Steytdal Farm (Pty) Limited v Spar Group Limited

• Jurisdiction: South Africa
• Judge: AN Tuwe (Mr)
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2324 (TRM)

Tuwe:

The Applicant is Steydal Farm (Pty) Limited, a South African company, of Kaapzicht Estate, Bottelary Road, Kuilsrivier, Western Cape Province (hereinafter referred to as "the Applicant"). The Applicant's business includes the production, distribution, promotion and sale of alcoholic beverages, including wine.

The Applicant lodged an application on 23 May 2002 for the registration of a trade mark under application no. 2002/07239,TOPS LABEL, in class 33 in respect of:-

"Alcoholic beverages, wines (except beers)".

The Applicant's application was opposed by The Spar Group Limited (hereinafter referred to as "the first Opponent") and Spar South Africa (Pty) Ltd (hereinafter referred to as "the second Opponent").

The Opponents opposition relied on the provisions of Sections 10(12) and 10(15) of the Trade Marks Act, Act 194 of 1993 (hereinafter referred to as "the Act"). Section 10 of the Act stipulates as follows:

Unregistrable trade marks.-

The following 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:

(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, or be likely to give offence to any class of persons;

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(15) subject to the provisions of section (14) and paragraph (16), a mark which is identical to a mark which is the subject of an earlier application by a different person, 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 or similar to the goods or services in respect of which the mark in respect of the earlier application is made, would be likely to deceive or cause confusion, unless the person making the earlier application consents to the registration of such mark".

The opposition in terms of Section 10(15) of the Act was based on the second Opponent's trade mark application nos. 2001/20765 - 6 TOPS AT SPAR (LABEL) in classes 33 and 35, filed on 6 December 2001.

The Section 10(12) opposition was based in the acquired reputation and goodwill in the Opponents mark SPAR on its own. Counsel for the Opponents stated in her heads of argument that there was an onus on the Applicant to satisfy the Tribunal that there was no reasonable likelihood of confusion or deception. Having regard to the evidence submitted by the Applicant, she argued that the Applicant had failed to discharge such onus.

Counsel for the Opponents further submitted that although the respective marks, if subjected to close scrutiny, might disclose many points of difference, but the dominant feature of both the trade marks played a decisive role in the test as to whether or not they were capable of co-existence. The general impression or idea conveyed by the

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respective marks might be considered. The touchstone however was whether there was such a degree of similarity between the Applicant's trade mark and that of the Opponents as to give rise to the likelihood of consumer deception or confusion. The ultimate function of a trade mark was, after all, to be a source of identification (Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc 1995 (2) SA 903 (A)).

Also cited in the Opponents heads of argument , was Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) where, at 641, it was remarked that the comparison must have regard to:

"... similarities and differences in the two marks, an assessment of the impact which the defendant's mark would have upon the average type of customer 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 market place 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 allowance must be made of this. If each of the marks contain a main or dominant feature or idea the likely impact made by this on the mind of the customer must be taken into account. As it has been put, marks are remembered

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rather by general impression or by some significant or striking feature than by a photographic recollection of the whole. And finally consideration must be given to the manner in which the marks are likely to be employed as, for example, the use of name marks in conjunction with a generic description of the goods."

In Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) the Supreme Court of Appeal held as follows:

"Section 17(1) creates an absolute bar to registration provided the jurisdictional fact is...