Leoparding Consultants (Pty) Ltd v Apple, Inc

• Jurisdiction: South Africa
• Judge: Tuwe AN
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2393 (TRM)
• Docket Number: 2005/08165

Tuwe AN:

Leoparding Consultants (Pty) Ltd, a South African company has applied for the registration of the following trade marks:

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2005/08165 LEOPARDING in class 9 in respect of "software and electronic publications for legal, business, consulting and intellectual property fields and services".

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2005/08169 LEOPARDI G in class 38 in respect of "electronic communications for legal, business, consulting and intellectual property fields and services, telecommunication", and

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2005/08171 LEOPARDlNG in class 42 in respect of inter alia

2015 JDR 2393 p2

Tuwe AN

"designing of computer software and hardware for legal, business consulting and intellectual property fields and services, design and development of hardware and software".

The Opponent is Apple Inc, formally Apple Computer Inc, an American Company. The Opponent is the registered proprietor of trade mark registration no. 2003/20469 LEOPARD in class 9 in respect of "computers, computer software, computer system software".

The grounds for opposition is based on the provision of sections 10(4) and 10(14) of the Trade Marks Act 194 of 1993 ("the Act"). The relevant provision of the Act provides as follows:

10.

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

(4)

a mark in relation to which the applicant for registration has no bona fide intention of using it as a trade mark, either himself or through any person permitted or to be permitted by him to use the mark as contemplated by section 38,

(14)

Subject to the provision of section 14, a mark which is identical to

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Tuwe AN

a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof in relation to the 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.

The Opponent argues that the Applicant does not have the intention to use LEOPARDING for all of the goods and services in the very wide specification to which its trade mark applications relate. As a result the Opponent submits that the Applicant has no bona fide intention of using its LEOPARDING trade mark in relation to all the class 9 goods, class 38 and 42 services forming the subject of its applications, as contemplated in section 10(4) of the Act.

The Opponent's further contention is that the Applicant's LEOPARDING trade mark is both visually and phonetically very similar to the Opponent's LEOPARD trade mark. According to the Opponent, the adding of the letters...