Confusion and the Bounds of Trade Mark Monopolies: Foschini v Coetzee

• Date: 16 August 2019
• Citation: (2013) IPLJ 159
• Published date: 16 August 2019
• Pages: 159-164
• Author: Jeremy Speres

159

CONFUSION AND THE BOUNDS

OF TRADE MARK MONOPOLIES:

FOSCHINI V COETZEE

JereMy sPeres

*

Floor Swart Attorneys

From Pretoria comes a decision that’s in keeping with a rec ent liberal trend

in trade mark ca ses. Naturally this trend had its genesis i n Cape Town, where

most trends sta rt.

tHe DecIsIOn

The North Gauteng High C ourt, Pretoria, i n Foschini Retail Group (Pty)

Ltd v Coetzee 2013 JDR 0001 (GNP), unreported, faced an a ppeal against a

judgment of the Deputy Regist rar of Trade Marks.1

Coetzee had applied to regis ter his DUE-SOUTH device mark , which

included an encircled star dev ice overlapping the word DUE, in four classes.

Foschini opposed these applicat ions on the strength of its registr ations for

its word mark DUE SOUTH, which were register ed in 14 different classes

(only 6 were relied on in the opposition), none of which corresponded outright

with the classe s or goods/services specication s in respect of which Coet zee

sought registration.

Foschini uses its mark s in relation to goods and services offered by its DUE

SOUTH retail stores, wh ich are situated within shopping c entres nationwide

and which trade in outdo or, camping, sporting and adventu re clothing and

equipment. Coetzee, on the ot her hand, has a single store in Fransch hoek

dedicated to promoting South A frican arts and craft s.

Foschini initially led its opposition on the basis of ss 10(12), (14) a nd

(17) of the Trade Marks Act 194 of 1993 (‘the Act’) but, interesti ngly, only

persisted with s 10(14) before the Registrar and the court.

Section 10(14) outlaws the registration of a mark –

which is identical to a r egistered trade mark … or s o similar thereto that the u se thereof in

relation to goods or s ervices in resp ect of which it is sought to be reg istered and which are t he

same as or simil ar to the goods or serv ices in respect of which such t rade mark is register ed,

would be likely to dece ive or cause confusion…

The Deputy Registr ar accepted that the two ma rks themselves were

confusingly simi lar but dismissed the opposition on the basis t hat the goods

and services covered by Foschin i’s marks were not similar t o those of Coetzee’s

* BA LLB LLM (UCT).

1 At the time of wr iting, the High Cou rt’s decision was available at ht tp://www.safli i.org/za/cases/

and Juta’s unrepor ted Judgments.

SAIPL_2013_1_Text.indd 159 2013/11/15 11:43 AM

(2013) IPLJ 159

© Juta and Company (Pty) Ltd