Paramount Mills (Pty) Ltd v Border Star Bakery (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Tuwe, Deputy Registrar
• Judgment Date: 15 November 2011
• Docket Number: Information not supplied
• Court: Commissioner of Patents
• Hearing Date: 15 November 2011
• Citation: 2013 JDR 0965 (CP)

Tuwe, Deputy Registrar

The Applicant for registration is Paramount Mills (Pty) Ltd, a company incorporated in terms of the Companies Act, having its principal place of business at 4 Rayon Road, East London, South Africa. The Applicant has applied to register trade mark no. 2005/19585 STARBAKE in class 30 in respect of:

"Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle, yeast baking powder, salt, mustard, vinegar, sauces (condiments), sources, ice."

The Opponent is Border Star Bakery (Pty) Ltd, a company incorporated in terms of the Companies Act, having its principal place of business at 27 Brill Street, Arcadia, East London, Eastern Cape, South Africa. The Opponent is the registered proprietor of trade mark registration number 2004/12095 STAR BAKERY registered in class 35 in respect of:

'Advertising, business management, business administration, office functions, offering for sale and the sale of goods in the retail and wholesale trade."

The Opponent's grounds of opposition were based on the provisions of Sections 10(12) and 10(14) of the Trade Marks Act, Act 194 of 1993 ("the Act").

2013 JDR 0965 p3

Tuwe, Deputy Registrar

Section 10(12) of the Act provides that a mark shall not be registered if is:

"a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons"

Section 10(14) of the Act provides that a mark shall not be registered which is:

"identical to a registered trade 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 trade mark consents to the registration of such mark."

In his heads of argument, Counsel for the Opponent submitted that the Opponent and its predecessors in title had made extensive use of the trade mark STAR BAKERY since 1968 in respect of the services for which it had registration and also in relation to bread products; in the Eastern Cape. It had also made extensive use of the trade mark STAR in respect of bread during that time. During the period 2000 - 2005 it sold STAR branded bread in excess of R500 million. Its trade marks were used on letterheads, business cards, various premises, billboards, delivery vehicles, packaging material and the like.

2013 JDR 0965 p4

Tuwe, Deputy Registrar

The Opponent's Counsel indicated that there could be no doubt that the Opponent enjoyed enormous reputation in the trade mark STAR BAKERY and the trade mark STAR in respect of its goods and services. This could be inferred from enormous use and there was no evidence required. In support of the Opponent's alleged reputation reference was made at the hearing to paragraph 9 of the founding affidavit on pages 6 and 7 showing sales figures of the mark STAR and the packaging where the name STAR BAKERY appeared.

It was trite that the onus rested on the trade mark applicant to prove that its trade mark application was capable of registration. If there was any doubt it should be refused (The Upjohn Company v Merck and another 1987 (3) SA 221 at 224).

In response to Opponent's alleged reputation, the Applicant's Counsel stated in its heads of argument that the onus to prove reputation, when relying on Section 10(12), rested with the Opponent. Thus, it was incumbent on the Opponent to adduce evidence to show that the mark it relied on had acquired a reputation. Only if such evidence was adduced, it became necessary for the Applicant to negate the reasonable probability of deception or confusion in relation to that mark (The Upjohn Company) (supra).

The Applicant's Counsel referred to Turbek Trading v A & D SPITZ (565/08) [2009] ZASCA 958 (27 November 2009) at 17 where Harms JA held that:

"In context the question is whether the mark KG formed part of SPITZ goodwill. Spitz had to show that it was at the date the common-later proprietor of the KG

2013 JDR 0965 p5

Tuwe, Deputy Registrar

trade mark, and this required proof that SPITZ originated, acquired or adopted it and has gained the reputation as indicating that the goods in relation to which it used belonged to Spitz. In other words, Spitz had to discharge the same onus in relation to reputation that it would have had under a passing-off claim."

It was common cause that the determination to be made was whether the trade mark STAR BAKE was likely to deceive or cause confusion.

The Opponent's Counsel stated in its heads of argument that the extent of the enquiry, which also dealt with the principles taken into account when comparing trade marks was set out in the case of Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc 1995 (2) SA 903 (A) at 909 — 910 where the Court dealing, with the provision of Section 17(1) held:

"The respondent's objection to appellant's application for the registration of these trade marks was based on the provisions of section 17(1) of the Act. The relevant provisions of that section read as follows:

'17(1) No trade mark shall be registered if so resembles a trade mark belonging to a different proprietor and already on the register that the use of both such trade marks in relation to goods or services in respect of which they are sought to be registered, and registered, would be likely to cause to deceive or cause confusion.'

2013 JDR 0965 p6

Tuwe, Deputy Registrar

The touchstone is therefore whether there is such a degree of similarity between the respondent's trade mark and those of the appellants as to give rise to the likelihood of consumer deception or confusion. The ultimate function of a trade mark is, after all, to be a source of identification. It is defined in s 2 of the Act as

'a mark used or proposed to be...