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Hans-Muhlberg

A recent Gauteng High Court decision considered in some detail that most fundamental of trade mark questions: is there a likelihood of consumer confusion between the two trade marks in issue? But first some background.

In some cases the two parties are in the same product area, and all you need to do is consider the marks – are they confusingly similar (visually, phonetically and conceptually), bearing in mind that consumers generally don’t have very good memories, don’t always see products side-by-side, generally only recall the major or dominant feature of a mark, and tend to take more care with expensive purchases than they do with everyday ones. In the recent case of Yair Shimansky v Browns the Diamond Store (9/2014) (2014) ZASCA 214, for example, the SCA held that marks Evolym and Evolve (both for wedding rings) are not confusingly similar because, despite their visual and phonetic similarities, the meanings are quite different – ‘evolym’ apparently means ‘my love’ spelt backwards (who knew!). And, said the court, let’s not forget that wedding rings are big-ticket items that most of us only buy a few times in our lives, so we tend to be ultra-cautious with these purchases and we don’t get confused by competing brands!

In some other cases, however, the parties are not in the same product area and it becomes more complex. Not only will you need to decide if the marks are similar (unless they’re identical or near-identical), but you’ll also need to consider whether the product areas are so similar that consumer confusion is likely. This can be tricky.

There’s a famous UK case called British Sugar PLC v James Robertson & Sons (1996) RPC 281, where the court set out a test to determine whether or not goods are similar. It said that you need to consider the following factors: the uses of the goods; the users of the goods; the physical nature of the goods; the trade channels through which they’re sold; the issue of whether the goods are found on same shelves; the issue of whether they’re competitive.

Easier said than done! In the well-known case of Mettenheimer v Zonquasdrif Vineyards 2014 2 SA 204 (SCA), the SCA held that wine and wine grapes are not goods that are so similar that the use of the almost identical mark, Zonquasdrif and Zonquasdrift, would cause consumer confusion. In a judgment that surprised everyone (with the possible exception of Western Cape judge Dennis Davis, whose decision had been taken on appeal), the SCA put much emphasis on the physical nature of the goods (wine being an alcoholic beverage, wine grapes a fruit), and the trade channels (wine being sold to the public, wine grapes to the trade).

Then we had a decision a few years back involving Foschini and the possible co-existence of the trade mark Due South in relation to various goods and services. In this case a Gauteng High Court judge held that competition law and policy requires trade marks (which are, of course, monopolies of sorts) to be interpreted strictly. As a result, he said, there will seldom be a similarity between goods that fall into different classes of the trade mark classification system. And there will seldom, if ever, be similarity between goods and services.

Which finally brings us to the recent Gauteng High Court decision of Chantelle v Designer Group (Pty) Ltd (24 April 2015). If I told you that in this case the issue was whether clothing and cosmetics are so similar that the use of the identical mark (Chantelle) will cause consumer confusion, you’d probably say no way, they’re totally different. But you’d be wrong!

The judge, Judge Prinsloo, probably had little choice in the matter, because of the famous old French Connection case Danco Clothing (Pty) Ltd v Nu-Care Marketing 1991 4 SA 850 (AD). In that case the court held that a registration for the mark French Connection for clothing could stop registration of the mark French Connection for cosmetics. The appeal court said this: ‘Cosmetics and clothing, being goods accommodated in different classes on the register, are indeed goods of a widely divergent nature… (but) .. the link between these classes of goods is established by a variety of considerations…(they) are sold, in close proximity, through the same channels such as large department stores… customers in retail outlets of this sort would as a matter of course associate a mark on cosmetics with the identical mark on well-known and popular brands of clothing… this is a trend which began with prestige goods , and which has been adopted by a number of manufacturers of more popular brands of clothing who now market cosmetics.’

So the appeal court’s finding that clothing and cosmetics are similar goods came down to the fact that they’re sold through the same channels, and the fact that brand extension frequently occurs. Judge Prinsloo – who made mention of a number of brands that have crossed the divide including Christian Dior, Hugo Boss, Chanel, Calvin Klein, Bondi Blu and Puma – agreed. He said this: ‘Importantly, the appellant’s goods can notionally be sold in any fashion outlet, including stores such as Edgars, Truworths and others where cosmetics and fragrances are located and sold in close proximity to clothing and other garments.’

This is a vexed area of the law. It’s long been clear the trade mark classification system isn’t determinative, and the Foschini judgment is clearly wrong – obvious examples would be the fact that clothing (class 25) is generally seen as being similar to belts (class 18), and the fact that clothing (class 25) is regarded as similar to clothing retail services (class 35).  Furthermore there are European decisions that say that the tests for similarities of marks and goods are inter-linked. This was recognised by a South African court in the case of New Media Publishing (Pty) Ltd v Eating Out Web Services 2005 5 SA 388 (C), where the judge said this: ‘There is, it seems to me, an interdependence between the two legs of the inquiry: the less the similarity between the respective goods or services of the parties, the greater will be the degree of resemblance required between their respective marks before it can be said that there is a likelihood of deception or confusion of the allegedly offending mark and vice versa.’

Yet we still get these massive inconsistencies – the SCA (and now the Gauteng High Court) holding that clothing and cosmetics are so similar that there will be confusion with the same mark, and the SCA holding that wine and wine grapes are not sufficiently similar for there to be confusion. It makes life very difficult for lawyers who have to advise companies on whether they can lawfully use or register a trade mark in the face of a registration for a similar mark covering different goods.

 

Hans Muhlberg

Hans has a Bproc, LLB and LLM and was admitted as an attorney in 1985.  He is an admitted non-practising solicitor in the UK and a registered UK and EU trademark attorney. He rose to the level of partner at Spoor & Fisher in South Africa before moving to the UK where her worked as associate at Beck Greener and partner at RGC Jenkins. Since his return, Hans has headed up the trade mark department of a leading law firm, been a director of a major branding company, practiced for his own account, consulted to a number of leading South African law firms and private clients, and written a book on trade mark law.