across the bar

New case - trademarks vs domain names

by default - Posted 24 April 2005

Last week the CPD handed down its judgment in the matter of New Media Publishing (Pty) Limited v Eating Out Web Services CC. The facts briefly stated were as follows:

The facts

The Applicant is the publisher of a magazine titled "Eat Out" which is a guide to restaurants in SA. The guide contains comprehensive information on the featured restaurants. The Applicant also has a website at www.eat-out.co.za which has been registered since 24 November 2000. The website is based on the same concept as the offline publication but is not as comprehensive.

The Applicant is also the holder of the registered trade mark "Eat Out Guide" which was duly registered with effect from 3 July 1998.

The Respondent has websites at www.eating-out.co.za and www.eatingout.co.za which provides visitors with free information on restaurants in SA. The websites are similar to the offline material published by the Applicant. These websites have been operating since June 2000.

Relief sought

The Applicant sought an interdict from the court for the following relief:

a)                  restraining the Respondent from infringing its registered trademark; andnull

b)                  restraining the Respondent from passing off its business, products or services as those of the Applicant and from using the name Eating Out or any mark confusingly or deceptively similar in any manner so as to connect it with the applicant's business, products and services.

Trade mark infringement

The court found that the combined effect of the close resemblance of the words "Eating Out and the Applicant's registered trade mark and the similarity between the Applicant's publication and the Respondent's website is such that in the use of its mark by the Respondent there exists the likelihood of deception or confusion. Therefore, the Applicant established an infringement of its registered trade mark by the Respondent.