Designer Group (Pty) Limited v Chantelle

• Jurisdiction: South Africa
• Judge: AN Tuwe (Mr)
• Court: Registrar of Trade Marks
• Docket Number: Information is not supplied

Tuwe:

The Applicant is Designer Group (Pty) Ltd, a company organized and existing under the laws of the Republic of South Africa, of Corner Herman and Kuschke Streets, Meadowdale, Extension 3, Germiston, South Africa (hereinafter referred to as "the Applicant").

The Applicant had made an application to register trade mark no. 2007/05561 CHANTELLE in class 3 in respect of:

"Soaps, perfumery, essential oils, cosmetics, fragrances, deodorants and deodorizers, anti-perspirants and body care products".

The application was filed on the 15 March 2007, and advertised in the Patent Journal of 26 March 2008.

The Opponent is Chantelle, a French company organized and existing under the laws of France of 6-10 Rue De Provigny, 94230, Cachan, France (hereinafter referred to as "the Opponent"). The Opponent is the registered proprietor of trade mark no. 1964/01137 CHANTELLE in class 25 in respect:

"Girdles, brassieres, articles of underclothing, being swimsuits (being articles of clothing, all being knitted or made wholly or principally of knitted materials and stockings".

The Opponent based its opposition on its earlier registered identical mark and on the provision of Section 10(14) of the Trade Marks Act, Act 194 of 1993 ("the Act").

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Counsel for the Applicant stated in her heads of argument that on considering whether a likelihood of confusion existed, it was apposite to take into account guidance provided by the Court of Justice of the European Union ("CJEU") in a number of judgments. Factors to be borne in mind in terms of these cases as stated in paragraph's 9.1 up to 9.6 on page six of the Applicant's heads of argument, are namely:

(a)

the likelihood of confusion must be appreciated globally, taking into account all relevant factors;

(b)

the matter must be judged through the eyes of the average consumer of the goods in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparison between marks and must instead rely upon the imperfect picture of them as he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c)

a lesser degree of similarity between the goods or services may be offset by a great degree of similarity between the marks, and vice versa;

(d)

there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(e)

mere association in the strict sense that the later mark brings the earlier mark to mind, is not sufficient, and

(f)

the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense.

Section 10 of the Act states that:-

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"The following 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:

10 (14) subject to the provision of section 14, a mark which is identical to a registered mark belonging to a different proprietor or so similar thereto that the use thereof 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 of such mark".

It was common cause that the parties' respective marks were identical. The enquiry therefore did not rest on the identity of the marks, but on the similarity of the goods.

The Opponent's representative submitted in his heads of arguments that the enquiry in terms of Section 10(14) proceeded on the assumption that the Opponent's mark had been normally and fairly used in relation to all of the goods for which it was registered. One assumed therefore that the trade mark had acquired a reputation and goodwill in respect of all those goods, which he alleged were sold at all kinds of shops, including departmental stores such as Edgars. He submitted further that the Tribunal should assume that the Applicant was using its CHANTELLE trade mark in respect of all the goods for which registration was sought. The Tribunal should further also assume that

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the goods covered by the Applicant's application were sold at all kinds of shops, including departmental stores.

Having taken all these assumptions into account the Opponent's representative intimated that the Tribunal should also take into account the notional use, and decide whether use of the Applicant's trade mark would cause deception or confusion with the Opponent's trade mark amongst a substantial number of people.

The Opponent's representative reiterated in paragraph 5 on of his heads of argument that it was only the goods of the 2 respective marks that were not identical, and the only question was whether the goods were the same as, or similar to each other.

The goods that the Tribunal had to compare were the Applicant's:-

"Soaps, perfumery, essential oils, cosmetics, fragrances, deodorants and deodorizers, anti-perspirants and body care products",

and the Opponent's :-

"Girdles, brassieres, article of underclothing and swimsuits (being...