American Chewing Products Corporation v American Chicle Company

• Jurisdiction: South Africa
• Judge: Tindall ACJ, Greenberg JA and Schreiner JA
• Judgment Date: 05 April 1948
• Citation: 1948 (2) SA 736 (A)
• Hearing Date: 17 March 1948
• Court: Appellate Division

Greenberg, J.A.:

This is an appeal from a decision of THOMAS, J., in the High Court of Southern Rhodesia. In 1941 the respondent obtained registration, under the Trade Marks Registration Act, Chapter 221 of the Statutes of Southern Rhodesia, of a trade mark in respect of chewing gum, in class 42, which consisted of the word 'Chiclets'. During 1946 the appellant made application to the Registrar of Deeds, who in terms of the Act keeps the register of trade marks, for the registration, in class 42 and in respect of chewing gum, of a trade mark consisting of the word 'Chicks'.

Copies of the two marks appear in the record, and I adopt the description of them given by THOMAS, J., in his reasons for judgment; he said:

'As to the two marks, 'Chiclets' is written in distinctive letters which resemble roughly what is known as Old English style of writing, whereas 'Chicks' is printed in open-faced block letters on a label with the words 'Chewing gum' in small letters above and a device of two little chicks below.'

When the application was made, the respondent lodged an objection to the registration of the appellant's trade mark, based on sec. 9 (1) of the Act which provides that, without the special leave of the High Court, the Registrar shall not

'register in respect of the same goods or classes of goods a trade mark . . . so nearly resembling a trade mark already on the register with respect to such goods or classes of goods as to be calculated to deceive'.

This sub-section is similar to the provisions of Union Act 9 of 1916, sec. 105, and of the earlier English Acts (see sec. 73 of the Trade Marks Act of 1883 and sec. 11 of the Act of 1905). The latest

Greenberg JA

English Act, the Trade Marks Act of 1938, sec. 11, uses the words 'likely to deceive or cause confusion' but in the case of Aristoc Ltd v Rysta Ltd. (1945, A.C., p. 68), which was decided under that Act, it was not suggested that these words called for a different interpretation.

The Registrar, after hearing both parties, over-ruled the objection and registered the trade mark 'Chicks' in terms of the appellant's application.

The respondent thereupon applied to the High Court for an order for the rectification of the register by the removal from it of the appellant's trade mark. The Court granted the order and the appellant, with the leave of the High Court, now appeals against this order.

It was stated in argument before THOMAS, J., on behalf of the appellant, that its mark has been registered in the United States of America since 1929 and in the Union of South Africa since 1934. The learned Judge has pointed out that there was no evidence to support these allegations, but that even if there had been, it would be unsafe to base anything on them. I agree that the mere fact of these registrations cannot assist the appellant.

The respondent's complaint was

'that the word 'Chicks' is easily confused, as regards appearance and sound, with the word 'Chiclets', and even when appearance and sound are distinguished, there is a clear suggestion that 'Chiclets' chewing gums are a diminutive form of 'Chicks' chewing gums'.

Mr. Brink, on behalf of the appellant, did not dispute that the decision of this appeal depended solely on the view that this Court took, based on the appearance of the two marks, as to whether the use of the appellant's mark would cause confusion among such persons as, on the evidence before us, the Court was entitled to say would be, or would be likely to be, the purchasers of the commodities in question. He also did not contend that in regard to local conditions of which the Court was entitled to take judicial notice, e.g., the use of words in the English language, we were not in the same position as if the case had related to the Union or a portion of it and not to Rhodesia. He did however raise a number of points in regard to the correct method of approach. His first contention, apart from the question of onus, with which it is not necessary to deal, was in regard to the meaning of the words 'calculated to deceive'. The learned Judge a quo, after pointing out that 'calculated' may mean 'likely' or 'intended', interpreted

Greenberg JA

'calculated' as meaning 'likely' and not 'intended'. This is in accordance with the interpretation given to the word in relation to fraud (Rex v Kruse (1946 AD 524 at p. 533)) and is moreover in accordance with the context in the section, which could not be read as meaning 'so nearly resembling...