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[2015] ZAWCHC 220
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Yuppiechef Holdings (Pty) Ltd v Yuppie Stuff Online CC (12662/14) [2015] ZAWCHC 220; 2015 BIP 542 (WCC) (17 September 2015)
IN
THE HIGH COURT OF SOUTH AFRICA
(WESTERN
CAPE DIVISION, CAPE TOWN)
Case
number: 12662/14
In
the matter between:
YUPPIECHEF
HOLDINGS (PTY) LTD
Applicant
and
YUPPIE
STUFF ONLINE CC
Respondent
JUDGEMENT
Introduction
1.
This is an application in which the applicant, Yuppiechef Holdings
(Pty) Ltd,
seeks relief against the respondent, Yuppie Stuff Online
CC, in terms of
sections 34(1)
(a),
34
(1) (b) and
34
(1) (c) of the
Trade Marks Act, 194 of 1993
, and based on the common law delict of
passing-off.
2.
More particularly, the applicant seeks interdicts prohibiting the
respondent
from infringing the applicant’s trade mark and
common law rights by using the marks YUPPIE GADGETS or YUPPIE STUFF
or any
other mark, trade name or domain name (i) confusingly similar
to the applicant’s marks; or (ii) likely to take unfair
advantage
of or be detrimental to the distinctive character of the
applicant’s trademarks, in the course of trade.
3.
Initially in its notice of motion the applicant also sought an order
that the
respondent withdraw its trade mark applications numbers
2013/21727; 2013/21728; 2013/21730; 2013/22203; 2013/22204 and
2013/22207,
filed in classes 9 and 35 in relation to, inter alia,
software and online retail services incorporating the phrases YUPPIE
GADGETS
or YUPPIE STUFF. The applicant no longer persists with
seeking this relief.
4.
A fuller description of the parties and business in which they are
engaged is
useful.
The
applicant’s and respondent’s business operations
5.
The applicant’s deponent is Mr. Shane Reid Dryden, a founding
director
of the applicant. According to him, the applicant’s
predecessors in title commenced trading as YUPPIECHEF in 2006. In
2009
the YUPPIECHEF business was transferred as a going concern to
the applicant, together with the goodwill of the business.
6.
The applicant is the proprietor in South Africa of several registered
trademarks
of which the subject is the trade mark YUPPIECHEF. These
are the following trade mark registrations:
6.1
2009/24147 YUPPIECHEF in class 8 in respect of ‘
hand tools
and implements (hand operated); cutlery; can operators; cheese,
pizza, egg slicers; knives; forks; spoons; ice picks;
mallets;
mortars and pestles; scissors; sugar tongs; nutcrackers
’;
6.2
2009/24148 YUPPIEECHEF in class 11 in respect of ‘
apparatus
for lighting, heating, steam generating, cooking, refrigerating,
drying, ventilating, water supply and sanitary purposes;
barbeques;
ovens; fridges, microwaves; toasters; electric cooking utensils;
kettles; rotisseries; pressure cookers; freezers; coffee
machines;
hot plates
’;
6.3
2009/24149 YUPPIECHEF in class 21 in respect of ‘
household
or kitchen utensils and containers; articles for cleaning purposes;
glassware; porcelain and earthenware not included
in other classes;
mugs; cups; drinking glasses; beaters; dustbins; bottles and bottle
openers; bread baskets; bins and boards;
trays; coasters; cocktail
stirrers; non-electric cooking utensils; corkscrews; cutting boards;
ice buckets and ice moulds; lunch
boxes; salt and pepper shakers;
crockery; napkin rings; paper plates; tea accessories; spatulas; pots
and pans; containers for
kitchen and household use; garlic press’
.
7.
All the above trade registrations were filed on 30 November 2009 and
proceeded
to registration on 13 October 2011.
8.
In addition to its rights in the trademark YUPPIECHEF, the applicant
runs an
online retail business through the website
www.yuppiechef.com
.
9.
The applicant’s goods sold through its YUPPIECHEF website
include:
9.1
goods for cooking, such as balking dishes, casseroles and cocottes,
cooking sets, frying
pans, induction cookware, pressure cookers,
roasting pans, saucepans, steamers, kettles, tagines and woks and
many other goods
of this kind;
9.2
kitchen gadgets and tools (both electric and hand-operated), such as
can and jar openers,
canning and preserving tools, cheese tools,
choppers and presses, colanders, fruit and vegetable tools, meat,
pasta and poultry
tools, garters and rasps, kitchen scales; and
9.3
goods for kids including aprons, bakeware, gadgets, kitchen utensils,
party stuff and many
others.
10.
According to the applicant its goods and services are directed
towards a young, middle class
image conscious market. It is common
cause between the parties that this is the section of the population
colloquially referred
to ‘
yuppies’
. The Oxford
Dictionary and Thesaurus defines yuppie as an informal reference to
‘
a well-paid young middleclass professional working in a
city
.’ The word is said to have its origins partly from the
initial letters of ‘
young urban professional
’. The
goods that the applicant sells are of the superior quality that is
desired by the applicant’s most significant
market.
11.
It came to the attention Mr. Dryden in early 2013 that the respondent
operates an online
retail store under the trade mark, trade name and
trading style YUPPIE GADGETS at
www.yuppiegadgets.co.za
.
It was then that he became acutely aware of the respondent’s
activities.
12.
The applicant contends that the use by the respondent of the marks
YUPPIE GADGETS and YUPPIE
STUFF infringes the applicant’s trade
mark registrations in respect of the mark YUPPIECHEF in terms of
sections 34(1)
(a), (b) and (c) of the
Trade Marks Act and
amounts to
passing-off, unlawful competition and general delictual wrongdoing
that has and is likely, without the intervention
of this Court, to
cause substantial economic harm to the applicant.
13.
For its part, the respondent contends that its business is completely
different to that
of the applicant. According to Ms Chantal Kisten,
who holds a fifty percent interest in the respondent, in 2010 she and
her business
partner realized that online trading had established
itself and, having worked together for a number of years, they
decided to
go into business together by in particular securing a
Southern African distributorship for the Thames & Kosmos range of
educational
kits, of which the respondent is still a distributor to
date. During the organic growth of their business they identified a
gap
in the South African market for gadgets that were “hot”
or “cool” but which were only available overseas
and were
not stocked by anybody in South Africa. They began investing their
available capital in acquiring stock of these trendy
gadgets.
14.
By August 2010 the business in these gadgets showed promise. They
realized that the then-name
of their trading entity, Nanini 444 CC
had no brand-ability and was not memorable or catchy. They chose the
name ‘Urban Gadgets’
as an appropriate name for their
product offering. They traded under this name from August 2010.
15.
In the further expansion of their business, their business model
became products that one
does not typically need, but were
luxury-expenditure items. They determined therefore that so-called
yuppies would be buying their
products, not only because of their
available disposable income but also because of the nature of the
products themselves –
trendy, quirky, uncommon products. An
example of one such product sold by the respondent is a mirror the
frame of which resembles
an enormous pair of Rayban sunglasses,
retailing in the range R4 000. According to Ms Kisten it was quite
appropriate to describe
the kind of individual purchasing this mirror
as a yuppie.
16.
In time Ms Kisten and her business partner felt that the respondent’s
bringing into
South Africa of quirky and ‘off-the-wall’
gadgets from overseas that are not available locally resulted in its
business
attracting a ‘yuppie’ image. The name ‘Urban
Gadgets’ had become mundane and was not longer apt for their
target market.
17.
The fact that respondent had already been trading as Urban Gadgets,
coupled with the fact
that it sold ‘gadgets’, prompted
the idea of calling the business YUPPIE GADGETS and using the slogan
‘
The stuff you want
’. YUPPIE GADGETS then became
the new name for the business, with effect from about April 2011.
18.
According to Ms Kisten, whilst she and her business partner were
aware of the existence
of YUPPIECHEF by the time they selected the
name YUPPIE GADGETS, at no time was any mention of YUPPIECHEF made
during any of the
discussions to rebrand their business to YUPPIE
GADGETS.
19.
The respondent maintains that its product offering has always been
fundamentally different
to that of the applicant. In this regard, it
is said that all of the applicant’s products are available at
retail stores
as well as online from other e-commerce sites other
than the applicant’s own site. This is not the case with the
products
offered by the respondent on their site. The applicant’s
focus is kitchen dominated and denominated, whereas the respondent’s
focus is not confined in this manner. The respondent further contends
that its products are completely different, its website is
completely
different, and that there no similarities at all between the two.
20.
I turn now to deal with the legal issues this Court is tasked to
determine.
The
cause of action under
section 34
(1) (a)
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21.
Section 34
(1) (a) of the
Trade Marks Act provides
that the rights
acquired by registration of a trade mark shall be infringed by 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.
22.
In order to establish infringement in terms of
section 34
(1)(a) of
the Act, it is necessary for the applicant to show:
22.1
use of the registered trade mark or of a mark so nearly resembling it
as to be likely to deceive or cause
confusion;
22.2
that the use is in relation to the goods or services in respect of
which the trade mark is registered;
22.3
that the use is in the course of trade; and
22.4
that the use is unauthorized.
23.
The respondent does not dispute that its use of the YUPPIE GADGETS
mark is without the applicant’s
authorization. It contends that
it does not require any authorization. It is also not in dispute that
the mark YUPPIE GADGETS is
used in the course of trade.
24.
According to Advocate Salmon SC, who appeared for the respondent,
what is in dispute in
this case is whether or not such use is in
relation to the goods for which the YUPPIECHEF trade mark is
registered; and whether
the respondent’s mark so nearly
resembles the YUPPIECHEF trade mark as to be likely to deceive or
cause confusion within
the meaning of
section 34
(1) (a). These are
dealt with in turn below.
Use
in relation to goods or services in respect of which the trade mark
is registered
25.
For infringement under the
Trade Marks Act to
take place, the use
complained of must be in relation to goods or services in respect of
which the trade mark is registered. Notwithstanding
Advocate Salmon’s
contention that this is a disputed issue in these proceedings, I find
that there is no genuine dispute
between the parties regarding this
aspect.
26.
This is because in the answering affidavit filed on behalf of the
respondent, Ms Kisten
admitted that the various goods that the
respondent sells are goods covered by the YUPPIECHEF registrations,
though with the qualification
that these goods in the minority of the
respondent’s overall product offering. This qualification is of
no consequence. Ms
Kisten also did not dispute that several of the
goods the respondent sells are similar to the goods covered by the
applicant’s
YUPPIECHEF registrations.
27.
Given the averments admitted and not disputed by the respondent in
relation to whether or
not the use complained of is in relation to
goods or services in respect of which the trade mark is registered,
there can be no
genuine dispute between the parties in this regard. I
am satisfied, applying the now-trite principle in
Plascon-Evans
Paints Ltd v van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A), with the inherent credibility of the applicant’s version
that the use complained of is in relation to goods in respect
of
which the trade mark is registered, and goods similar to the goods
covered by the YUPPIECHEF registrations.
28.
In the circumstances I am inclined to agree with Advocate Marriott’s
characterization
of the main issue for determination in this case,
i.e., the question of whether or not the use by the respondent of the
trademarks
YUPPIE GADGETS and/or YUPPIE STUFF, in relation to the
particular goods sold on the respondent’s website, is likely to
confuse
or deceive consumers as to the origin of the respondent’s
goods and services or as to the existence or non-existence of a
connection in the course of trade between the applicant and the
respondent. Advocate Marriott appeared for the applicant.
Use
of a mark so nearly resembling the registered mark as to be likely to
deceive or cause confusion
29.
The
Trade Marks Act refers
to trade marks the use of which would be
likely to deceive or cause confusion.
30.
Infringement is proved if it is established that there is a
likelihood that a substantial
number of people who buy or are
interested in the particular goods or services will be confused or
deceived. The deception or confusion
exists when a person is deceived
into the belief that there is a material connection between the goods
or services bearing the
allegedly infringing trade mark and the owner
of the other trade mark, or when a person is confused as to the
existence or non-existence
of such a connection.
31.
The factors to be applied (which are not exhaustive) have been stated
in a number of cases.
In
Plascon-Evans Paints Ltd
at
640G-641D, Corbett JA said:
‘
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 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 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.’
32.
This formulation has been consistently applied.
33.
It is important for the court to be informed as to the nature of the
market for the goods
in order that the court may notionally transport
itself into the shoes of the potential customer. The judge must
(notionally) transport
herself from the courtroom to the market place
and stand in the shoes of the purchaser, taking into consideration
the actual circumstances
in which sales are likely to take place, the
nature of the customers and the likelihood of improper articulation.
34.
It is common cause on the papers that the parties do not have
physical stores, and that
both of them trade through their respective
websites. It is also common cause that the applicant and the
respondent target the
same market – generally those who are
young and sufficiently affluent and educated to have access to the
necessary electronic
equipment and to make purchases on line.
35.
These consumers will arrive at a website either by typing in the
website’s domain
name into a web browser or by searching for
that website on a search engine. It is contended for the applicant
that it is at this
point that the confusion or deception will arise;
and that it will do so exclusively as a result of the names of the
websites in
question. It is said that after entering the word
‘yuppie’ consumers could be misdirected as a result of
confusion,
carelessness or intrigue.
36.
In practice I do not agree with the applicant’s contention.
Having been invited to
visit the two websites by Advocate Marriott in
the applicant’s heads of argument, this Court did so and
commenced the exercise
by typing the word ‘yuppie’ in the
Google search bar. Various website names came up, all beginning with
the word ‘yuppie’.
These included YUPPIECHEF, YUPPIE
GADGETS and yuppiecash. This modus operandi and its outcomes are not
disputed by the parties.
According to the applicant, this function is
likely to misdirect consumers when they are presented with both the
YUPPIECHEF and
YUPPIE GADGETS websites after entering the word
‘yuppie’. It is at this point that it is said the
consumer could be
misdirected as a result of confusion, carelessness
or intrigue.
37.
The notional shopper who shops online is typically presented with a
myriad of options of
shopping experiences that are available on the
internet. If the online shopper is a returning shopper then in that
case she will
not be confused, and she will knowingly select anyone
of the ‘yuppie’ options she is presented with. If the
online
shopper is a first time shopper, she could indeed select
anyone of the ‘yuppie’ options out of sheer intrigue.
Visiting
a website out of intrigue is not tantamount to a
misdirection, or necessarily the result of confusion, for intrigue on
its own,
whether shopping online or elsewhere can be said to be a
part of the shopping experience.
38.
The applicant is correct however that it is in the names of the
websites that primary regard
must be had in assessing the likelihood
of confusion. A likelihood of deception or confusion in any of the
characteristics of sense,
sound or appearance will give rise to an
infringement. The trade mark must be considered, globally as a
whole. This
principle originated in the European Court of
Justice in
Sabel BV v Puma AG Rudolf Dassler Sport
[1998] RPC 199
(ECJ) 221 at 224 and was adopted by the Supreme Court
of Appeal in
Bata Ltd v Face Fashions CC & another
2001 (1) SA 844
(SCA) para 9.
Sabel
said that a court
must consider the allegedly infringing mark ‘globally’:
‘
a 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.’
39.
In
Cowbell AG v ICS Holdings Ltd
2001 (3) SA 941
(SCA)
Harms JA pointed out that whether there is a reasonable likelihood of
deception or confusion amounts to a value judgement.
The principles
of comparison that have developed in order to reach the value
judgement were listed by Brand JA in
Roodezandt Ko-operatiewe
Wynmakery Ltd v Robertson Winery (Pty) Ltd & another
(503/13)
[2014] ZASCA 173
(19 November 2014). He said, at para 6:
‘
Most, if not all,
of these considerations seem to find application in the present
context. Other principles of comparison which
have become
crystallised in earlier decisions of this court which I find to be
pertinent, include the following:
(a)
A likelihood of confusion does not only arise when every person
interested or
concerned in the class of goods for which the trademark
has been registered could probably be deceived or confused. It also
arises
if the probabilities establish that a substantial number of
such persons will be deceived or confused.
(b)
The concept of deception or confusion is not limited to inducing in
the minds
of these interested persons the erroneous belief or
impression that the two competing products are those of the objector
or that
there is a connection between these two products. A
likelihood of confusion is also established when it is shown that a
substantial
number of persons will probably be confused as to the
origin of the products or the existence or non-existence of such a
connection.
(c)
The determination of the likelihood of confusion involves a
comparison
between the two competing marks, having regard to the
similarities and differences in the two and an assessment of the
impact it
would have on the average type of customer who is likely to
purchase the kind of goods to which the marks are applied.
(d)
The marks must not only be considered side by side, but also
separately.
(e)
It must be borne in mind that the ordinary purchaser may encounter
goods bearing
one mark with an imperfect recollection of the other.
(f)
If each of the competing marks contains a main or dominant feature or
idea, the likely impact made by this dominating feature on the mind
of the customer must be taken into account. This is so because
marks
are remembered by some significant or striking feature rather than by
the photographic recollection of the whole. (See eg
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A) at
640G-641E;
Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd
2010 (2) SA 600
(SCA) para 8; and
Adidas AG & another v Pepkor
Retail Ltd
2013 BIP 203 (SCA) paras 20-23.)’
40.
The applicant’s yuppiechef mark is written as one word, in
small pink / cerise letters.
The device mark is in the same pink /
cerise colour, with the letter Y inside what I can best describe as
an octagonal prism. The
online consumer does not see the applicant’s
mark in isolation on its website, and sees the mark together with a
whole range
of kitchen gadgets and cooking utensils.
41.
The respondent’s mark is the word yuppie written in small black
letters. The word
‘gadgets’ appears underneath the word
yuppie in even smaller black letters. The device mark is what I can
best describe
as akin to geometry protractor with a small antenna
attached to it, three white dots inside it together with two black
and white
eyes, one bigger than the other. Once again the online
consumer’s experience of the mark on the YUPPIE GADGETS website
is
accompanied by images of various gadgets and tools on the
respondent’s homepage, at first sight displaying no particular
focus on any type of tools or gadgets.
42.
It is common cause between the parties that the word ‘yuppie’
is the dominant
feature in their respective marks. However in this
exercise this Court is enjoined to have regard to both the dominant
and distinctive
components of the marks. On its own the word ‘yuppie’
does not tell the public who the goods and services are from,
but
rather who they are directed at. The word ‘yuppie’ is an
ordinary word in everyday use in the English language,
and it cannot
follow that confusion will arise if it is used when combined with a
word other than ‘chef’.
43.
The common element in the applicant’s and respondent’s
marks, the word ‘yuppie’
is of minor significance when
the marks are viewed side by side as a whole. It is unlikely that a
significant portion of members
of the public would, when looking at
the respondent’s mark, focus attention only on the word
‘yuppie’. The second
word ‘gadgets’ is as
important as the word yuppie and the two words together significantly
distinguish the respondent’s
mark and its product offering from
the applicant’s. (See
Bata
)
44.
If this Court were to give effect to the interpretation contended for
by the applicant,
namely that it has an extensive reputation and
common law rights in the mark ‘yuppie’, this would result
in the applicant
having a virtual monopoly on the word ‘yuppie’.
45.
The idea conveyed by a mark is also a factor which must be taken into
account. It is a feature
that is likely to impress self upon the kind
and to remain in the memory. In my view this is particularly so where
there is no
physical store to visit to purvey the goods linked to a
particular mark, and where consumers transact in the virtual reality
of
the internet. The mark YUPPIE GADGETS conveys the idea that it
relates to gadgets aimed at yuppies, whilst the YUPPIECHEF mark
conveys the idea to its target market that it is concerned with all
things culinary.
46.
The applicant has adduced affidavits and emails of members of the
public whom it purports
have actually be confused between the
applicant and the respondent in the market place. To this end, the
applicant has put up some
eleven examples of individuals whom it says
were confused. First of all, YUPPIE GADGETS started trading under
this mark in April
2011. Assuming for the sake of argument that all
eleven enquiries (including the twitter screen grab) from members of
the public
do constitute confusion on their part, they do not qualify
as a substantial number of people. Third, the affidavits and emails
attached are not all examples of, and do not demonstrate confusion.
The affidavit of Nico Du Plessis is one such example. He says
the
following: Mr du Plessis says the following: ‘
My immediate
thought upon coming across the Yuppie Gadgets website was that it
must be affiliated in some way with Yuppiechef. What
made me doubt an
affiliation between the two companies was the poor quality and
presentation of the Yuppie Gadgets online store
which is not
something that the Yuppiechef team would produce, and hence my email
to them
.’ This Court expresses no view regarding the
opinion expressed by Mr. du Plessis, save to say that the contents of
his affidavit
demonstrate a discerning online visitor to both
websites who knew the differences between the products offered by the
applicant
and respondent and their respective websites. He was not a
confused or deceived member of the public. Bruce Jenkins does not
explain
why he emailed to YUPPIECHEF invoices for goods he had bought
at YUPPIE GADGETS. In the circumstances for the all the above reasons
I do not consider there to be acceptable evidence of any confusion or
deception in the market place.
47.
Having regard to the differences in the marks and in the products and
services to which
they are applied, this Court does not consider that
there is any likelihood of deception or confusion in the marks as
currently
used.
The
complaint under
section 34
(1) (c)
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48.
The applicant who relies upon an infringement under this section of
the
Trade Marks Act needs
to establish:
48.1
the respondent’s use of a mark identical to or similar to the
applicant’s registered trade mark;
48.2
that the use:
48.2.1 is unauthorised;
and
48.2.2 is in the course
of trade; and
48.2.3 would be likely to
take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the Applicant’s
registered mark; and
48.2.4 that the
applicant’s registered mark is well known in the Republic.
49.
Notwithstanding the respondent’s protestations to the contrary,
it is seems reasonable
to hold that the applicant’s YUPPIECHEF
mark is well known in South Africa.
50.
It must be stressed that the comparison of the trade marks in
question does not depend on
any likelihood of confusion or deception.
51.
There is reluctance to apply the provisions of this section too
widely. As to the interpretation
to be given to the word ‘similar’
for the purposes of this section, the court in
Bata
at
852B-E stated as follows:
“’
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
section 34
(1) (c). The section,
whilst 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 they contain features of
the same kind or because there is a slight resemblance between them.
In The Oxford English Dictionary
vol XV at 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.”
52.
In my view the facts of this case are analogous to
Bata
insofar as concerns the similarities claimed by the applicant for the
purposes of the
section 34(1)
(c) infringement. In
Bata
the similarity was the word ‘Power’ which was common to
both the appellant’s and the first respondent’s
marks.
Melunsky AJA found that the first respondent’s mark might
possibility 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 the Supreme
Court of Appeal to
hold that they are similar for the purposes of
section 34
(12) (c).
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53.
For the same reasons I find that the likeness between the applicant’s
and the respondent’s
marks is not sufficiently close or marked
or close to enable this Court to hold that they are similar for the
purposes of the claimed
section 34
(1)(c) infringement.
54.
To succeed under
section 34
(1) (c), not only must the advantage be
unfair, but it must be of sufficiently significant degree to warrant
restraining what is
non-confusing use. The unfair advantage must be
properly substantiated or established through evidence of actual
detriment, or
of unfair advantage. There is no evidence to this
effect on the papers. On the contrary, it is not apparent from the
applicant’s
own evidence of the approximate retails turnover
generated from sales that the respondent’s mark has had any
impact, let
alone an adverse one. The estimated value of the goods
sold by the applicant since 2011 – the year in which the
respondent
began to use YUPPIE GADGETS – has increased
exponentially from over R20 million in 2011 to in excess of R67 000
000 in 2013.
On the applicant’s own evidence, the actual
amounts exceed these amounts.
55.
In the circumstances I find that the applicant’s claim under
section 34
(1) (c) must fail.
PASSING
OFF
56.
Passing off occurs when one represents to others that one’s
business or product is
the same as, or is connected to, that of
another. The representations may be express or implied, an example of
the latter being
when one uses a trade-mark of get-up which is so
similar to that of another that people may be deceived into believing
that there
is some connection. Deception, whether conscious or
unintentional, is the gist of the action and the test is whether in
the light
of all the circumstances of the case, there is a reasonable
likelihood that ordinary members of the public, or a substantial
section
of them, might be confused or deceived into believing that
the business or merchandise of the respondent is the same as, or is
connected with, that of the applicant. One postulates an average
purchaser, not necessarily a literate one, who has only a general
idea of what he or she wants and who does not have the advantage of
seeing the products side by side.
57.
Since the essence of the action is the infringement of one’s
trade and goodwill, it
is necessary to prove the existence of
goodwill or reputation, and that the respondent’s conduct has
had a negative impact
upon it – in other words, one’s
reputation in relation to the product; deception and that the conduct
resulted, or
in the case of an interdict, is calculated to result in
harm.
58.
The elements of the cause of action for passing off must exist at the
time that the allegedly
infringing acts take place. (See
Online
Lottery Services (Pty) Ltd and Others v National Lotteries Board and
Others
2010 (5) SA 349
(SCA)). In the present case there is no
evidence to show that by the time that the respondent commenced
business under the name
YUPPIE GADGETS in April 2011, the applicant
had acquired the reputation which it claims to enjoy presently, or
that the word YUPPIE
or YUPPIECHEF had become distinctive in the
manner in which the applicant alleges it is today. One of the series
of news and magazine
articles upon which the applicant relies to
demonstrate its position in the South African market, and which is
attached to the
founding affidavit marked SD11.1, cites the
applicant’s Mr. Paul Galatis, said to be a marketing director
and part-owner
of the applicant, as having revealed that in 2011 the
applicant “was verging on profitability”.
59.
Even if this court were to accept for the sake of argument that the
applicant in April 2011
enjoyed the reputation which it does today,
it is important to interrogate the content of that reputation. A
visit to the applicant’s
website, as evident from the printed
web pages and articles and copies of advertisements it has attached
to its founding papers,
shows that the applicant’s reputation
is as a retailer in premium kitchen tools. The products displayed on
its website are
kitchen, outdoor and garden tools all involved in the
growing, production and preparation of food.
60.
The applicant’s claim for passing off has not been established.
Conclusion
61.
The application is thus dismissed with costs.
MAYOSI,
AJ
APPEARANCES:
For
applicant:
Advocate G Marriott
Instructed by:
Von Seidels
1 Park Close, Central
Park
Park Lane, Century City
For
respondent: Advocate O Salmon SC
Instructed by:
Schindlers Attorneys
Second Floor
3 Melrose Boulevard,
Melrose Arch
Johannesburg
c/o Andrew De Vos &
Associates
35 Brickfield Road, Salt
River
Cape Town