New Media Publishing (Pty) Ltd v Eating Out Web Services CC

• Jurisdiction: South Africa
• Judge: Thring J
• Judgment Date: 04 April 2005
• Citation: 2005 (5) SA 388 (C)
• Docket Number: 6937/03
• Counsel: A R Sholto-Douglas SC for the applicant. A C Oosthuizen SC for the respondent.
• Court: Cape Provincial Division

Thring J:

The applicant is a publisher of, inter alia, various magazines in South Africa. One of these is called Eat Out. It is published annually. The first edition, that for 1999, was published in the latter part of 1998 and was distributed and made available for sale to the public about I November, 1998. A new edition has appeared each year since 1999. It is a guide to restaurants throughout South Africa. It contains information about these restaurants such as location, telephone number, days and hours of opening, the type of cuisine offered, prices, a short review of the restaurant compiled by an independent contributor to the magazine, etc. J

Thring J

The restaurants included in the publication are chosen by its editor. The 2003 edition contained information about A approximately 800 restaurants. It is a high quality publication printed on glossy paper. The price, to a member of the public, of the 2003 issue was R29,95. It is sold at bookshops, newsagents and supermarkets. The estimated number of copies distributed for sale in each of the years 1999 to 2002 is as follows: B

1999	45 000
2000	23 000
2001	17 500
2002	20 000

(Of these, a substantial number were distributed together with, and, it would seem, as a kind of supplement to, another magazine called C Habitat: in 1999, 20 000 copies were thus distributed, in 2000, 16 000, and in 2001 and 2002, 10 000 copies in each year. In addition, 2 000 copies are distributed each year to American Express platinum card members.) The applicant derives its revenue as regards this publication from sales of the magazine to the public and from D advertisements of various kinds which are placed in it. The restaurants which feature in its text, however, do not pay to do so. They pay only for advertisements which they may wish to place in the magazine, whether or not they feature in the text. The applicant's revenue from advertising in respect of the 2003 edition of Eat Out exceeded a million rand. E

The applicant also has an internet website known as www.eat-out.co.za. This has been registered on the internet since 24 November 2000. A visitor to this website is able to obtain some information about restaurants, but it is not as comprehensive as what appears in the applicant's printed publication, Eat Out. F

The applicant is the proprietor of a registered trade mark. The mark consists of the words 'Eat Out Guide' and it is registered in Class 16, which comprises:

'Publications and printed matter; newspapers, periodicals, books, guides, magazines, manuals, brochures, journals, advertising material, photographs, bookbinding materials: paper and cardboard and articles made therefrom.' G

The registration was applied for in terms of s 16(1) of the Trade Marks Act 194 of 1993 (to which I shall refer herein as 'the Act') on 3 July 1998 and was duly registered in terms of s 29(1) of the Act with effect from that date. It is valid for a period of 10 years. H

The applicant also publishes a magazine called Sleep Out, but I was informed from the Bar that the relief sought in the notice of motion in respect thereof is not being persisted in by the applicant, and I need say no more about this.

In 2000 the first respondent was formed (to which I shall refer simply as 'the respondent', as the second respondent, the I administrator of the website domain 'co.za' has been joined merely so that it can be ordered to give effect to the relief sought by the applicant against the first respondent, which relief it does not oppose). The respondent has websites known as www.eating-out.co.za and www.eatingout.co.za. It does not publish printed matter. Anyone with access to the internet may J

Thring J

visit these sites free of charge and make use of the service provided there by the respondent. That A service consists of the provision of information about restaurants throughout South Africa. The information is similar in many respects to that contained in the applicant's 'Eat Out' magazine, and includes such details as location, type of food offered, etc. However, the applicant makes no complaint of plagiarism, that is, of word-for-word B copying of the text used in 'Eat Out'. The respondent derives its revenue from the subscriptions which it collects from the restaurants which are included on the website and, to a much smaller extent, from advertisements which appear on the site. It is in dispute on the papers exactly when the respondent's website first became operational, and for whose benefit; however, at best for the respondent this was, at the earliest, in June 2000. It is claimed by the respondent C that its websites are visited by approximately 1000 persons per day.

On 22 August 2003 the applicant launched this application. In essence, it seeks orders:

(1)

Restraining the respondent from infringing its registered trade mark; and D

(2)

Restraining the respondent from passing off its business, products or services as those of the applicant and from using the name or mark 'Eating Out', or any mark confusingly or deceptively similar thereto, in any manner so as to connect it with the applicant's business, products or services. E

Voluminous papers have been delivered by both sides: they run to some 900 pages. There are three main areas of dispute in this matter, viz the applicant's trade mark claim, its claim relating to alleged passing-off, and the respondent's defence of acquiescence. I shall deal with each of these in turn. F

The applicant's trade mark claim

The applicant's trade mark is, as I have said, registered in Class 16, which comprises goods of certain kinds. The respondent does not produce goods: it provides a service to the public on the internet. G However, the applicant relies on the provisions of s 34(1)(b) of the Act, the relevant parts of which read as follows:

'The rights acquired by registration of a trade mark shall be infringed by -

(a)

. . . H

(b)

the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion;

. . . .' I

The applicant complains that the unauthorised use by the respondent of the mark 'Eating Out' in relation to its electronic restaurant guide constitutes an infringement of the applicant's registered trade mark, inasmuch as the respondent's mark is deceptively or confusingly similar to the applicant's mark, and it is used by the respondent in the course of J

Thring J

trade in relation to services which are so similar to the goods in respect of which the A applicant's mark is registered that in such use there exists the likelihood of deception or confusion. In essence, the respondent contends, on the other hand, in the first place, that its mark is insufficiently similar to the applicant's, and, secondly, that its activities neither fall within the ambit of the goods listed in Class 16, nor are they so similar thereto that there is a likelihood, in its use of its mark, of deception or confusion between the applicant's B goods and the respondent's services.

The enquiry in this matter consists of two separate but closely interrelated questions: first, are the two marks identical or sufficiently similar to one another; and secondly, is the respondent's mark being used unauthorisedly in the course of trade C in relation to services which are so similar to the applicant's goods in respect of which its mark is registered that in such use there exists the likelihood of deception or confusion? There is no question here but that the respondent is using its mark without the applicant's authority, and is doing so in the course of trade. There is, it seems to me, an interdependence between the two legs of the D inquiry: the less the similarity between the respective goods or services of the parties, the greater will be the degree of resemblance required between their respective marks before it can be said that there is a likelihood of deception or confusion in the use of the allegedly offending mark, and vice versa. Of course, if the respective goods or services of the parties are so dissimilar to each E other that there is no likelihood of deception or confusion, the use by the respondent even of a mark which is identical to the applicant's registered mark will not constitute an infringement; also, if the two marks are sufficiently dissimilar to each other no amount of similarity between the respective goods or services of the parties will F suffice to bring about an infringement. I respectfully agree with the learned authors of Webster and Page South African Law of Trade Marks 4th ed para 12.23 (at 12-41), where they say, with reference to s 34(1)(b) of the Act:

'(O)n a proper interpretation of the South African section the degree of resemblance between the marks and the degree of G resemblance between the goods or services must be such that their combined effect will be to produce a likelihood of deception or confusion when that mark is used on those goods or services.'

I also agree with Mr Sholto-Douglas, who appears for the applicant, that the proper approach in a trade mark infringement H case of this kind is to compare the applicant's registered mark and any fair notional use of it, on the one hand, with the allegedly offending mark and the manner in which it is actually used by the respondent, on the other. For the purposes of this enquiry distinctiveness on the part of the registered mark is assumed, for distinctiveness must be taken to have been established as required by I s 9 of the Act at the time of registration. There is no counter-application here for the...