Comparison Creep and the Conflation of Trade Mark Infringement and Passing Off

• Published date: 24 May 2019
• Date: 24 May 2019
• Author: Jeremy Speres
• Pages: 87-93
• Citation: (2015) IPLJ 87

COMPARISON CREEP AND THE

CONFLATION OF TRADE MARK

INFRINGEMENT AND PASSING OFF



Senior associat e, Trade mark enforceme nt, Spoor & Fisher, Cape Town

1. In tro duc tio n

There is a growing tende ncy in courts around t he globe to permit an

increasingly broader s pectrum of matter ext raneous to the trade mark s at issue

to be considered in the asse ssment for confusing similar ity in a trade mark

infringeme nt claim. This is especially so with regard to reputed elements of

the marks. This ‘compar ison creep’ appears to be leading to a convergence of

statutory t rade mark infringement a nd the common law of passing off, which,

in this write r’s view, may well be undermining t he value and rationale of the

trade mark regist ration system.

This development has tended to favour the claim ant in the higher courts of

Europe. However, recent South African cases illustrate that the tendency h as

crept into our cour ts as well and can favour the defendant. This note consider s

the orthodox position that r ules out the consideration of extraneous mat ter –

which is grounded in the r ationale for the trade mark registration syste m itself

– followed by an examination of the expansion of the enquir y in the European

higher courts. Next, the rationale for comparison creep, namely appeals to

common sense and the real ity of the marketplace, is considered. In closing,

the author will make some suggest ions for balancing the respective rationales

for comparison creep and t he registration system.

   



In the past, in case s of trade mark infringement where the claimant relied

on a registered trade mark, the orthodoxy has been t o limit the comparison

of the two marks at issue to the claimant’s mark (as registered) versus t he

defendant’s mark (as used), shorn of all extraneous matt er. Thus, a defendant

could not seek to distingu ish his product by relying on matter exter nal to his

trade mark as used, for example, by relying on indications elsewhere on the

product that it is in fact produc ed by him, as he could do in a claim for passing

off. In the words of Judge Walker in United Biscuits (UK) Ltd v Asda S tores

Ltd,1 the comparison is ‘mark for sign’.

 

for the trade mark regist ration system itself. The registration system was

   

1 [1997] RPC 513 at 535.

87

(2015) IPLJ 87

© Juta and Company (Pty) Ltd