Societe Des Produits Nestlé SA v Ulker Gida Sanayi Ve Ticaret AS

• Jurisdiction: South Africa
• Judge: Abey Tuwe (Mr)
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2403 (TRM)
• Docket Number: 2001/01679

Tuwe AN:

The Applicant for registration is Ulker Biskuvi Sanayai A.S., a Turkish company (hereinafter referred to as "the Applicant"). The Applicant applied for the registration of trade mark application no. 2001/01679 ULKER ALBENI & Device in class 30 in respect of:

"Staple foods of all kinds and description, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, breads, pastry and confectionery, snack foods, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces, condiments, spices, ice."

The application was opposed by Societe des Produits Nestlé SA ("the Opponent"), a Swiss company with its principal place of business in Switzerland.

The Opponent is the registered proprietor in South Africa of trade mark registration no. 1961/0941 ALBANY in class 30 in respect of:

"Cocoa, chocolate, beverages on the basis of cocoa and chocolate, bonbons and candy, confectionery and pastry, puddings and other desert preparations, ice cream"

The opposition was based on the provisions of Sections 10(4), 10(12), 10(14) and 10(17) of the Trade Marks Act, Act No. 194 of 1993 ("the Act"). The Opponent's in its heads of argument stated that it would limit its argument to the provisions of Section 10(14).

Section 10(14) provides that:

10

Unregistrable trade marks

2015 JDR 2403 p3

Tuwe AN

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.

(14)

subject to the provisions of section 1, a mark which is identical to a registered trade mark belonging to a different proprietor also similar thereto that the use 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 such trade mark consents to the registration.

The Opponent stated in its heads of argument that it was trite law that the onus rested on the trade mark applicant to prove that its trade mark was capable of registration. lf there was any doubt, registration should be refused (The Upjohn Company v Merck & Another 1987 (3) SA 221 (T)).Counsel for the Opponent submitted that the extent of the enquiry, that also deals with the principles taken into account when comparing trade marks, was set out in Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc 1995 (2) SA 903 (A). The Court held that:

"The touchstone was therefore whether there was such a degree of similarity between the respondent's trade mark and those of the appellant as to give rise to the likelihood of consumer deception or confusion. The onus of proving that there was no likelihood of consumer deception or confusion must rest on the appellant who is seeking such registration."

2015 JDR 2403 p4

Tuwe AN

The Opponent in its heads of argument, also referred to the guidelines summarised in Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 where it was remarked that the comparison must have regard to:

"the similarities and differences in the two marks, an assessment of the impact which the defendant's mark would make upon the average type of consumer who would be likely to purchase the kind of goods to which the marks are applied. This notional customer must be conceived of as a person of average intelligence, having proper eyesight and buying with ordinary caution. The comparison must be made with reference to the sense, sound and appearance of the marks. The marks must be viewed as they would be encountered in the marketplace and against the background of relevant surrounding circumstances. The marks must not only be considered side by side, but also separately. It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant's mark, with an imperfect recollection of the registered mark and due...