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IN THE HIGH COURT OF SOUTH AFRICA
GAUTENG DIVISION, PRETORIA
Case numb er: 2023 -124862
Date of hearing: 29 April 2025
Date delivered: 19 June 2025
(1) REPORTABLE: YES/NO
(2) OF INTEREST TO OTHERS JUDGES: YES/NO
(3) REVISED
DATE : 19/6/25
SIGNATURE
In the application between :
BURTON’S FOODS LTD Applicant
and
BOXER SUPERSTORES (PTY) LTD First Respondent
THE R EGISTRAR OF TRADE MARKS Second Respondent
This judgment is handed down electronically by the Judge whose name is
reflected herein, and is submitted to the parties or their legal representative by
email. This order is further upload ed to the electronic file of CaseLines by the
Judge or his Registrar. The date of this order is deemed to be 19 June 2025.
__________________________________________________________ _________
JUDGMENT
SWANEPOEL J:
[1] On 4 May 2020 the first respondent (applicant in the trade mark application)
filed two trade mark applications in terms of s 16 of the Trade Marks Act, 194 of
1993 (“the Act”) , under nos. 2020/08437 Wheels Device and 2020/08305 Wheels
Device respectively. Application no. 2020/08305 was pub lished for opposition on 28
July 2021, and no. 2020/08437 on 23 February 2022. Both trade mark applications
have been made in Class 30, in respect of, inter alia , confectionery and baked
goods, including biscuits and cookies.
[2] The applicant (the opponen t in the trade mark application) is the proprietor of
trade mark registration number 1986/04372, also in Class 30, in respect of biscuits
(other than biscuits for animals), non -medicated confectionery, biscuits containing
non-medicated confectionery and ma rshmallow.
[3] The applicant seeks an order refusing the first respondent’s trade mark
applications, and directing that the trade mark applications be removed from the
register. The applicant’s opposition is premised on the contention that the first
respon dent’s trade mark is highly similar to that of the applicant, and that it covers
goods that are identical, or at least highly similar. For that reason, the applicant says,
the use of the first respondent’s trade mark would lead to confusion or deception.
The second respondent abides the decision of court.
[4] The applicant relies for its opposition on the provisions of s 10 (14) of the Act
which reads as follows:
“10 Unregistra ble trade marks
The following marks shall not be registered as trade marks, or if
registered, shall, subject to the provisions of section 3 and 70, be
liable to be removed from the register:
(1) ……..
(14) subject to the provisions of section 14, a mark which is identical
to a registered trade mark belonging to a different prop rietor or
so similar thereto that the use thereof in relation to goods or
services in respect of which it is sought to be registered and
which are the same or similar to the goods or services in
respect of which such trade mark is registered, would be like ly
to deceive or cause confusion, unless the proprietor of such
trade mark consents to the registration of such mark….”
[5] The marks are clearly not identical1, as is clear from the marks depicted
below:
[6] The applicant contends that the marks are so similar that the use thereof in
respect of what are essentially the same goods would be likely to deceive or cause
confusion. Upon closer scrutiny, the applicant’s complaint is really against the use of
the word “WHEELS”. The applicant says:
“The Applicant’s WAGON WHEELS trade mark contains the word WHEELS
which retains an independent identity within the composite mark WAGON
WHEELS.”
Opponent's trade mark registration Respondent's applications
WAGON WHEELS
WAGON WHEELS
and:
“The Applicant’s WAGON WHEELS trade mark and the Opposed Trade Mark
Applica tions are visually similar in that they both contain the word WHEELS.”
[7] The difficulty with this contention is that the applicant enjoys protection in
respect the composite trade mark. In Cadbury(Pty) Ltd v Beacon Sweets &
Chocolates (Pty) Ltd2 the Court held as follows:
“[13] As was pointed out by the hearing officer in Philip Morris Inc’s Trade
Mark Application [1980] RPC 527 at 532 – 533, a disclaimer is, theoretically ,
never necessary since registration of a trade mark cannot give rise to a ny
rights except those arising from the mark as a whole.”
[8] The applicant cannot, therefore, claim rights in the individual words contained
in the composite trade mark. The question is not whether the word WHEELS is
identical in each mark, but whether t he trade mark WAGON WHEELS is so similar to
the trade mark WHEELS as to cause deception or confusion.
[9] The wording of s 10 (14) is similar to the wording of s 34 (1) in relation to
infringement, and guidance can be found in infringement cases. In Plasc on-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd3 the Court laid down the following
principles:
“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 fo r 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, ie the plaintiff, or that there is a material connect ion
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 con nection.
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 de fendant’s mark would make upon the average type of
customer who would be likely to purchase the kid 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. T he 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 signifi cant 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.”
[10] The above approach has been applied in numerous cases, and it is
unnecessary to repeat each case. I do, however, find the following passage in
Pepsico Inc v Atlantic Industries4 useful:
“[19] There is an inter-relationship between the similarity of the marks and
similarity of the goods to which the marks apply. Lesser similarities in the
marks may be counter -balanced by stronger similarities in the goods but
ultimately the question remains whether in combi nation there is a likelihood of
confusion or deception. In regard specifically to the goods to which the
respective marks are applied, relevant considerations will include (i) the uses
of the respective goods; (ii) the users of the respective goods; (iii) the physical
nature of the goods; and (iv) the trade channels through which the goods
respectively reach the market.
[20] In testing for deception and confusion, courts will usually identify the
features, if any, of the respective marks which are dominant. If they share a
dominant feature, there is ordinarily a greater likelihood of deception or
confusion. As recently affirmed by this court, in the global assessment of the
marks, the visual, aural and conceptual similarities of the marks must be
assessed by reference to the overall impressions created by the marks
bearing in mind their distinctive and dominant components.”
[11] The applicant’s trade mark is registered simply, as is evident above, as
“WAGON WHEELS”, with no description as to colour or design . The first
respondent’s trade mark carries a specific design in specific colours, namely yellow,
black and white. Visually, the two marks are quite distinct from one another . Aurally,
the marks also differ. There is no reason to conclude that the word “WH EELS” is
dominant in the mark ‘WAGON WHEELS ’. The adjective ‘wagon’ describes the noun
‘wheels’ and is, in my view, the dominant part of the trade mark, whilst in the first
respondent’s trade mark, ‘wheels’ is domi nant.
[12] In Pianotist Co Ltd v Appin5, in relation to word marks, the Court held:
“You must take the two words. You must judge them both by the look and
their sound . You must consider the goods to which they are to be applied.
You must consider the nature and kind of customer who would be likely to buy
those goods. In fact you must consider all the surrounding circumstances; and
you must further consider what is likely to happen if each of those trade marks
is used in a normal way as a trade mark for the goods of the respective
owners of th e marks.”
[13] I take into consideration that the type of goods to which the marks apply are
essentially identical. This increases the likelihood of confusion. They will also likely
be presented for sale in the same isle and section of the same type of ret ail outlets. I
also consider that the probable customer will not pay as much attention to the
product as would, for instance, the purchaser of computer software or items of high
value, and that the possibility of confusion or deception is heightened .6
[14] However, in my view the mark ‘WHEELS’, even if used in respect of identical
goods, is not likely to deceive or cause confus ion with the mark ‘WAGON WHEELS’ .
In the result, the application must be dismissed and the registration of the respective
trade mar ks must proceed .
[15] I make the following order:
The applica nt’s opposition to the first respondent’s trade mark
applications nos. 2020/08305 WHEELS DEVICE, and 2020/08437
WHEELS DEVICE is dismissed with costs on scale B .
____________________________
SWANEPOEL J
JUDGE OF THE HIGH COURT
GAUTENG DIVISION PRETORIA
Counsel for the applicant: Adv. I Learmonth
Instructed by: Adams & Adams
Counsel for the first respondent: Adv. H Worthington
Instructed by: Spoor & Fisher
Heard on: 30 April 2025
Judgment on: 19 June 2025
1 On the meaning of ‘identical’ see Standard Bank of South Africa Ltd v United Bank Ltd and Another
1991 (4) SA 780 (T) at 795 A
2 2000 (2) SA 771 (SCA)
3 1984 (3) SA 623 (A) at 640 G to 641 D
4 [2017] ZASCA 109 (15 September 2017) at para [19]
5 Pionotist Co Ltd (1906) 23 RPC 774 777 line 26
6 See for instance: Orange Brand Services Ltd v Account Works Software (Pty) Ltd 2013 BIP 313
(SCA)