Clover SA (Pty) Ltd v Dairy World (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Tuwe AN, deputy Registrar of Trade Marks
• Judgment Date: 01 April 2014
• Docket Number: Information not supplied
• Court: Registrar of Trade Marks
• Hearing Date: 01 March 2014
• Citation: 2014 JDR 0224 (TRM)

The Applicant for registration is Dairy World (Pty) Limited, a South African company of 240 Zeiler Street, Pretoria West, South Africa (hereinafter referred to as "the Applicant"). The Applicant applied for the registration of trade mark application no. 2005/10174 YOGI – YO in class 29 in respect of:

"Meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats"

The application is opposed by Clover S.A. (Pty) Limited, formerly Clover SA Limited, a South African company having its principal place of business at Clover Park, 200 Constantia Drive, Constantia Kloof, Roodepoort, 1709, Gauteng (hereinafter referred to as "the Opponent').

The Opponent is the proprietor in South Africa of the following trade mark registrations:

(i)

No. 1991/03319 YOGI SIP in class in class 29 in respect of:

"Dairy products including milk, yoghurt and simulates therefore"

(ii)

No. 1991/0163 YOGI SIP in class 30 in respect of:

"Beverage of all kinds included in this class, frozen confections, ice-cream and sorbets, all the aforesaid goods containing yoghurt and being in the form suitable for drinking"

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 for opposition purposes provide that:

2014 JDR 0224 p3

90 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 bonos 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 in its heads of arguments stated that the Applicant bears the onus of satisfying the Registrar that the proposed mark qualifies for registration, and that in this specific instance, there was no reasonable probability of confusion or deception (The Upjohn Company v Merck 1987 (3) SA 221 (T) at 224B/C). The Opponent submitted that it followed that if the Registrar was left in doubt on the issue of the likelihood of deception or confusion, it was his duty to refuse the registration. The Opponent further opined that if it was equally probable whether or not deception or confusion would occur, the Registrar should refuse registration.

2014 JDR 0224 p4

Counsel for the Opponent submitted that the relevant date for determining the prior rights of the parties was the date of application being, 24 May 2005.

The issue was therefore whether the Applicant's mark, if used in relation to the goods for which registration was sought would cause deception or confusion, taking into account the reasonable use of the Opponent's trade mark YOGI SIP, in relation to the goods for which this trade mark was registered. It was submitted by the Opponent that the only significant difference between the two grounds of opposition in this matter was that, on the facts of this matter, the existence of the Opponent's two marks in classes 29 and 30 of the trade mark register presupposed, for the purpose of Section 10(14), the very reputation which the Opponent had established for the purpose of Section 10(12).

Miss Joubert, who appeared on behalf of the Applicant, submitted that although the onus rested on the Applicant to show that its trade mark application was registrable, it remained for the Opponent to at least lay its basis for its opposition to the registration of the subject trade mark application. The Applicant submitted that the Opponent had failed to do so. She further submitted that in respect of both grounds of opposition, the likelihood of deception or confusion was central to the decision as to whether the subject trade mark application was registrable or not.

Regarding reputation...