SAFLII Note: Certain personal/private details of parties or witnesses have been redacted from this document
in compliance with the law and SAFLII Policy
IN THE HIGH COURT OF SOUTH AFRICA
GAUTENG DIVISION, PRETORIA
CASE NO: 050755/2022
(1) REPORTABLE: NO
(2) OF INTEREST TO OTHER JUDGES: NO
(3) REVISED: YES
DATE: 8 AUGUST 2024
SIGNATURE
In the matter between:
LA GROUP (PTY) LTD Applicant
and
GLENCAROL (PTY) LTD Respondent
___________________________________________________________________
ORDER
___________________________________________________________________
1. The respondent is restrained from infringing the rights of the applicant in its
trade mark registrations nos. 1988/08915 Pony device and 2010/05609 Pony
device, both in class 25, in terms of the provisions of sections 34 (1)(a) and/or
34 (1)(c) of the Trade Marks Act 194 of 1993 by using, in the course of trade, a
Horse device as depicted in paragraphs 1.4 and 2.6 and in annexures 19.1,
19.3 and 19.4 of the founding affidavit of Rae James, in relation to socks or
other items of clothing, or by using any other trade mark which is conf usingly or
deceptively similar to the applicant's aforesaid device trademarks.
2. The respondent is restrained from passing off its socks as those of, or as being
connected or associated with the applicant, its Pony device trademarks and/or
its socks by using upon or in relation to the respondent's socks, in any form or
manner of application, a Horse device as depicted in paragraphs 1.4 and 2.6
and in annexures 19.1,19.3 and 19.4 of the founding affidavit of Rae James or
by using any other trade mark or get -up which is likel y to cause confusion or
deception in relation to the applicant, its sock and/or Pony device trademarks.
3. The respondent is directed to deliver up to the applicant for destruction all
socks having permanently applied to them (by embroidering or otherwise) the
respondent's Horse and Rider device, and all printed matter including labelling
or packaging to which the aforesaid trademark has been applied, and which
may be separated from its socks, in its possession or under its control or that of
any of its agents.
4. The respondent is ordered to pay the applicant’s costs of suit, including the
costs of two counsel of which one is a senior -junior and the other a junior
counsel, to be taxed in accordance with Scale C.
___________________________________________________________________
JUDGMENT
___________________________________________________________________
NEUKIRCHER J:
1] The applicant is the proprietor of, in particular, two registered POLO device
trade marks1 as follows:
1 In class 25, the first diagram being registration no 1988/08915 for goods: “Clothing, including boots,
shoes and slippers; parts and accessories for the aforegoing”; and the second diagram being
registration no 2010/05609 for goods: “Clothing, footwear, headgear”.
DIAGRAM 1 DIAGRAM 2
2] They were described in LA Group (Pty) Ltd v Stable Brands (Pty) Lt d and
Another2 as “pictural devices of single polo players each astride a pony engaged in
play (SINGLE POLO PLAYER devices)”.3
3] The respondent is the proprietor of the MARK ANTHONY word mark. This
mark was registered with effect from 12 June 1997, in class 25 in relation to
“clothing, footwear, headgear”. On 11 November 2011 under Trade Mark Application
No. 2021/34678 in class 25 in relation to “clothing, footwear, headgear” , the
respondent applied for registration of its device, called “the RACER AND HORSE
DEVICE”. The device depicts a jockey sitting on a horse in full gallop, as depicted
below:4 5
2 2022 (4) SA 448 (SCA) para [88]
3 In this judgment referred to as the applicant’s mark or the applicant’s device
4 The registration of the respondent’s device is opposed by the applicant
5 In this judgment referred to as the respondent’s mark or the respondent’s device
4] Thus, when viewed side-by-side, the 3 devices appear as follows:
5] It is common cause that the article of clothing which informs the present
application is socks and thus the device when applied to this article of clothing is
very small.
6] It is also not disputed that the respondent’s product s swing tag depicts a get -
up used by the respondent in relation to its socks and is depicted thus:
7] In sum, the respondent’s get -up includes the word MARK ANTHONY as well
as the RACER AND HORSE DEVICE.
8] The applicant seeks to interdict the respondent f rom infringing its two trade
marks and seeks further trade mark infringement relief. It bases its application on
s34(1)(a) and s34(1)(c) of the Trade Marks Act 194 of 1993 (the Act). It also claims
relief founded on passing off, but this leg of the inquiry was not fully argued before
me, and the papers do not devote more than a cursory argument to this ground. In
the main, the applicant’s argument centred on s34(1)(a) and s34(1)(c) of the Act.
9] These provisions state the following:
“34(1) The rights acquired by registration of a trade mark shall be infringed
by-
(a) the unauthorized use in the course of trade in relation to goods or
services in respect of which the trade mark is registered, of an identical
mark or of a mark so nearly resembling it as to be likely to deceive or
cause confusion;
(b) *…
(c) the unauthorized use in the course of trade in relation to any goods or
20 services of a mark which is identical or similar to a trade mark
registered, if such trade mark is well known in the Republic and the use
of the said mark would be likely to take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the registered
trade mark, notwithstanding the absence of confusion or deception:
Provided that the provisions of this paragraph shall not apply to a trade
mark referred to in section 70(2)…”
10] In Gulf Oil Corporation v Rembrandt Fabrikante & Handelaars (Edms) Bpk 6,
Trollip J said
6 1963 (2) SA 10 (T) at 24D-E
“…the system of registering trade marks is designed to protect, facilitate and
further the trading in the particular goods in respect of which the trade mark is
registered. The very name, 'trade mark', connotes that, and the definition
thereof in sec. 96 of the Act confirms it. I would therefore say that 'bona
fide user' in sec. 136 means a use 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.”
11] In Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty)Ltd 7, the
court added that the trademark the statutory system of trademark protection
“…serves as a badge of origin of the goods or services to which it is applied.
The reference to a badge of origin is directed at the original source of the
goods or services, not the mechanism through which they were acquired.
Thus, to say that one bought a pair of shoes at A&D Spitz or some other well -
known shoe store merely identifies the shop where the goods were purchased
and not their origin. The shoes in question will in turn bear a trademark, such
as Carvela or Kurt Geiger or Jimmy Choo. Those are the marks that indicate
their origin. The mark A&D Spitz identifies the shop and not the goods that
can be purchased there.”
12] With this background in mind, this leads me to the test to be applied in respect
of the two provisions of the Act upon which the applicant relies to found its relief.
Section 34(1)(a) of the Act
13] The test to be applied in respect of an infringement in terms of s34(1)(a) is set
out in Plascon-Evans Paints (Pty) Ltd v Van Riebeek Paints (Pty) Ltd 8 as:
“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
7 (1088/2015) [2016] ZASCA 118 (15 September 2016)) para 13
8 1984 (3) SA 623 (A) at 640 - 641
show that every person interested or concerned (usually as customer) in the
class of goods for which his trade mark has been registered would 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.
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.”
14] In Societé De Produits Nestlé SA & Another v International Foodstuffs Co and
Others9 (the Nestlé judgment) it was stated that:
“…if the comparison is to be made objectively and through the eyes of the
ordinary consumer, the interpretation of the trademark allegedly infringed
must be conducted in the same manner. Consequently, the subjective
intention of the applicant for the mark…is irrelevant.”
15] In considering whether there is a likelihood of deception or confusion, the
court is required to exercise a value judgment on the question of the likelihood of
deception or confusion
“… based on a global appreciation of the two marks and the overall
impression they leave in the context of the underlying purposes of a trade
mark, which is that it is a badge of origin. The value judgment is a large ly a
matter of first impression and there should not be undue peering at the two
marks to find similarities and differences. It is nonetheless not sufficient for
judges merely to say that their impression is that the alleged mark is, or is not,
likely to cause confusion or deception. There is an obligation to explain why
the judge holds that view.”10
16] The likelihood of confusion is established if the two marks in question are
“confusing only for a short time, sufficient to attract initial interest , albeit that the
confusion might later be cleared up.”11
Section 34(1)(c) of the Act
17] The test in regards of s34(1)(c) is however, different as s34(1)(c)
9 (100/2014) [2014] ZASCA 187 (27 November 2014); [2015] 1 All SA 492 (SCA) para 12 (Nestlé SA)
10 Yuppiechef Holdings supra para 26
11 Orange Brand Services Ltd v Account Works Software (Pty) Ltd (970/12) [2013] ZASCA 158 (22
November 2013) par 13
“aims to prote ct th e commercial value that attaches to the reputation of a
trade mark, rather than its capacity to distinguish the goods or services of the
proprietor from those of others.”12
Thus, the nature of the goods and services in relation to which the offending
mark is used is immaterial, and it is also immaterial that the offending mark
does not confuse or deceive.
18] In the Nestlé judgment, the court stated:
“[51] The protection of s34(1)(c) extends beyond the primary function of a
trademark which is to signify the origin of goods or services. It strives to
protect the unique identity and reputation of a registered trademark which
sells the goods. Its object is to avoid ‘blurring’ and ‘tarnishment’ of the
trademark.13
[52] The advantage or detriment complained of must be of sufficiently
significant degree to restrain the use of the trademark, The court must be
satisfied by evidence of actual detriment, or of unfair advantage, but
depending on the primary facts, these may be self-evident…”14
19] Thus, the applicant must establish:
(a) the unauthorised use of the mark;
(b) in the course of trade;
(c) in relation to any goods or services;
12 National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA) para 11
13 Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark
International 2005 (2) SA 46 (SCA) (Laugh It Off Promotions); Laugh It Off Promotions CC v South
African Breweries International (Finance) BV t/a Sabmark International (Freedom of Expression
Institute as Amicus Curiae) 2006 (1) SA 144 (CC) para 41
14Verimark (Pty) Ltd v Bayerische Motorenwerke Aktiengeschelleschaft; Bayerische Motorenwerke
Aktiengeschelleschaft v Verimark (Pty) Ltd 2007 (6) SA 263 (SCA) para 5
(d) the mark must be identical or similar to the registered trade mark;
(e) the trade mark must be well known in the Republic;
(f) that the use of the respondent’s mark would be likely to take unfair
advantage of, or be detrimental to the distinctive character or the repute
of the registered trade mark.15
Background
The applicant’s device
20] L’Uomo (Pty) Ltd was formed in January 1976. It was established to
manufacture men’s shirts for the top end of the market under the POLO trade mark
and POLO Pony device. L ’Uomo was acquired by the applicant in 1988 for
approximately R29 million . It is a manufacturer, distributor and retailer of a wide
range of clothing, including socks. The applicant’s device trade marks are used on its
goods and are used both alone, or with the POLO word trade mark and the latter is
also used alone.
21] The evidence adduced by the applicant as to its background, dis tinctiveness,
goodwill and reputation informs its case that the POLO mark has earned, and still
enjoys, an immense goodwill and reputation and that the POLO trade marks have
become firmly established in South Africa for more than 40 years. This, it states is
because:
a) the applicant has made significant financial investments , established
numerous stores and set up a considerable wholesale and retail
infrastructure in its promotion and use of its marks. It has spent some
R98,9 on advertising between 2006 and 2022. In 2021/2022 an amount of
R9,8 million was spent;
b) over R1,2 billion has been generated in sale s alone over the past three
years;
15 Laugh It Off Promotions supra also at para 34
c) the applicant’s marks and devices have been firmly established in the
South African market place as indicators of origin since approximately
1976, and “[t]he general public or a wide segment thereof, more specifically
consumers who buy clothin g, footwear, bags, and the like, would identify goods
bearing the POLO trademarks as originating from the [applicant] . It has thus
established that its trademarks have in fact become distinctive through their
use.”16
22] The allegations made by the applicant are not made in vacuo – they find their
substance in the information put before this court as regards its rigorous and
intensive marketing strategy which includes advertising campaigns in magazines,
newspapers, on social media platforms , on television and in its branded stores and
other retail stores. In LA Group , Schippers JA comprehensively set out the
background that informed the applicant’s case which has been repeated in the
papers before me17:
“[110] The appellant adduced evidence that its POLO (word) trade mark had
been used continuously for a long time since its registration in 1976 – more
than 40 years at the time when the counter -application was heard. The
appellant’s predecessor in title, L’Uomo (Pty) Ltd was formed in January 1976
by Mr Ronald Lange, Mr Gordon Joffe and Mr Freddy Barnett. The company
was established to manufacture men’s shirts for the top end of the market. Mr
Joffe, who recently passed away, was one of South Africa’s experts in fabric
selection and designing men’s shirts, and was appointed as the managing
director. The shirts were marketed and branded with the mark POLO and the
POLO PONY device depicted in registration nos. 1976/00659 and
1978/01082.
[111] The appellant annexed a newspaper article in May 1976 showing the
early popularity of the POLO trade marks amongst consumers of goods
bearing the mark. From May 1978 an average of 1000 shirts branded with the
16 LA Group para 118
17 LA Group paras 110 to 117
POLO trade marks were sold in a day and POLO shirts became the most
sought-after garment in the marketplace. The appellant has more than 340
retail customers who have in excess of 600 stores across South Africa, at
which goods branded with its POLO and POLO PONY & PLAYER device
trade marks have been sold. These include stores in all the provinces of
South Africa – Gauteng, Eastern Cape, Limpopo, North West, Western Cape,
KwaZulu-Natal, Free State, Mpumalanga and the Northern Cape. As far back
as 1988 Edgars has been selling goods with the POLO and POLO PONY &
PLAYER device trade marks. There are some 106 John Craig stores that sell
goods bearing the POLO and POLO PONY & PLAYER device marks. These
marks have been used on a wide variety of goods such as sportswear,
casualwear, corporate wear, footwear, bags, luggage, sunglasses and home
textile goods.
[112] The appellant’s POLO stand -alone stores are located in major
shopping malls in the country, namely Sandton City, Eastgate Mall in
Johannesburg, Menlyn Shopping Centre in Pretoria and the V&A Waterfront
in Cape Town18. It provided statistics which showed that between March 2013
and February 2014 a total number of 250 200 people visited these stores.
During 2011 and 2012 goods bearing the POLO trade marks were advertised
on billboards situated on roads that carry high volumes of traffic 19. These
advertisements were viewed almost 300 000 times a day over a 90 -day
period.
[113] Through the use of its POLO and POLO PONY & PLAYER device
trade marks the appellant has generated net sales in excess of R1.2 billion
only between 2012 and 2015. The appellant and its permitted users
18 It presently owns 19 brand stand-alone retail outlets and the retail figures for 2021/2022 amount to
R205 million
19 The applicant’s advertising including displays on billboards, for example:
• on the M1 North and N1 North highways in Gauteng and on Sandton Drive – all of which
carry higher volumes of traffic
• In November and December 2019 on a digital billboard displayed alongside William Nicol
Drive (now Winnie Mandela Drive)
• During March 2020 and October 2021, POLO branded goods were advertised and
promoted on billboards displayed along Greyston Drive in Sandton, Menlyn Shopping
Centre in Pretoria, Ballyclare Drive in Bryanston and Cresta Mall in Johannesburg.
generated net sales in excess of R300 million per annum from goods bearing
these marks for every financial year since 2012. In the 2017 and 2018
financial years the net sales figures increased to more than R400 million per
annum. These sales figures alone show that the appellant’s goods sold under
the POLO trade marks have become well -known and popular amongst South
African consumers. Moreover, the appellant’s advertising expenditure in
promoting its POLO and POLO PONY & PLAYER device trade marks
between 2007 and 2018 was substantial: approximately R62.5 million.
[114] In 1997 the appellant custom -designed and manufactured POLO shirts
for the late former President Nelson Mandela. The evidence in this regard is a
photograph with the inscription ‘Shirts for an Icon’, which depicts President
Mandela, the appellant’s director, Mr Joffe, and the two ladies who made the
shirts. Also part of the evidence is an article published in the Cape Times
newspaper on 26 August 1997, describing how the appellant had specially
manufactured a shirt for President Mandela which became known as the
Olympic Shirt, worn by the President when the City of Cape Town launched
its bid to host the Olympic games in 2004, and how it came about that the
appellant started making shirts for the President. The publicity the appellant
got from this event, publicised to the entire nation, was immeasurable: it was
marketing gold. There is no doubt that the overwhelming majority of people in
the country would have identified the Olympic Shirt and with it the POLO trade
mark, as emanating from the appellant.
[115] The appellant presented evidence proving the use of its trade marks on
social media and other advertising media. Between 1 April 2017 and 31
March 2018 the appellant had 151424 unique visits to its internet website
w[...], which is just over 12000 people per month on average 20. The appellant
provided more than 40 examples of the widespread advertising of its POLO
branded goods in magazines dating back to 1981, including GQ, Men’s
Health, Living and Loving, Golf Digest and Edgars Club magazines.
20 This grew to 332 426 between December 2021 and 29 March 2022
[116] The appellant also advertised its POLO branded goods through the
sponsorship of various public events that reached a wide segment of the
population, such as the Western Province Rugby Team in 1983, the South
African Polo team in 2005, the POLO Africa Cup event in 2006 (4500 people
attended this event over a three -day period) and the Cape Town International
Jazz Festival in 2010, 2011 and 2012. The latter event, widely covered online
and by the print and broadcast media, was attended by some 33500 peop le
from all parts of the country in 2010 and 2011, respectively. The appellant
sponsored the South African Rugby team (the Springboks) during the 1999
Rugby World Cup. The shirts, suits and ties worn by the team were custom
made by the appellant. It annexed a newspaper article published in Die
Burger newspaper of 6 September 1999, containing a photograph of Mr Joffe
and the clothing branded with its trade marks. The article stated that the
appellant had sponsored all the clothing that the Springboks would wear when
they did not play rugby. Virtually the entire country followed the Rugby World
Cup in 1999 and the majority of people would have identified the POLO trade
marks with the appellant’s goods.
[117] The appellant has also participated in other promotional and social
responsibility activities in which the POLO trade marks featured, that were
widely publicised and reached a significant part of the population. These were
the Pink Pony campaigns in 2011 to 2013 to raise awareness of breast cancer
and funds for the Cancer Association of South Africa. The well -known
Springbok rugby player, the late Mr Chester Williams, and Ms Leanne Manas,
the presenter of Morning Live , a national television breakfast show, were
POLO brand ambassadors. The appellant also sponsors the clothing worn by
the presenters of the ‘Toks and Tjops’ televi sion show, screened on ‘Kyknet’
and ‘SuperSport 1’ channels on the DStv pay-channel.”
23] According to the applicant, t he wholesale sales figures of the applicant’s
goods in class 25 (apparel and footwear) bet ween 2006 and 2022 amount to over
R2,4 billion and in the 2021/2022 financial year equate to some R440 million. The
sale of the applicant’s socks alone equates to almost R20,9 million for the period
2013 to 2022, and in 2021/2022 financial year to R2,8 million alone. In 2019/2020
the sales of the applicant’s socks of R2,3 million translated to the sale of 178 336
pairs of socks. Over the license period, considerably more than a million pairs of
these socks were made and sold.
24] The applicant also offers its goods for sale on its website. Since November
2018, its online sales have increased by 600 percent. In addition to the website , the
applicant uses other social media platforms to sell and promote its goods, such as
Facebook and Instagram:
a) it has more than 136 000 “likes” on Facebook – up from 53 000 in April
2019;
b) it has 59 000 Instagram followers – up from 12 000 in April 2019.
25] The applicant’s own social media presence does not take into account the
advertisements placed on other websites such as GQ, Glamour (both magazines)
and wantedonline.
26] Thus, says the applicant, it has created a strong reputational link and
association between it, its trade marks and its products and services.
27] The respondent takes issue with the above statement. It argues that the
majority of the evidence that has b een attached in respect of the a pplicant’s alleged
amounts to hearsay evidence, which is inadmissible and does not justify the
conclusion that the Applican t’s device is well -known. It argues that, in any event,
evidence of use is not necessarily proof of reputation.
28] Interestingly, the respondent offers not one shred of cogent evidence to
demonstrate that the applicant’s device and mark is not well-known in the market or
that they have become distinctive in their use. Their denial of this fact, and the obiter
in the LA Group majority judgment, simply does it no service. This is especially so in
light of the fact that the evidence on behalf of the applicant is put up by Mr Rae
James, who has been the applicant’s Group Legal Adviser since 2006 and who
states that the facts fall within his personal knowledge, that certain of the facts have
been extracted from “properly kept and continuous records of the applicant, which
are under my control and its licensees” and he also refers to the confirmatory
affidavits of applicant’s employees.
29] Thus, t he denial is no more than attempted obfuscation of the facts of this
matter. In any event, in The Public Protector v Mail & Guardian Limited and Others 21
the minority court stated:
“. . . Courts will generally not rely upon reported statements by persons who
do not give evidence (hearsay) for the truth of their contents. Because that is
not acceptable evidence upon which the court will rely for factual findings,
such statements are not admissible in trial proceedings and are liable to be
struck out from affidavits in application proceedings. But there are cases in
which the relevance of the statement lies in the fact that it was made,
irrespective of the truth of the statement. In those cases the statement is not
hearsay and is admissible to prove the fact that it was made. In this case
many such reported statements, mainly in documents, have been placed
before us. What is relevant to this case is that the document exists or that the
statement was made and for that purpose those documents and statements
are admissible evidence.”
30] However, t he respondent has had am ple opportunity to properly refute the
allegations set out in the LA Group judgment which are repeated and amplified in
this application – it has wholly failed to do so.
The respondent’s device
31] The respondent’s predecessor was a company known as Glenmar, It was
established in 1954 by the Hack family . It was then bought and taken over by the
producers and manufacturers of Jockey South Africa. In 2007, Glenmar was sold
and split into two companies 22 by the current shareholders of the respondent . In
2010 the two companies then merged.
21 The Public Protector v Mail & Guardian and Others [2011] ZASCA 108; 2011 (4) SA 420 (SCA)
para 14.
22 Being Glencarol (Pty) Ltd and Martilon (Pty) Ltd
32] According to the respondent, it is the largest sock producer in Southern Africa
and it specialises in manufacturing fashion, sport, technical, workwear and industrial
socks which it supplies to both independent and larger retailers. It manufactures
socks for numerous well -known brands such as Jockey, O’Ne Sport, Bioguard and
Foot Fresh.
33] The respondent is also the proprietor of the MARK ANTHONY trade mark
which is a word mark. Until September 2021 , it was the applicant’s appointed
licensee and distributor in relation to socks. S hortly after its contract with the
applicant ended in September 2021, it decided to “modernise” its MARK ANTHONY
BRAND. Whilst the original idea was to adopt a logo featuring an Italian warrior on a
horse, it was ultimately decided to adopt a “more modern design in line with
international trends and in order to reach a wider market”. Thus it was decided to
adopt a RACER AND HORSE DEVICE based on its shareholder and director ’s23
love of horse-racing.
34] Thus, the device pictured in Diagram 1 became the device picture d in
Diagram 2 below
Diagram 1 Diagram 2
35] The respondent’s case is, inter alia, that the applicant’s device and it’s device
do not resemble each other and are therefore not likely to either deceive or cause
23 One Mr Towell. According to respondent, Mr Towell owns award winning racehorses and sponsors
numerous horse racing events
confusion24 and that its device does not take unfair advantage of and is not
detrimental to the distinctive character of the applicant’s device25.
36] To be specific:
a) the applicant’s PONY device depicts a pony or horse in motion, galloping
to the right, with a rider wearing a cap or helmet. It also features the rider
holding a polo mallet in the air;
b) the respondent’s device features a crouched jockey on a horse stretched
in full gallop.
37] The respondent’s case is that one cannot claim simply that because th e
device depicts or incorporates a horse and rider feature that it is similar and
therefore the objective s of s34(1)(a) or s34(1)(c) are achieved by that fact alone.
This, it argues, will allow the applicant to enforce a monopoly over every depiction of
a horse and/or horse and rider.
38] Furthermore, it argues that there are a number of horse devices, some of
which feature riders, used by other brands in Class 25, depicted below:
24 Section 34(1)(a)
25 Section 34(1)(c)
39] It thus argues that all of these horse devices, some of which feature riders,
are demonstrative of the varied application of such devi ce in class 25 in the
retail sphere, It argues that the applicant is attempting to create “unjustified
monopolies in common words or devices that have become common in the
trade.”
40] But in my view, all the trade marks set out in paragr aph 38 supra, are
markedly different from that of the applicant: most include distinct ive and
dominant word marks such a s “Levi Strauss & Co ”, “Longchamp”, “ Coach”;
and in others, the horse and rider are markedly different to the applicant’s
device26 and can therefore be ignored 27. In respect of the U.S. POLO ASSN
device, the applicant has launched a challenge.
26 Such as the BURBERRY mark which depicts a thickset horse carrying a knight in armour with a
lance standard and shield and which includes a dominant work mark
27 Such as FOUGANZA which is purely aesthetic decoration and not trade mark use
41] What lends further credence to the applicant’s case is the argument that there
is confusion or deception in the market: on 12 October 2022, Mr Guldenpfennig 28
visited PK Outfitters in Fordsburg. He asked for polka dotted POLO socks. The sales
assistant gave him polka dotted socks manufactured by the respondent and insisted
that they were POLO socks.
42] Two points arise from this:
a) firstly, given that the device marks are not enunciated, there is no aural
comparison to be made to further remove any deception or confusion –
thus the deception or confusion arise from the visual and conceptual
differences between the applicant’s and the respondent’s devices;
b) secondly, proof of actual confusion is not a requirement in order to prove
the likelihood of deception or confusion29, but evidence of this may well go
a long way to assisting the applicant in proving its case.
43] In Adidas the SCA confirmed the following:
“[22] 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’.”
44] In this matter, the applicant alleges that its marks are globally and locally well-
known, distinctive and have acquired significant reputation in the market. But this
28 The brand protection manager of Skye Distribution (Pty)Ltd which is a wholly owned subsidiary of
the applicant
29 Adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3 (28 February 2013) (Adidas
AG)
does not mean that because of this , purchasers will automatically be able to
distinguish it from its competitors as:
“[24] In my view, the fact that the first appellant’s three stripe trademarks are
famous, does not justify a finding that there is no likelihood of deception or
confusion because purchasers of the goods will see immediately that the
respondent’s marks are not the first appellant’s trademarks. In my view the
contrary is true. The more distinctive the trademark is, or the greater its
reputation, the greater the likelihood that there will be deception or confusion
where a similar mark is used on competing products. Purchasers who are
used to seeing the first appellant’s trademarks will still experience imperfect
perception or imperfect recollection and will be far more likely to conclude that
the similar mark is the first appellant’s trademark or is associated with the first
appellant’s trademark and consequently that the competing products come
from the same source. That is clearly the position in other jurisdictions where
the law is comparable with ours.”30
45] And at paragraph 26 of Adidas AG, the SCA stated:
“…As already pointed out the likelihood of deception or confusion is increased
by the distinctiveness or reputation which the registered trade marks have.”
46] The respondent seeks to brush off the incident with Mr Guldenpfennig by
stating:
a) Mr Guldenpfennig specifically asked for socks with large polka dots,
declined socks with small polka dots and he does not state whether the
applicant actually manufactures socks with large polka dots;
b) he was handed socks with large polka dots which had the respondent’s
horse device applied to them;
30 Adidas AG supra
c) he failed to attach a photograph of the socks he was given by the store
clerk.
47] But Mr Guldenpfennig states that the sales assistant “pointed to the Horse
device on the socks and said to me that they were POLO socks, just of a slightly
different design…” In my view, and in light of this evidence, the respondent’s defence
is contrived. Furthermore, the respondent fails to adduce any evidence of its own
either that the store in question does not stock the socks allegedly given to Mr
Guldenpfennig, or by conducting a similar experiment of its own. There is thus no
true dispute of fact on this issue. Insofar as Mr Guldenpfennig has provided a
comprehensive confirmatory affidavit explaining what transpired, it cannot be said
that this evidence is hearsay or insufficient.
48] The respondent has conceded that the similarity between its device and that
of the applicant is the HORSE AND RIDER component of the two devices but that, it
argues, is where the similarity ends . It also argues, that in addition to the difference s
pointed out in paragraph 36 supra:
a) the applicant’s device depicts a trotting horse, depicted from an angular
front view, with a polo player rider sitting in an upright position holding a
mallet. Conceptually, the applicant’s device connotes the sport of polo;
b) the respondent’s device depicts a full side view of a horse stretched in full
gallop with a jockey in a crouched position. Its device thus connotes
horseracing.
Thus, says respondent, the two devices connote two very different activities31
that are sufficient to differentiate them. Even if that is insufficient, It argues,
then the small differences in each device would be sufficient to avoid a finding
of similarity and resemblance.
31 Which the respondent argues connote two distinctly different activities: one is a purely sporting
activity and the other a commercial (either for profit/gambling) activity
49] But the devices, viewed through the eyes of the ordinary consumer would be
perceived as a rider on a horse and it would connote a sporting event . The concept
of the event being a sporting activity versus a commercial activity would also be lost
on the notional ordinary consumer. Whether the horse is viewed at a gallop or trot, or
whether the rider is seated or crouched over the horse is not sufficient, in my view, to
distinguish between the marks as the notional ordinary consumer would focus on the
horse and rider element of each device initially, and that would be sufficient to cause
the initial confusion, even if that confusion is cleared up later . As stated in Adidas
“…the more distinctive the trade mark is, or the greater its reputation, the greater the
likelihood that there will be deception or confusion where a similar mark is used on
competing products .” Added to this is the element of “imperfect perception ” or
“imperfect recollection” and the likelihood of deception or confusion becomes greater
especially as there is no aural element to these devices which ma y have assisted a
consumer in clarifying any immediate confusion.
50] I am therefore of the view that the applicant has succeeded in proving the
elements necessary to found the relief in terms of s34(1)(a) of the Act, and the
application must succeed.
51] But even if I am wrong on the s34(1)(a) relief, in my view there is sufficient to
found relief under s34(1)(c). I have already set out the test supra. Under this test, the
nature of the goods or services in relation to which the offending mark is used, is
immaterial, and it is also immaterial that the offending mark does not confuse or
deceive. The Nestlé judgment provides that the advantage or detriment complained
of must be sufficiently significant degree and the court must be satisfied by evidence
of actual detriment, or of unfair advantage which, depending on the facts, may be
self-evident.
52] It is clear from the facts set out supra that the applicant’s mark is well-known
in South Africa and enjoys an immense reputation and goodwill. It is also clear from
the financial information provided by the applicant that the applicant’s marks are of
substantial economic and commercial value because they generate future sales of
the applicant’s goods. As a result of this, the applicant argues that blurring or
tarnishing of its marks will dilute the ir commercial value and have a significant
financial and reputational impact on its business.
53] The parties are direct commercial competitors. Their goods compete in the
market in the same class . The evidence of Mr Guldenpfennig cannot be either
understated or ignored. Given what occurred, the point is that it is clear that the
respondent would significantly benefit in the consumer’s association of its goods with
the applicants given the distinctive character and repute of the applicant’s marks and
device. This association, would there fore result in the loss or diminishment of
advertising value and selling power of the applicant’s marks and the resultant
enhancement of the respondent’s.
54] In National Brands Limited v Cape Cookies CC and Another 32 the court
stated:
“National Brands submitted that Cape Cookies would be likely to take unfair
advantage of ‘the power of attraction, the prestige and repute’ of the
SALTICRAX mark. It submitted with some force that this had been built up
over a considerable period and with a considerable investment of money.
Cape Cookies chose to go into direct competition with it. The use of the
similar mark will enable Cape Cookies to ‘ride on the coat tails’ of National
Brands as regards the well-established SALTICRAX mark without itself having
to expend time and money to achieve an equally competitive position. It was
submitted that this was why Cape Cookies chose a mark similar to
SALTICRAX as opposed to a different mark under which it could have traded
without that advantage.”
55] I am of the view that these words apply equally to the facts of this matter.
56] Thus, irrespective of whether the case is made out under the provisions of
s34(1)(a) or s34(1)(c), the applicant is entitled to the relief sought in the Notice of
Motion.
32 (309/2022; 567/2022) [2023] ZASCA 93 (12 June 2023) para 40
57] There is no reason why costs should not follow the result, including costs of
two counsel. Both parties are represented by two counsel. The matter is also
complex and the issues of great importance to both parties. I am therefore of the
view that costs on Scale C are justified.
ORDER
58] The order is the following:
1. The respondent is restrained from infringing the rights of the applicant
in its trade mark registrations nos. 1988/08915 Pony device and
2010/05609 Pony device, both in class 25, in terms of the provisions of
sections 34 (1)(a) and/or 34 (1)(c) of the Trade Marks Act 194 of 1993
by using, in the course of trade, a Horse device as depicted in
paragraphs 1.4 and 2.6 and in annexures 19.1, 19.3 and 19.4 of the
founding affidavit of Rae James, in relation to socks or other items of
clothing, or by using any other trade mark which is confusingly or
deceptively similar to the applicant's aforesaid device trademarks.
2. The respondent is restrained from passing off its socks as those of, or
as being connected or associated with the applicant, its Pony device
trademarks and/or its socks by using upon or in relation to the
respondent's socks, in any form or manner of application, a Horse
device as depicted in paragraphs 1.4 and 2.6 and in annexures
19.1,19.3 and 19.4 of the founding affidavit of Rae James or by using
any other trade mark or get -up which is likel y to cause confusion or
deception in relation to the applicant, its sock an d/or Pony device
trademarks.
3. The respondent is directed to deliver up to the applicant for destruction
all socks having permanently applied to them (by embroidering or
otherwise) the respondent's Horse and Rider device, and all printed
matter including labelling or packaging to which the aforesaid
trademark has been applied, and which may be separated from its
socks, in its possession or under its control or that of any of its agents.
4. The respondent is ordered to pay the applicant’s costs of suit,
including the costs of two counsel of which one is a senior -junior and
the other a junior counsel, to be taxed in accordance with Scale C.
NEUKIRCHER J
JUDGE OF THE HIGH COURT
GAUTENG DIVISION, PRETORIA
Delivered: This judgment was prepared and authored by the Judge whose name is
reflected and is handed down electronically by circulation to the parties/their legal
representatives by email and by uploading it to the electronic file of this matter on
CaseLines. The date for hand-down is deemed to be 8 August 2024.
Appearances
For the applicant : Adv G Marriot with Adv G Khumalo
Instructed by : Mike Du Toit Attorneys
For the respondent : Adv AJ Bester SC with Adv H Worthington
Instructed by : Fasken Attorneys
Matter heard on : 11 March 2024
Judgment date : 8 August 2024