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[2000] ZASCA 192
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Bata Ltd v Face Fashions CC and Another (206/98) [2000] ZASCA 192; 2001 (1) SA 844 (SCA); 2000 BIP 278 (SCA) (29 September 2000)
REPUBLIC
OF SOUTH AFRICA
IN
THE SUPREME COURT OF APPEAL
OF
SOUTH AFRICA
REPORTABLE
Case number: 206/98
In
the matter between:
BATA
LIMITED
Appellant
and
FACE
FASHIONS CC
1
st
Respondent
MICHAEL
TERRENCE GORMLEY
2
nd
Respondent
CORAM
:
SMALBERGER,
VIVIER, NIENABER, HARMS JJA
and MELUNSKY AJA
HEARD
:
7
SEPTEMBER 2000
DELIVERED
:
29
SEPTEMBER 2000
__________________________________________________________________
Trade
marks - alleged infringements -
sections 34(1)(a)
and (c) of the
Trade Marks Act, 1993
__________________________________________________________________
JUDGMENT
_____________________________________________________________________________________________________________________
MELUNSKY AJA
:
[1] On 19 November 1997 Meskin J reserved judgment in an
opposed application brought by the appellant against the respondent
in
the Durban and Coast Local Division. Thereafter he prepared a
draft of a judgment in manuscript. During December 1997, and before
judgment was delivered, the learned judge was regrettably killed in a
motor vehicle accident. In January 1998 the parties to the
application agreed to be bound by the draft subject to their rights
of appeal. Pursuant to the agreement Broome DJP handed down
the late
Meskin J’s draft as a judgment of the Court and in terms
thereof ordered that the application be dismissed with
costs. Some
months later Galgut J granted the appellant leave to appeal to this
Court against the judgment and order. In the
circumstances the
appeal is properly before us.
[2] The appellant is a company incorporated under the
laws of Canada. It is the proprietor of a number of trade marks
which were
duly registered in class 25 under the Trade Marks Act, 62
of 1963. For the purposes of the appeal six of the trade marks have
relevance, namely:
Trade Mark B71/4510, consisting of the word “Power”,
with date of registration 4 October 1971, in respect of “all
footwear”;
Trade Marks B76/2864 and B76/2866, each consisting of
the word “Power” and device, with dates of registration 9
June
1976, in respect of “all footwear”;
Trade Mark 83/4033, consisting of the words “Power
Points”, with date of registration 23 June 1983, in respect of
“articles
of clothing including footwear of all kinds”;
Trade Mark 84/2701, consisting of the word “Power”, with
date of
registration 3 April 1984, in respect of “articles of
clothing”;
Trade Mark B84/4186, consisting of the word “Power”
and device, with date of registration 9 May 1984, in respect of
“clothing, including boots, shoes and slippers”.
Futura Footwear Limited (“Futura”) is a
company incorporated under the company laws of South Africa with its
principal
place of business in Pinetown, KwaZulu-Natal. It is
licenced and permitted by the appellant to use approximately 400
trade marks
which the appellant holds, including the six specified
above. Futura uses the Power and Power and device marks on footwear
which
it both manufactures and imports for re-sale in South Africa
and Southern Africa. It also sells items of clothing on which the
said trade marks are displayed.
[3] The second respondent is a member of the first
respondent, a close corporation which carries on business in Kloof,
KwaZulu-Natal.
He is also a member of another close corporation,
Power House CC, which carries on business at the same address as the
first respondent.
Power House CC is authorised by the first
respondent to manufacture and sell clothing under the name “Power
House”
or “Powerhouse”, usually, but not
invariably, accompanied with a distinctive dog device. The first
respondent and
Power House CC have consistently used these trade
marks on clothing since 1987 and on 3 July 1997 the first respondent
became the
registered proprietor of the dog device.
[4] The appellant seeks an order
restraining the respondents from,
inter
alia
, making or
selling articles of clothing “bearing the trade marks
Power
or
Power House
or
Powerhouse
”.
In addition it sought an order interdicting the respondents from
passing off the said clothing
“
as having an association or being connected with
the business or goods of the [appellant]”.
[5] The issues relied upon on the
appellant’s behalf in this Court are considerably narrower than
those raised in the court
a
quo
and in the
heads of argument which, I add, were not prepared by the appellant’s
leading counsel on appeal. In this Court
counsel expressly disavowed
placing reliance upon passing off and confined his argument to the
submission that the respondents
had infringed the appellant’s
trade mark registrations in terms of ss 34(1)(a) and (c) of the Act.
A submission that the
respondents had infringed the registrations in
terms of s 34(1)(b), which was raised in the court
a
quo
, was not
persisted in on appeal.
[6] Before dealing with the essence
of the appellant’s argument relating to the alleged s 34(1)(a)
infringement, one matter,
which initially seemed to be a point of
contention, may be disposed of. It concerns a submission raised on
the appellant’s
behalf in the court
a
quo
and the heads
of argument to the effect that the mere use of the word “Power”
by the respondents, although not used
alone but in conjunction with
another word, constitutes an infringement simply because it is “use
... of an identical mark”.
This submission, too, was not
persisted in on appeal. Indeed, I understood counsel to accept,
quite correctly in my view, that
the argument could not prevail in
view of the judgment of Schutz J in
Standard
Bank of South Africa Ltd v United Bank Ltd and Another
1991
(4) SA 780
(T) at 786
et
seq.
It is only
necessary to mention that although
Standard
Bank
was decided
under the Trade Marks Act of 1963, which made no express reference to
an identical mark, this Court held in
Berman
Brothers (Pty) Ltd v Sodastream Ltd and Another
1986
(3) SA 209
(A) at 232H-233A, that the reference to the use of a mark
“so nearly resembling” a registered mark in the 1963 Act,
impliedly included the use of an identical mark (see
Standard
Bank
at 786 E-G and
795I).
[7] In the result it was not contended on the
appellant’s behalf that the infringement in terms of s 34(1)(a)
consisted in
the respondents’ use of an identical mark. The
contention was that the respondents make use of a mark so nearly
resembling
trade marks 83/4033, 84/2701 and B84/4186 (in so far as
the latter mark relates to clothing) as to be likely to deceive or
cause
confusion. The respondents do not dispute that the appellant
and Futura make extensive use of the word “Power”, with
or without a device, on footwear and particularly on boots and shoes
worn for sporting activities. They contend, however, that
very
little use is made of the mark on clothing and, moreover, that its
use on clothing is confined to sportswear such as tracksuits,
shorts,
shirts and sweat tops, whereas the first respondent and Power House
CC use the “Power House” name on a different
type of
clothing, namely leisure wear worn by the “trendy youth”.
The short answer to the respondents’ contention
is that in
infringement proceedings a Court has regard to the notional use to
which the plaintiff may put its mark, 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
...”
(
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A) at 641H-I). The trade marks relied upon by the
appellant in respect of the alleged infringement under s 34(1)(a)
relate to
clothing generally. Consequently the nature of the
clothing on which the mark appears, the market aimed at by the
appellant and
the volume of its clothing sales are irrelevant
considerations. It is therefore clear that the respondents’
use of the word
“Power House” is in relation to goods in
respect of which three of the appellant’s trade marks are
registered.
[8] The only question that has to be
decided in respect of the alleged infringements under s 34(1)(a) is
whether the appellant has
established that a substantial number of
persons will probably be deceived into believing or confused as to
whether there is a
material connection in the course of trade between
the respondents’ clothing and the appellant’s trade mark
(see
Plascon-Evans
at 640G-I).
[9] In considering this issue it is
appropriate to apply the principles summarized by Corbett JA in
Plascon-Evans
at 641A-E to the facts of the case. 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 market
place 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
Sabel
BV v Puma AG, Rudolf Dassler Sport
[1998]
RPC 199.
At 224 it was said that the likelihood of confusion must
“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 distinctive and dominant
components.”
(See also
The
European Limited v The Economist Newspaper Limited
[1997] EWCA Civ 2771
;
[1998] FSR 283(CA)
at 290.)
[10]
Counsel for the appellant submitted that the common
element in both marks, the word “Power”, was likely to
lead to
confusion despite the fact that it is used in combination
with the word “House” on the first respondent’s
clothing.
If full effect is given to this argument it would result
in the appellant having a virtual monopoly to use the word “Power”
on clothing. According to the evidence, however, there are numerous
trade mark registrations in South Africa in respect of clothing
which
incorporate or include the word “Power”. It is an
ordinary word in everyday use, as distinct from an invented
or
made-up word, and it cannot follow that confusion would probably
arise if it is used in combination with another word.
[11] What has to be considered, therefore, is whether
the notional customer of average intelligence, viewing the marks as a
whole
or looking at the dominant features of each mark, is likely to
be confused or deceived into believing that clothing bearing the
words “Power House” have a connection in the course of
trade with the “Power” trade mark. In deciding
this
issue I have regard only to the respondents’ Power House mark
without the distinctive dog device. In my view the common
element of
the appellant’s and the first respondent’s marks is of
minor significance when the marks are looked at as
a whole. It is
not possible to ignore the word “House” in the first
respondent’s mark. I have considerable
difficulty in imagining
that the notional purchaser of the first respondent’s clothing
would focus attention only on the
word “Power”. The word
“House” is as significant as the word “Power”
and the two words used
together sufficiently distinguish the first
respondent’s clothing from that of the appellant.
[12] The result is the same whether the two marks are
viewed side by side or in the market place where clothing is sold.
The overall
impression which is created is that the marks do not
resemble each other closely and the average customer would not be
confused
or deceived into believing that clothing bearing the “Power
House” mark is clothing made or sold by the appellant.
Accordingly it has not been established that the marks resemble each
other so closely that deception or confusion is likely to
arise. The
appellant’s contentions based on s 34(1)(a) must therefore
fail.
[13] The remaining argument relates to the respondents’
alleged infringement of the appellant’s trade marks registered
in respect of footwear on the respondents’ clothing in terms of
s 34(1)(c) of the Act. The section was introduced for the
first time
in 1993 to provide protection against the dilution of a registered
trade mark by the unauthorised use of an identical
or similar mark in
relation to any goods or services, notwithstanding the absence of
confusion or deception. A plaintiff who relies
upon an infringement
in terms of s 34(1)(c) needs to establish:
(a) the defendant’s use of a mark identical or
similar to the plaintiff’s registered mark;
(b) that the use -
(1) is unauthorised; and
is in the course of trade; and
(3) would be likely to take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the
plaintiff’s
registered mark; and
(c) that the plaintiff’s registered mark is well
known in the Republic.
(The proviso to s 34(1)(c) has no application to this
matter.) For the purposes of the appeal requirements (b)(i) and (ii)
are
not in issue. Furthermore, and despite a submission to the
contrary by the respondents’ counsel, it seems reasonable to
hold that the appellant’s “Power” mark on footwear
is well known in South Africa. The essential matters in dispute
relate to requirements (a) and (b)(3).
[14] The appellant’s counsel
did not contend that the first respondent’s mark on clothing
and the appellant’s
mark on footwear were identical. He
submitted, however, that they were similar and that the similarity
consisted in the use of
the word “Power” which is common
to both marks. This submission must be considered without reference
to the likelihood
of confusion or deception. The word “similar”
is “almost always a difficult word to construe” (see
Union Government
(Minister of Finance) v Gowar
1915 AD 425
at 443). As Schreiner ACJ mentioned in
R
v Revelas
1959 (1)
SA 75
(A) at 80 B-C, there are
“
degrees of similarity or likeness, some
approaching, and exceptionally perhaps even reaching, sameness,
others amounting to no more
than a slight resemblance. The
similarity may be basic or superficial, general or specific”.
“
Similar” must obviously
be construed in the context in which it appears and in my view it
should not be given too wide or
extensive an interpretation for the
purposes of s 34(1)(c). The section, while seeking to preserve the
reputation of a registered
mark, introduces a new concept into South
African law. If the word “similar” is given too
extensive an interpretation
the section might have the effect of
creating an unacceptable monopoly to the proprietor of a trade mark
and thus unduly stultify
freedom of trade. I doubt whether the
legislature could have intended such a result. I am inclined to
hold, therefore, that the
section does not apply if the two marks are
similar merely because they contain features of the same kind or
because there is a
slight resemblance between them. In
OED
(vol XV, p 490) one
of the meanings given to “similar” is “having a
marked resemblance or likeness”. This
seems to be an
appropriate meaning to be given to the word for the purposes of the
section. The first respondent’s mark
might possibly be
regarded as having a slight or superficial resemblance to those of
the appellant but the likeness between the
two is not sufficiently
close or marked to enable this Court to hold that they are similar
for the purposes of s 34(1)(c).
[15] Although that effectively
disposes of the appellant’s argument, I should briefly deal
with the submission, put forward
on its behalf, that requirement
(b)(iii) above was satisfied. The deponent to the founding affidavit
stated that the appellant’s
trade mark registrations had been
infringed because,
inter
alia
–
“
By using the word POWER, the word POWERHOUSE or
words POWER HOUSE, the Respondents are making unauthorised use in the
course of
trade, in relation to clothing, of marks which are either
identical or similar to the Appellant’s registered marks which
are well known within the Republic; and the use of such marks is
likely to take unfair advantage of and be detrimental to both the
distinctive character and the repute of the Appellant’s
registered trade marks.”
The aforesaid statement is merely a repetition of the
section. It amounts to nothing more than a conclusion of law. No
particulars
were furnished of the respects in which the use of the
mark would be likely to take unfair advantage of or be detrimental to
the
distinctive character or repute of the appellant’s trade
marks. In the absence of evidence to support the contention put
forward in the affidavit it is in this case not possible to hold that
requirement (b)(iii) was established. On this point, too,
the
appellant cannot succeed.
[16] The
result is that the appeal is dismissed with costs.
.................................................
L
S MELUNSKY
ACTING
JUDGE OF APPEAL
CONCUR:
SMALBERGER
JA)
VIVIER JA)
NIENABER
JA)
HARMS JA)