The value judgment conundrum: A critical review of recent trade mark appeal decisions

• Author: Job, C.
• Date: 24 May 2019
• Pages: 143-158
• Published date: 24 May 2019

CASE ANALYSIS AND NOTES

THE VALUE JUDGMENT

CONUN DRUM: A CRITICAL

REVIEW OF RECENT TRADE MARK

APPEAL DECISIONS



Senior Consultan t, Adams & Adams

Associate Direct or, Centre for Intellectual Propert y Law, University of Pretoria

  

The Supreme Court of Appea l (SCA) has had a relatively busy time over the

past few years dealing with t rade mark disputes. There have bee n at least

thirtee n of them between 2014 and June 2017.1 Of these, seven have confronted

the challenging and elusive question of the li kelihood of confusing and/or

deceptive similar ity between trade marks a nd, in some cases, also between

their respective goods a nd services.2

It is now well established that the two aspect s of the enquiry into confusing

similarity, namely, between the tr ade marks and the goods or serv ices in issue,

are interconnec ted, as stated in New Media Publishing (Pty) Ltd v Eating O ut

Services CC:3

There is, it seem s to me, and interdependenc e between the two legs of the enqui ry: the less

the similar ity between the resp ective goods or service s of the parties, the gre ater will be the

degree of resembla nce required betwee n the respective mark s before it can be said that there

is a likelihood of de ception or confusion …, and v ice versa.

This review is a brief but crit ical analysis of the relevant SCA judgments

     

element of the enquiry, namely, similarities bet ween the respective trade

marks of the part ies and the likelihood of confusion betwee n them. It reveals





Increased number s of trade mark cases are presently bei ng heard by the

Gauteng Division of the High Court , Pretoria (GDP). In 2016 and 2017 my

  

1 See the SCA list at the e nd of this article.

2 As marked by ast erisks on the SCA list at th e end of this article.

3 New Media Publish ing (Pty) Ltd v Eating Out S ervices CC 2005 (5) SA 388 (C) 394C–F, quoted

with approval in Met tenheimer Vineyards CC v Zonquasdrift Vineyard CC (965/12) [2013]

ZASCA 152 para [11].

143

(2017) IPLJ 143

© Juta and Company (Pty) Ltd

count indicates that t here have been at least seventeen. This trend is a d irect

consequence of the cur rent practice of the Registrar of Trade Marks of

referring all t rade mark oppositions to the GDP for hearing in ter ms of s 59(2)

of the Trade Marks Act 194 of 1993 (the Trade Marks Act). One can expect

this practice to cont inue and to see a proportionate and conse quential increase

in trade mark ap peals being referred to the SCA in fut ure. Thus, the effect

and impact on fut ure decisions of the SCA decisions under review will also

escalate unless the re is a shift in attitude and ap proach to the assessment of

the likelihood of confu sion between trade marks and to wh at I refer to as the

value judgment conundr um.

As mentioned, in the per iod under review the SCA delivered thirte en

judgments, of which seven dealt with tr ade mark confusing simil arity. In six

      

it might therefore be suggested that t he SCA has adopted an unsympathetic

approach to the question of tra de mark confusing similarity.

It is, of course, acknowledged that such a small a nd bare statistic cannot give

a fair indication of how the cour t has been dealing with the particu lar facts of

each case in assessing co nfusing similarit y, and whether these decisions are

open to criticism or not. The pe rtinent facts, and the tra de marks and goods in

issue, are so markedly dif ferent in each case that any deduction of a general

attitu de is impossible.

Nevertheless, to my personal k nowledge resulting from various inter actions

with senior trade ma rk attorneys and counsel, t here is presently a distinct sense

in the South Afr ican intellectual proper ty arena that the SCA (in particu lar),

in dealing with the que stion of the likelihood of confusing similar ity between

marks, has been w ide of the mark in several of its assessments.4 Fur ther

enquiry seem s appropriate.

  

The numerous comparat ive tests and criteria to be u sed in weighing up whether

the likelihood exists t hat two trade marks are or a re not confusingly similar

are now more than well established. It is un necessary to refer to these criter ia

here in any detail, but it is usef ul to extract and highlig ht some of them from

case law,5 as they are directly pert inent to the SCA cases under discussion and

are also, in some insta nces, somewhat contradictory. It will be noted that they

all relate to sensory re actions on the part of the assessor.

 The basic test is that the ma rks should be assessed in term s of their

sight (visually), sound (aurally) and meaning (conceptually). Confusing

4 See also, for instance , the comments of O Dean in Supr eme Court of Appeal losing its sha pe,

available at http://blogs.sun.ac.za/iplaw/2015/01/29.

5 For example, Plascon- Evans Paints Ltd v Van Riebeec k Paints (Pty) Ltd [1994] ZASCA 51;

National Bran ds Ltd v Blue Line Manufactur ing (Pty) Ltd [2001] ZASCA 17; Cowbell AG v ICS

Holdings Ltd [2001] ZASCA 18; Century City Apartm ents Property Serv ices CC & another v

Century Ci ty Property Ow ners’ Association [2009] ZAS CA 157.

144 South African Intellectual Property Law Journal (2017) 5

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