Promac Paints (Pty) Limited v Plascon (Pty) Limited

• Jurisdiction: South Africa
• Judge: Tuwe, AN
• Citation: 2015 JDR 2326 (TRM)
• Court: Registrar of Trade Marks
• Docket Number: Information not supplied

Tuwe, AN:

Promac Paints (Pty) Limited, a South African company, is the applicant for the registration of trade mark application no. 2000/06748 PRO-VELVET in Class 2. The subject trade mark application relates to the following goods:

"Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins, metals in foil and powder form for painters, decorators, printers and artists".

The Opponent is Plascon (Pty) Limited, a South African company of 10 Frederick Cooper Drive, Factoria, Krugersdorp. The Opponent subsequently changed its name to Barloworld Plascon South Africa (Pty) Limited. The Opponent is the registered proprietor of trade mark registration number

2015 JDR 2326 p2

Tuwe, AN

73/0732 DOUBLE-VELVET in class 2 in respect of: "Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colouring matters, dyestuffs, mordants, natural resins, metals in foil and powder form for painters and decorants".

The opposition to the registration of the applicant's mark is based on the provisions of sections 10(12) 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 marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of section 3 and 70, be liable to be removed from the register

(12) 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, be likely to give offence to any class of persons,

(14) Subject to the provisions of section 14, a mark which is identical to 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.

There's no dispute that the goods in respect of which the trade mark

2015 JDR 2326 p3

Tuwe, AN

application is sought to be registered are the same to those covered by the Opponent's trade mark registration.

In essence, the enquiry is whether the mark sought to be registered is identical or similar to a registered trade mark belonging to a different proprietor also similar thereto that the use of that trade mark in relation to the goods or services for which it is sought to be registered, is likely to deceive or cause confusion.

The two competing marks in this...