ABE Construction Chemicals (Pty) Ltd v Ardex Gesellschaft Mit Beschrankter

• Jurisdiction: South Africa
• Judge: Abery Tuwe (Mr)
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2405 (TRM)
• Docket Number: 2001/12730

Tuwe AN:

The Applicant for registration is A.B.E. Construction Chemicals (Pty) Ltd, a South African company (hereinafter referred to as "the Applicant"). The Applicant applied for the registration of trade mark application no. 2001/12730 ABEDEX in class 19 in respect of:

"Building material (non-metallic, non-metallic rigid pipes for building, asphalt, pitch and bitumen, coverings and coatings (not of metal) for building, binding and repairing, bitumous coverings and coating for building and roofs, roofing materials and membranes, non-metallic transportable buildings, monuments, not of metals, parts, fixtures, fittings, accessories and components thereof"

The Opponent is Ardex Gesellschaft Mit Beschrankter, a German company. The Opponent is the proprietor of trade mark registration no. 1977/02919 ARDEX in class 19 in respect of:

"Building materials, natural and artificial stone, cement, lime mortar, plaster and gravel"

The Opponent opposed the registration of the Applicant's ABEDEX trade mark on the ground that it offended against the provision of Sections 10(12) and 10(14) of the Trade Marks Act, Act No. 194 of 1993 ("the Act").

Sections 10(12) and 10(14) of the Act provides that:

10

Unregistrable trade marks

The following trade marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of Sections 3 and 70 be liable to be removed from the register:

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Tuwe AN

(12)

a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons;

(14)

subject to the provision of section 14, a mark which is identical to a registered trade mark belonging to a different proprietor 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 as or similar to the goods or services in respect of which such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark;

The basis for the opposition was according to the Opponent, that there was a reasonable probability of deception or confusion should the mark ABEDEX proceed to registration. The question to be answered from the above mentioned sections, was whether the mark applied for, if used in a normal and fair manner in connection with the goods covered by the application, would be likely to cause deception or confusion amongst a substantial number of persons.

Counsel for the Opponent submitted in her heads of argument that the Opponent "develops, manufactures and markets high quality specialist construction material for sub-straight preparation, levelling floors, the fixing of natural stones, ceramic tiles and other servicing material as well as providing the necessary training and support services for the application". This was not disputed by the Applicant argued the Opponent.

Counsel for the Opponent further submitted that the mark ARDEX had been used since 1978 and that the ARDEX branded products were well known in the field of building

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Tuwe AN

material. In support of the contention that its mark was used extensively and was well known, the Opponent relied on annexures "DAG 6" - "DAG 11" on pages 18-45 of the of the court record.

It was the Opponent's contention that on comparison, the trade marks ARDEX and ABEDEX were for all intents and purposes identical. Opponent's Counsel argued that it was evident that both marks commenced with the letter "A", and ended in the suffix "DEX". The goods covered by the ABEDEX trade mark were identical or similar to the goods protected by the Applicant's registered ARDEX trade mark. It was opined that this similarity was likely to cause deception or confusion. Counsel for the Opponent stated that the products sold under the ARDEX and ABEDEX trade marks were of the genus of building material. It was therefore the Opponent's contention that under the circumstances the ABEDEX trade mark offended against the provisions of Sections 10(12) and 10(14) of the Act.

Regarding the legal principles on the comparison of marks, the Opponent cited Wainstein & Co (Pty) Ltd v Buffalo Salt Works And Packing Co 1966 (3) SA 280 at 284), where the court quoted Parkers J's decision in Pianotist Company, Limited's Application, 23 RPC 774, and stated:

"You must take the two words. You must judge them, both by their look and by 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 marks is used in a normal way as a trade mark for the goods of the respective owners of the marks".

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Tuwe AN

It was stated in Plascon-Evans Paints Ltd v Van Riebeck Paints (Pty) Ltd 1984 (3) SA 623 at 641 that the notional customer is a person of average intelligence, having proper eyesight and buying with ordinary caution. It was further stated that...