Bhavanbhai v Ebony Braids & Hair Pieces CC

• Jurisdiction: South Africa
• Judge: AN Tuwe (Mr)
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2323 (TRM)

Tuwe:

The Applicant is Pareshbhai Govindbhai Bhavanbhai, a South African citizen who resides at 39 St Gothard Avenue, Mayfair West, Johannesburg (hereinafter referred to as "the Applicant"). The Applicant applied for the registration of trade mark application nos. 2006/14679 SOFT DREADS and 2006/14680 SOFT DREADLOCKS, both in class 26 in respect of:

"Hair pieces, hair extensions, wigs, toupees, but excluding goods in the form of dreadlocks."

The Opponent is Ebony Braids & Hair Pieces CC, a close corporation duly incorporated in accordance with the company laws of the Republic of South Africa, with its principal place of business at 44 Jacobs Street, Chamdor, Krugersdorp, 1740 (hereinafter referred to as "the Opponent").

The Applicant's applications were being opposed on two grounds. The first was that the marks were not capable of distinguishing within the meaning of Section 9 of the Trade Marks Act, Act 194 1993 ("the Act"). The second basis was that the marks consisted exclusively of an indication which had become customary in the current language and in the bona fide and established practice of the trade as contemplated by Section 10(2)(c) of the Act.

Sections 9 and 10(2)(c) of the Act provide as follows:-

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9. Registrable trade marks.- (1) In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations.

(2) A mark shall be considered to be capable of distinguishing within the meaning of subsection (1) if, at the date of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by reason of prior use thereof.

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

(2)(c) a mark which consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practice of the trade."

Counsel for the Opponent argued that the word "Soft" was commonly used in the hair industry. It had been used to designate the intended results obtained by the customer after use of the hair products, or that the hair pieces that were to be added to the customers hair were soft in texture. A further argument that was advanced was that the word "Dread" was a generic term meaning "Rastafarian", and "dreadlocks" was a generic term, which meant hair worn in a Rastafarian style of long tightly curled strands.

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Counsel for the Opponent also submitted that the words "DREAD" and "DREADLOCKS" were commonly used in the hair industry. They had each developed as a descriptive term, and became widely known to describe certain hair styles. Both words had become established and customary in the trade. These words were therefore descriptive of the goods in respect of which the Applicant had sought registration.

It was further contended on behalf of the Opponent that the Applicant could not monopolize these words, and prevent others in the trade from using either phrase, which described a particular type of hair piece. Accordingly, the Opponent alleged that the marks were not capable of distinguishing within the meaning of Section 9 of the Act, and that they consisted exclusively of indications which had become customary in the current language in the bona fide established practice of the trade, as was contemplated by Section 10(2)(c) of the Act.

Counsel for the Opponent contended that the Applicant's amendment of the specification by the addition of the phrase "but excluding goods in the form of dreadlocks" was revealing. It was opined that if the marks in question were properly distinctive, any such exclusion was not, in the slightest, necessary. In addition, it was said that the exclusion took the matter no further, since dreadlocks were tightly curled strands of hair, and if soft dreads, and soft dreadlocks, were not each a complete

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description of what the Applicant's hair extensions and wigs were intended to be, or to produce, then the trade marks were inherently deceptive.

Counsel for the Opponent pointed out that the Applicant had not shown the Tribunal precisely the nature of the goods that were actually sold, and it had to be presumed that the Applicant's use was not inherently deceptive. But then, it ought to be descriptive. The marks were either deceptive, as applied to the goods the Applicant might sell, or they were descriptive.

The Applicant's proposition that it had used the marks extensively and that they had acquired a reputation, was disputed by the Opponent. Counsel for the Opponent submitted that there were several inconsistencies and fallacies with that contention. Firstly, he stated that the applicable authorities showed that use did not equal distinctiveness. Secondly, the law was that some marks were so non-distinctive that no amount of use would make them capable of registration. And thirdly, there were some marks which fell into that category of quality which could not be monopolized, for to do so would unfairly close off the English language to other bona fide users.

Counsel for the Opponent contended that the only relevant statement by the Applicant was his own assertion that he needed the marks to be registered to assist his steps to prevent unauthorized use by others. That being the case, it was submitted there was no evidence put forward by the Applicant to demonstrate use of the mark. That was matter within his own knowledge. The reasonable inference was that use was precisely what

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the Opponent asserted it to be, namely, descriptive, established and customary in the trade.

In view of what has been stated above, cited in the heads of argument of the Opponent was a passage from The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd, where it was said:

"...a word or words to be really distinctive of a person's goods must generally speaking be incapable of application to the goods of anyone else".

It was in this regard, Counsel for the Opponent...