Articles

Case update on trade mark infringement

Posted 06 October 2009

In two recent decisions the Western Cape High Court and the Supreme Court of Appeal have re- affirmed the legal principles of trade mark infringement.

You say Thabana I say Thabani

In Thabana Li Meli (Pty) Ltd v Thabani Wine (Pty) Ltd and Another [2009] WCHC 142 the second applicant who was the managing director of the first applicant and has a 50% share in the first applicant registered the mark: ‘Thabani Vineyards & Winery” in his own name.

While the second applicant was at a wine tasting event he came across a bottle of wine which was labeled as: “Thabana”: Chardonnay.

The second applicant approached the court for the following order: “That the Respondent be interdicted and restrained within the Republic of South Africa from using in the course of trade , the trade mark “Thabani Vineyards & Winery” or “Thabana”, “Thabana Wines” or any mark similar to “Thabani Vineyards & Winery” that so nearly resembles it as to be likely to deceive or cause confusion in relation to goods and services in classes 33 and 42 under the Trade Mark Act 194 of 1993.’ The court granted the relief sought. The respondent appealed the decision.

The appeal court had to decide on three essential questions:

1. Whether second applicant had a legal basis to register the mark in his own name and to thereafter permit or grant a licence to the first applicant to use the mark?

The Court held that the second applicant had developed the brand and proceeded to register the mark for the benefit of the first applicant. It further held that the first applicant had been using the mark for the past 5 years and on the probabilities, the first applicant not only had knowledge that the mark was registered in the name of the second applicant but it had also not taken issue with the registration.

In the circumstances no lack of bona fide intent in registering the mark could be attributed to the second applicant. Therefore, the registration did not fall within the ambit of s 10(3) and s 10(7) of the Trade Marks Act 194 of 1993.

2. Whether the use of the word “Thabani” alone substantially affects the identity of the trademark?

The appellants had argued that the omission of the words “Vineyards & Winery” caused an unacceptable broadening of the trademark and that s 25 of the Trade Marks Act seeks to limit such broadened scope.

The purpose of s 25 is to lay down guidelines for the registrar for the amendment to a trademark. The current dispute did not fall to be determined with reference to this section. However, s 31 was of relevance to the current dispute.  S 31 deals with the actual use of a trademark in an altered form without such alteration having been amended by registration.

The Court held that since the trademark “Thabani Vineyards & Winery” was registered for use, inter alia, on wine bottles, the words “Vineyards & Winery” performed merely a descriptive function.

It is the word “Thabani” which performs a distinguishing function. Since the word “Thabani” with its descriptive words omitted, were placed on wine bottles, there can be no basis for finding that its use substantially affected the identity of the registered trademark.

3. Whether the appellant’s mark, name Thabana Li Mele, constitutes an impermissible infringement of second applicant’s mark?

S34 (1) of the Trade Marks Act deals with the infringement of a registered trade mark and reads as follows: ‘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 trademark 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 Court held that there was an infringement, for the following reasons:

o    Although the respondent uses the words, Thabana Li Mele, on its wines, the word Thabana is bold and prominent and the words Li Mele is in small fine script.

o    Both the marks are used on wines in the same market.

o    The average consumer of these wines is not likely to distinguish between Thabani and Thabana.

o    The presence of the words “Li Mele” in fine print on the respondent’s wines is unlikely to make it distinguishable from Thabana, the distinguishing aspect of the mark.

 

 

Earn your stripes

In Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd [2009} SCA 89 the appellant, Puma, instituted a trade mark infringement action against the respondent. The following two trade marks were in issue:

 

Puma relied on s 34(1) of the Trade Marks Act. Below is a photograph of the shoe with the alleged infringing mark:

 

 

The essential question for determination was whether Global’s stripe with the name so nearly resembles any of Puma’s marks as to be likely to deceive or cause confusion?

 

In a trade mark infringement case what is required is an objective comparison between the registration and the defendant’s actual use. Puma sought to rely on the subjective intention of Global in adopting the stripe to support a finding of infringement.

 

The Court held that the subjective intention of a defendant could hardly assist in deciding the objective question of the likelihood of deception or confusion.

 

The Court came to the same conclusion as the trial court and held that the average consumer would have had regard to the fact that DT NEW YORK was part of the trade mark and would have noted that the two stripes are significantly different and, consequently, that Global’s mark was not confusingly or deceptively similar.