the mark Mikacote by respondent, although
unauthorized and in relation to goods in respect of which appellant's
trade mark was registered, did not amount to use as a trade mark;
Mikacote was a product name, not a brand name and was, therefore,
not
used as a trade mark.
26.
Even if respondent's counsel were correct in this submission, I am
not sure, in view of the provisions of s. 44(1)(b) - which deals
with
the unauthorized use of a mark otherwise than as a trade mark - that
a finding that Mikacote was not used as a mark would
really assist
respondent's case. Be that as it may, I do not think that the
submission is sound.
In s. 2 of the Act the following definition of "trade mark"
is to be found:
" 'trade mark', other than a certification mark, means a mark
used or proposed to be
used in relation to goods or services for the purposes of â
(a) indicating a connection in the course of trade between the goods
or services and some person having the right, either as proprietor
/ or...
27
distinguish the goods in relation to which the mark is used from the
same kind of goods connected in the course of trade with any
other
person. The words "connection in the course of trade"
convey a fairly wide concept and would clearly include the
role of
manufacturer of or dealer in the goods in question.
Where one is considering the use or proposed use of a trade mark in
relation to an application (in terms of s. 20 of the Act) by
the
proprietor thereof for the registration of his mark or in relation to
the rights of a registered proprietor, there is no difficulty
in
applying the statutory definition of "trade mark", quoted
above. Where however, the question is whether an alleged
29.
infringer of the rights of the proprietor of a registered trade mark
has unauthorizedly used a mark "as a trade mark"
within the
meaning of s. 44(1)(a), then, as pointed out in Chowles and Webster,
South African Law of Trade Marks
, 2nd ed., at pp. 54-5, in
certain situations problems arise in the application of the statutory
definition. For example, where
A has knowingly used, in relation to
goods sold by him, a mark which deceptively resembles the registered
trade mark of B for the
purpose of indicating a connection in the
course of trade between the goods and, not himself, but B, the
definition does not appear
to apply for B is not the proprietor of
the mark used by A (see par. (a) of the definition) and A has not
used his mark to distinguish
his goods from the
30.
same kind of goods connected in the course of trade with other
persons, but in order to create confusion as to the origin of the
goods (see par. (b) of the definition): yet in such a case, there has
clearly been an infringement of A's rights as proprietor
of the
registered mark. In Chowles and Webster, op. cit., at pp 54-5 it is
suggested that in this type of case the statutory definition
of
"trade mark" may have to be "adapted" when used
in relation to the phrase "use as a trade mark"
in s.
44(1)(a). Alternatively, the answer may be that in s. 44(1)(a) the
words "trade mark" must be given not their statutory
definition, but their ordinary meaning of a "badge of origin"
(see
Shalom Investm
ents
Ltd v Dan River Mills Inc.
,
1971 (1) SA 689
(A), at
31.
pp 699 ff).
In the present case, however, it is not necessary to come to any
decision on these matters for, as I understood the argument of
respondent's counsel, it was that respondent's use of the mark
Mikacote was not as a badge of origin at all or as in any way either
indicating a connection in the course of trade or distinguishing the
goods to which the mark was applied. As counsel put it, Mikacote
was
a product name, not a brand name. The distinction between a "brand
name" and a "product name" is not immediately
apparent
to me. Moreover, the evidence, to which I have already referred,
shows that respondent's texture coating was normally
sold under the
name Mikacote; that when customers came to respondent's retail
outlets
32
and asked for Micatex, they were told, so it is said by respondent's
witnesses, that respondent did not stock Micatex, but that
it did
stock Mikacote; and so on. Moreover, at a certain stage, as already
indicated, respondent made application in terms of the
Act for the
registration of the word Mikacote as a trade mark. Generally, I am
satisfied that respondent's use of the word Mikacote
in relation to
its goods was "use as a trade mark". This issue must
accordingly be resolved in favour of the appellant.
Infringement
I have already referred to the provisions of s. 44(1)(a) which
defines the infringement committed by the use of a mark as a trade
mark. As has been indicated,
it is not disputed that respondent unauthorizedly
32 A
used the mark Mikacote in relation to goods in respect of which
appellant's trade mark is registered; and I have held that respondent
used Mikacote "as a trade mark". The only remaining issue
in regard to infringement is whether the mark used by respondent
so
nearly resembled appellant's registered trade mark â
"as to be likely to deceive or cause confusion".
The meaning of these words and the general principles governing their
application to the facts of a particular case have frequently
been
canvassed in our courts. In the recent case of
International Po
wer
Marketing (Pty) Ltd v Searles Industrials (Pty) Ltd
.
1983 (4)
SA 163
(T), MARGO J, delivering the judgment
33
of the Transvaal Provincial Division, gave a full review of the legal
principles applicable to such an issue and cited most, if
not all, of
the relevant cases. It is not necessary to repeat these citations of
authority. The main legal principles relevant
to the decision of the
instant case may be briefly summarized as follows:-
In an infringement action the onus is on the plaintiff to show the
probability or likelihood of deception or confusion. It is not
incumbent upon the plaintiff to show that every person interested or
concerned (usually as customer) in the class of goods for
which his
trade mark has been registered would
34
probably be deceived or confused. It is sufficient if the
probabilities establish that a substantial number of such persons
will
be deceived or confused. The concept of deception or confusion
is not limited to inducing in the minds of interested persons the
erroneous belief or impression that the goods in relation to which
the defendant's mark is used are the goods of the proprietor
of the
registered mark, i.e. the plaintiff, or that there is a material
connection between the defendant's goods and the proprietor
of the
registered mark; it is enough for the plaintiff to show that a
substantial number of persons will probably be confused as
to the
origin of the goods or the existence or non-existence of such a
connection.
35
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
36
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
37
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.
In certain of the decided cases it has been held that the Court
should include in its comparison what has been termed the "notional
use" of the regis- tered mark and of the alleged infringing mark
(see e.g.
adida
s
Sportschuhfabriken Adi Dassler K.G
.
v
Harry Walt & Co Ltd
,
1976 (1) SA 530
(T) at pp 534 A to 535
H;
Hudson & Knight (Pty) Ltd v D H Brothers Industries (Pty)
Ltd T/A Willowtown Oil and Cake Mills and Another
,
1979 (4) SA
221
(N), at p 224 F;
Juvena Produits de Beaute SA v BLP Import and
Export
,
38.
1980 (3) SA 210
(T), at p 218 B-G; and see Chowles and Webster, op.
cit
. pp 200-01). As explained by Chowles and Webster (at the
pages cited) this means that in making the necessary comparison the
court
is not confined to the manner in which the parties have
actually used their respective marks: it may have regard to how they
can
use the marks in a fair and normal manner. Respondent's counsel
contended that while the notional user test might be appropriate
in
cases of the opposed registration of a mark, it was not correct to
apply it in an infringement case. I can well see that in
considering
the question of infringement the court should have regard not only
39.
to the plaintiff's actual use of his registered mark, but also to
notional use, that is to all possible fair and normal applications
of
the mark within the ambit of the monopoly created by the terms of the
registration (cf remarks of BOTHA J in the
adidas
case,
supra
,
at p 535 B-D). I have some difficulty, however, in applying the
notional user approach to the use by the defendant of his mark,
especially as regards the type of goods to which the mark is applied.
If the actual proven user by the defendant falls outside
the ambit of
the plaintiff's monopoly, then I fail to see how it can be said to
infringe merely on the ground that a notional fair
and normal user of
his mark - which
40.
had not in fact occurred - would trespass upon the plaintiff's
monopoly. To take a pertinent example: suppose respondent in this
case had used a mark which was deceptively similar to plaintiff's
mark in relation to an insulating varnish (an item specifically
excluded from the goods in respect of which appellant's mark was
registered). I doubt whether the suggestion that the respondent's
mark might also fairly and normally be used in relation to other
varnishes would establish infringement on respondent's part. It
is
not necessary , however, to express a final opinion on these points
for the mark actually used by respondent in this case was
applied to
the same class of goods as the
41
registered mark and, in my opinion, the issue of deceptive or
confusing resemblance can be decided on the basis of the actual user
by both parties.
I come now to compare the marks in this case, Micatex and Mikacote.
Viewed side by side the marks exhibit similarities and differences.
They are both trisyllabic; they both have as their first two
syllables the word "mica". (Though in respondent's case
this is spelt "mika", phonetically the words are
identical.) On the other hand, the only similarity between the suffix
"cote" and the suffix "tex" is that they are both
monosyllabic.
42
As I have emphasized, however, the comparison must not be confined to
a viewing of the marks side by side. I must notionally transport
myself to the market place (see remarks of COLMAN J in
Laboratoire
LaCharte SA v Armour-Dial Incorporated
,
1976 (2) SA 744
(T), at p
746 D) and consider whether the average customer is likely to be
deceived or confused. And here I must take into account
relevant
surrounding circumstances, such as the way in which the goods to
which the marks are applied are marketed, the types of
customer who
would be likely to purchase the goods, matters of common knowledge in
the trade and the knowledge which such purchasers
would have of the
goods in question and the marks applied to them.
43
As I have already mentioned, the goods to which the Micatex and
Mikacote marks were applied were offered for sale in hardware stores,
multiple stores, general dealer's stores and similar retail outlets.
Potential purchasers included not only persons skilled in
the paint
trade, such as building and painting contractors, but also persons
having no specialized knowledge and wanting merely
to perform
painting work themselves or by means of unskilled employees. I doubt
very much whether the former, ie persons skilled
in the paint trade
would be deceived or confused by respondent's mark Mikacote, but the
position of the latter, ie persons having
no specialized knowledge,
is by no means so clear.
44.
In my opinion, the dominant impression or idea conveyed by each of
the marks centres on the word "mica". "Mica"
constitutes in each case the first two syllables of the mark. It is
the portion of the mark which makes the initial impact and
on which
stress is laid in pronunciation. It is a known word for a known
substance. In the painting trade appellant's use of the
word "mica"
in its registered trade mark was unique among trade names, until
respondent commenced using the mark Mikacote.
The suffixes "tex"
and "cote" make less of an impression, particularly as they
appear to be derived from the
term "texture coating" or, at
any rate, would be understood by a substantial number of
45
interested customers as being so derived. As, the evidence shows, the
term texture coating is one generally used in the trade to
denote the
products to which the marks Micatex and Mikacote were applied.
Consequently, a potential customer, with no specialized
knowledge in
this field and an imperfect recollection of appel- lant's trade mark,
would tend to recall it as "Mica-something"
or "a word
starting with mica". At any rate, in my view, a substantial
number of such customers would probably have this
type of
recollection. A person with such an imperfect recollection who went,
say, to a hardware store to purchase appellant's product
and
encountered, or was offered,
46.
a tin of Mikacote could well, in my opinion, be deceived into
thinking that this was the product he was seeking;
and it is likely that this could occur on a substantial scale.
Moreover, I think that a substantial number of such persons, knowing
that the product they were seeking was a "texture coating";
would be likely to be confused between "Micatex",
the
suffix being the first syllable of "texture", and
"Mikacote", where the suffix is a phonetic transcription
of
the first syllable of "coating". At the very least, .1
consider that the resemblance between
the marks is sufficient to
cause a substantial number of such customers to be confused as to
whether or not there was a material
connection between respondent's
goods,
47
bearing the mark Mikacote, and the proprietor of the Micatex mark.
The Court a
quo
, which decided the infringement issue
adversely to appellant, appears to have based its decision mainly on
a verbal comparison
of the two marks and upon the conclusion (thereby
differing from the Judge of first instance) that in practice the two
marks would
not be used in conjunction with the generic description
"texture coating". I am inclined to agree with this latter
conclusion,
but in my view, a purely verbal comparison is not enough.
As I have said, in cases such as this the Court must transport itself
to the market place and try to visualize how
48
customers of the goods, in relation to which the marks are used,
would react.
The case is not an easy one. This is shown by the division of
judicial opinion which has occurred in this case and in the parallel
case in the Orange Free State Provincial Division (see
Decro Paint
and Hardware (Pty) Ltd v Plascon-Evans Paints (Tvl) Ltd
,
1982 (4)
SA 213
(0) ), the matter which came before us on appeal immediately
after the present one. Having carefully considered the matter,
however,
I am of the view, for the reasons stated, that appellant
established an infringement of its registered trade mark Micatex by
the
use by respondent of its mark Mikacote.
49
S. 46(b) of the Act
S. 46 of the Act provides â
"No registration of a trade mark shall interfere with -
(a) any
bona fide
use by a person of his own name or of the
name of his place of business, or of the name of any of his predeces
sors in business,
or of the name of any such predecessor's place of
business; or
(b) the use by any person of any
bona
fide description of the
character or quality of his goods or services."
It was submitted by respondent's counsel that respondent was
protected from an infringement action by s. 46(b) of the Act because
its use of the mark Mikacote was a
bona f
ide
description of
the character or quality of its product.
50.
Appellant's counsel, on the other hand, contended that s. 46(b) does
not afford protection where the person concerned has used
so-called
descriptive words (which
prima facie
infringe a registered
trade mark) as a trade mark and he referred in this connection to
what is said by Chowles and Webster, op.
cit., at pp 223-4. While
there may be something to be said for this viewpoint, I do not find
it necessary to decide this issue
and will assume in respondent's
favour that the fact that it used the word Mikacote as a trade mark
does not prevent it from availing
itself of the defence provided by
s. 46 (b).
51
In
Shalom Investments (Pty) Ltd v Dan River Mills Inc
.,
1971
(1) SA 689
(A), this Court had occasion to consider the meaning of s.
46(b). OGILVIE THOMPSON JA, who delivered the judgment of the Court,
referred to with approval, and adopted as being equally applicable to
the provisions of s. 46 (b) of the Act, certain remarks of
LAWRENCE
LJ, made with reference to the identically-worded s. 44 of the
English Trade Mark Act of 1905 in the well-known case of
J B Stone
& C
o
Ltd v Steelace Manufacturing Co Ltd
,
(1929) 46
RPC 406
, at p 417. The learned Lord Justice said:
"In my opinion the object of Section 44 was to safeguard traders
in cases where the registered trade mark consisted of more
or less
descriptive words forming
52
part of the ordinary English language, without the use of which other
traders would find some difficulty in describing certain
qualities of
their goods; but was never intended and does not operate to enable a
trader to make use of a rival trader's registered
trade mark
consisting of a fancy word having no reference to the character and
quality of the goods in order more readily to sell
his own goods."
In the
Shalom Investments
case,
supra
, the respondent
was the proprietor of the mark "Dan River", registered in
regard to,
inter alia
, cotton goods and articles of clothing.
The respondent operated a large textile mill in the USA and the Dan
River mark was used
in relation to its textile products. Without
respondent's consent, appellant obtained material manufactured by
respondent, made
it up into ladies dresses and marketed
53
them, each with a label indicating that it was made from a Dan River
fabric. Appellant was held by the trial Judge to have infringed
respondent's mark. On appeal to this Court, in addition to attacking
the infringement finding, appellant sought to rely on s. 46
(b).
After the quotation from the
J B Stone
case, supra, OGILVIE
THOMPSON JA went on to deal with the applicability of s. 46 (b) - at
p 708 E - G:
"In the present case, respondent's registered trade mark 'Dan
River' does not fall within the category of 'more or less descriptive
words': it consists of words of a geographical connotation having no
reference to the character or quality of the dresses. I agree
with Mr
Welsh
's submission that, had the appellants indeed wished to
describe the character or quality of their dresses, they might have
said
that they were manufactured out of cotton material imported from
the United States; and, further, that there was no necessity for
appellants to use the registered trade mark 'Dan River' unless they
intended to make use of the goodwill
54
attaching to that particular mark. In my opinion the circumstances
point irresistibly to the appellants having indeed had the intention
to make use of the goodwill attaching to respondent's mark."
In
Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars
,
1963 (2) SA 10
(T), the Court was concerned with an application, in
terms of s. 136 of the Designs, Trade Marks and Copyright Act, 9 of
1916 (the
corresponding provision in the Act is s. 36), for a
trade
mark to be taken off the register on the ground
that for a period
of five years there had been no "bona fide user" thereof by
the registered proprietor in respect of
certain goods. With reference
to the meaning of the phrase "
bona fide
user", as
used in s. 136, TROLLIP J stated (at p 24 E) that it â
55
"means a user by the proprietor of his registered trade mark in
connection with the particular goods in respect of which it
is
registered with the object or intention primarily of protecting,
facilitating, and furthering his trading in such goods, and
not for
some other, ulterior object".
The decision of TROLLIP J was confirmed on appeal by this Court (see
Rembrandt (Edms) Bpk v Gulf Oil Corporation
,
1963 (3) SA 341
(A) ) and, in delivering the judgment of the Court, STEYN CJ endorsed
the interpretation of TROLLIP J in the following words (at
p 351 E):
"The question is whether the evidence shows that the user was
not
bon
a fide in the sense contemplated in sec. 136. I do not
propose to attempt a comprehensive definition of what the expression
"no
bona
fide
user" means in this section. Whatever
the full meaning of the phrase may be, it seems clear that user for
an ulterior purpose,
unassociated with a genuine intention of
pursuing the object for which
56
the Act allows the registration of a trade mark and protects its use,
cannot pass as a b
ona fide
user.
It seems to me that some assistance may be derived, by way of
analogy, from this case in regard to the interpretation of s. 46
(b)
of the Act.
Having regard to the aforegoing and without attempting to give an
exact or comprehensive definition of what constitutes a bona
fid
e
description for the purposes of s. 46 (b), it seems to me that what
the Legislature intended to safeguard by means of the provisions
of
the subsection is the use by a trader, in relation to his goods, of
words, which are fairly descriptive of his goods, genuinely
for the
purpose of describing the character or quality of the goods:
57.
the use of the words must not be a mere device to secure some
ulterior object, as for example where the words are used in order
to
take advantage of the goodwill attaching to the registered trade mark
of another. In the case before us the evidence establishes
that the
word "mica" is not one generally used in the paint trade to
describe paint products (cf. the
Coca
-
Cola Co of Canada Ld
v Pepsi-Cola of Canada Ld
,
(1942) 59 RPC 127
, at p 133).
Appellant's predecessor in title hit upon the idea of using the word
"mica" to create the. composite word
"Micatex"
for use as a trade mark; and appellant used this mark for its texture
coating. By dint of a vigorous marketing
and advertising campaign
and, no doubt, also because it was a good product,
appellant established a substantial market for Micatex
58
and consequently considerable goodwill attached to the trade mark.
Until respondent commenced using the marks Micadek and, later,
Mikacote, no other paint manufacturer had used the word "mica",
either by itself or in combination, as a trade mark for
his goods.
It is true that mica is, by percentage of weight, a minor ingredient
of both appellant's and respondent's products, and the products
of
other manufacturers as well. Had respondent genuinely wished by means
of some description to draw the attention of the purchasing
public to
the fact that its product contained mica, there are several obvious
ways in which it could have done so without in any
way infringing
59
appellant's trade mark. Yet respondent chose to do so by
incorporating the word "mica" (spelt "mika") in a
trade mark which bore a deceptive resemblance to appellant's trade
mark.
Mikacote is not a word in ordinary use. It is a fancy name, and the
way in which it was composed would not necessarily be apparent
to an
uninitiated person reading the word on the label attached to the tin
containing respondent's texture coating. There would
be no reason for
him to think that it was a word descriptive of the character or
quality of the paint in the container. A person
who genuinely wished
to communicate to the reader that his paint contained
60
mica and that it was a texture coating would not use the spellings
"Mika" and "cote". Clearly the respondent
used
the word as his trade name for the paint contained in the tin and not
as a fair description of the character or quality of
the paint.
Moreover, all the circumstances emphasized above, indicate the
probability that the name was devised so as to resemble
appellant's
trade mark Micatex; and that respondent used the name not for
purposes of description, but with the ulterior object
of deceiving or
confusing and of making use of the goodwill attaching to the Micatex
mark.
Accordingly,I am satisfied that respondent's use of its mark Mikacote
did not constitute the use
61
of a
bona fide
description of the character or quality of its
goods, within the terms of s. 46 (b) of the Act.
During the course of his argument respondent's counsel argued
strenuously that appellant could not claim a monopoly in the word
or
prefix "mica", a well-known mineral substance often used as
an ingredient of paint; that appellant was not entitled
to describe
its product, by means of a trade mark, which included the word
"mica", a non-distinctive word; and so on.
He referred in
this connection to cases such as Corn
Products Refining Co v
African Products Manufacturing Co
.,
1922 WLD 163
and
Aktiebolaget
Hjorth and Co. v Aktiebolaget
62
Optimus
,
1932 TPD 177.
In so far as counsel's argument is
aimed at the validity of the original registration of appellant's
trade mark, it is off target
because the trade mark has been
registered in part A of the register for more than seven years (see
s. 42 of the Act) and neither
of the requisites posed by subsections
(a) or (b) of s. 42 is present; and in so far as the argument is
really directed at the
defence provided by s. 46 (b), it has already
been dealt with.
In the result, therefore, it is ordered as follows:
63
(1) The appeal is allowed with costs, including the costs of two
counsel.
(2) The order of the Court a quo is set aside and there is
substituted therefore the following:
"Appeal is dismissed with costs".
M M CORBETT
MILLER JA)
HOWARD AJA)