ABE Construction Chemicals (Pty) Limited v Den Bravin SA (Proprietary) Limited

• Jurisdiction: South Africa
• Judge: Tuwe, AN
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2401 (TRM)
• Docket Number: 2004/06598

Tuwe AN:

The Applicant for registration is Den Bravin S.A. (Pty) Limited a South African company of 2 High View Boulevard, High View Business Park, Ferndale Ext. 26, Johannesburg, Gauteng, South Africa (hereinafter referred to as "the Applicant"). The Applicant applied to register trade mark no. 2004/06598 SUPA-ACRYL in class 1 in relation to:

"Sealants (silicone and acrylic sealants respectively)"

The application is being opposed by A.B.E. Construction Chemicals (Pty) Limited; a South African company of 7 Wilcox Road, lsipingo, Kwazulu-Natal, South Africa (hereinafter referred to as "the Opponent"). The Opponent is the proprietor of the following registered trade marks:

(i)

No. 1995/15643 SUPER LAYCRYL in class 2 for:

"Paints; varnishes; lacquers; primers; thinners; coatings; epoxy coatings; preservatives against rust and against deterioration of wood; anti-corrosives ; anti-abrasives; colourants; mordants; raw natural resins; epoxy resins metals in foil and powder form for paints; decorators; printers and artists "

(ii)

No. 1995/15644 SUPER LAYCRYL in class 17 for:

"Rubber; gutta-percha; gum; asbestos; mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packaging; stopping; sealing; covering and insulating materials; sealants; epoxy resins; flexible pipes; not for metal".

(iii)

No. 1994/03041 SUPER LAYCRYL in class 19 for:

"building materials (non-metallic); non-metallic ridged pipes for building; asphalt; pitch and bitumen; roofing materials and membranes; non-metallic transportable

2015 JDR 2401 p3

Tuwe AN

buildings; monuments; not of metal; parts; fittings; accessories and components therefore."

The opposition was based on the provisions of Sections 10(12) and 10(14) of the Trade Marks Act, Act No. 194 of 1993 ("the Act"). The respective sections the Opponent relied upon provide 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:

(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 bono mores; or be likely to give offence to any class of persons;

(14)

subject to the provisions of section 14; a mark which is identical to a registered trade mark belonging to a different proprietor also similar thereto that the use 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.

The Opponent submitted in the founding affidavit that the Applicant's SUPER–ACRYL trade mark was substantially similar to its registered SUPER LAYCRYL trade marks and

2015 JDR 2401 p4

Tuwe AN

its use in relation to the goods for which it was sought to be registered (sealants), which were very similar to the goods in respect of which the Opponent's trade mark was registered and thus would be likely to deceive or cause confusion. It also claimed its earlier...