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

• Jurisdiction: South Africa
• Citation: 2005 (5) SA 388 (C)

New Media Publishing (Pty) Ltd v Eating Out Web Services CC
2005 (5) SA 388 (C)

2005 (5) SA p388

Citation	2005 (5) SA 388 (C)
Case No	6937/03
Court	Cape Provincial Division
Judge	Thring J
Heard	March 7, 2005; March 8, 2005
Judgment	April 4, 2005
Counsel	A R Sholto-Douglas SC for the applicant.; A C Oosthuizen SC for the respondent.

Flynote : Sleutelwoorde B

Intellectual property — Trade mark — Infringement — Trade Marks Act 194 of 1993, s 34(1)(b) — Establishing infringement — Applicant's mark, registered in respect of goods, allegedly infringed by respondent's mark, used in respect C of services — Two questions to be answered: (1) whether marks sufficiently similar, and (2) whether respondent's mark used in relation to services so similar to applicant's goods that likelihood of deception or confusion existing — Questions being interdependent, insofar as lesser similarity between goods and services requiring greater resemblance between marks, before deception or confusion arising (and vice versa). D

Intellectual property — Trade mark — Infringement — Trade Marks Act 194 of 1993, s 34(1)(b) — Establishing infringement — Comparison of registered and allegedly offending marks — Marks consisting of words — Comparison of marks not to be influenced by fact that respective 'logos' of parties, in which marks incorporated, being dissimilar — Court not to look beyond, firstly, E words of registered trade mark and any fair notional use of them in 'logo' and, secondly, words of allegedly offending mark and use to which they actually put by respondent in his 'logo' and other material — This approach differing fundamentally from approach in passing-off cases, where actual get-up and appearance of both items concerned to be examined. F

Intellectual property — Trade mark — Infringement — Trade Marks Act 194 of 1993, s 34(1)(b) — Establishing infringement — Deception or confusion — Principles applicable to enquiry whether allegedly offending mark so nearly resembling registered mark as to deceive or cause confusion, set out. G

Trade and competition — Trade — Passing-off — Of name — Reputation of name — Where name being descriptive (rather than fancy, invented or made up) more difficult for trader to prove reputation of name, ie that substantial number of members of public or persons in trade regarding goods and services H bearing that name as coming from particular single source — No individual ordinarily permitted to monopolise words which are common heritage of all — Such monopoly only possible upon proof that descriptive words having secondary or subsidiary meaning, ie, proof that substantial number of members of public or persons in trade have come to regard descriptive words as distinctive of particular goods and services. I

Waiver — Acquiescence — Defence of — Against claim of party who, having full knowledge of rights and of infringement thereof, lies by without asserting them — Acquiescence being form of tacit consent, and thus requiring unequivocal indication by claimant of acceptance of infringement — Mere statement that claimant has decided not to institute legal J

2005 (5) SA p389

proceedings not meaning that he has abandoned, renounced or surrendered rights — Semble: A Doubtful whether defence of acquiescence still part of our law.

Headnote : Kopnota

Where it is alleged that the applicant's trade mark, registered in respect of certain goods in terms of s 29(1) of the Trade Marks Act 194 of 1993, is being infringed by the respondent's mark, which is used in respect of certain services, two separate but closely B interrelated questions arise under s 34(1)(b) of the Act: Firstly, are the two marks identical or sufficiently similar to one another? Secondly, is the respondent's mark being used unauthorisedly in the course of trade in relation to services which are so similar to the applicant's goods, in respect of which the mark is registered, that in such use there exists the likelihood of deception or confusion? There is an interdependence between the two legs of C the enquiry: The less the similarity between the respective goods and 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 and services of the parties are so dissimilar to each other that there is no likelihood of deception or confusion, the use by D 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 suffice to bring about an infringement. (At 393G - I and 394C - F.) E

For the purposes of the above enquiry the proper approach 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. Where the registered mark and the allegedly offending mark consist of words, this means that the comparison of the marks should not be influenced by the fact that the respective 'logos' of the parties, in which the marks are incorporated, are dissimilar. Because the applicant is F entitled to use his registered trade mark in any fair way he chooses, he may conceivably use it in a 'logo' which bears greater resemblance to the respondent's 'logo' than is in fact the case. In comparing the marks it would consequently be a mistake to look beyond, first, the words of the registered trade mark and any fair notional use of them (or of a portion of them in or in conjunction with a 'logo' or other form of get-up), and, second, the words of the allegedly G offending mark and the use to which they are actually put by the respondent in his 'logo' and other material. In this respect the enquiry differs fundamentally from that which is involved in considering whether there has been a passing-off, where the actual get-up and appearance as a whole of both items concerned must be examined. (At 394H - I and 397D - G, paraphrased.) H

The legal principles applicable to the enquiry whether an allegedly offending mark so nearly resembles a registered mark as to be likely to deceive or cause confusion, set out with reference to authority. (At 395A - 396C.)

In a claim based on the alleged passing-off of the name of the applicant's goods or services, the applicant must establish on a balance of probabilities inter alia that the name has gained a 'reputation', ie, that it has become distinctive as indicating a particular origin of the goods or services. Where the name I concerned is descriptive rather than fancy, invented or made up, it will, generally speaking, be more difficult for a trader to establish that a substantial number of members of the public or persons in the trade will regard the goods or services bearing that name as coming from a particular single source. There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive J

2005 (5) SA p390

it is equally applicable to any business of a like kind. Its very descriptiveness ensures that it is A not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. No individual can ordinarily be allowed to monopolise words which are the common heritage of us all, and which provide a convenient and natural method, even if not the only or most correct method, of describing an article. To achieve such a monopoly the applicant must establish that the descriptive words have acquired a secondary or subsidiary meaning, B ie, he must show that a substantial number of members of the public or persons in the trade have come to regard the descriptive words as distinctive of his goods and services. (At 400G - H, 401D, 402C - F, 403D - E and 404E/F - H, paraphrased.)

The defence of 'acquiescence' was recognised in Policansky Bros v Hermann & Canard 1910 TPD 1265. It is said to be a branch of the C law of dolus malus, and precludes a person who, having full knowledge of his rights and of the infringement of those rights, lies by without asserting them. As a substantive defence, 'acquiescence' is a form of tacit consent, and thus requires an unequivocal indication by the person sought to be so precluded of his acceptance of the infringement of his rights. A mere statement to the effect that a party D has decided not to institute legal proceedings does not mean that he has abandoned, renounced or surrendered his right; nor does it necessarily mean that he henceforth consents to its continued infringement. It is doubtful whether the defence of 'acquiescence' is still a part of our law. (At 406I - 407E and 407G - 405B.) E

Cases Considered

Annotations

Reported cases

Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W): dictum at 436H - 437B applied

Appalsamy v Appalsamy and Another 1977 (3) SA 1082 (D): referred to F

Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (SCA): dictum at 850E - G applied

Bank of Lisbon and South Africa Ltd v De Ornelas and Another 1988 (3) SA 580 (A): referred to

Boswell Wilkie Circus v Brian Boswell Circus 1984 (1) SA 734 (N): dictum at 737F - H applied G

Botha v White 2004 (3) SA 184 (T): referred to

Bress Designs (Pty) Ltd v GY Lounge Suite Manufacturers (Pty) Ltd and Another 1991 (2) SA 455 (W): dictum at 471D - E applied

Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green Point) (Pty) Ltd 1974 (2) SA 125 (C): dictum at 137D - F applied H

Burnkloof Caterers (Pty) Ltd v...