Unilever plc v Designer Group Holdings Limited

• Jurisdiction: South Africa
• Judge: Tuwe, AN
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2394 (TRM)
• Docket Number: 2004/20128

Tuwe AN:

The Applicant is Unilever Plc, a public company incorporated in terms of the laws of the United Kingdom with its principal place of business at Port Sunlight, Wirral, Merseyside, England (the "Applicant"). The Applicant has applied to register trade mark application no. 2004/20128 SKIN FOOD in class 3 in respect of the following goods:

"Soaps, cleaning preparations, perfumery, essential oils, aromatherapy products, massage preparations, deodorants and antiperspirants, hair care preparations, non-medicated toilet preparations, bath and shower preparations, skin care preparations, oils, creams and lotions for the skin, shaving preparations, pre-shave and aftershave preparations, depilatory preparations, sun-tanning and sun protection preparations, cosmetics, make-up and make-up removing preparations, petroleum jelly, lip care preparations, talcum powder, cotton wool, cotton sticks, cosmetic pads,

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Tuwe AN

tissues or wipes, beauty masks and facial packs".

The Opponent is Designer Group (Pty) Limited, a private company with its registered address at 2 Eglin Road, Sunninghill ("the Opponent").

The Applicant and the Opponent are both manufacturers and distributors of cosmetic products, including hair care, body care and deodorant products.

The opposition to the registration of the Applicant's mark is based on the provisions of sections 9, 10 (1) and 10 (2)(a), (b), (c) of the Trade Marks Act, Act 194 of 1993 ("the Act". The relevant provision of the Act provides as follows:

Section 9 - Registrable trade marks:

"(1)

In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations.

(2)

A mark shall be considered to be capable of distinguishing within the meaning of subsection (1) if, at the date of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by prior use thereof."

Section 10 - Unregistrable trade marks:

"The following marks shall not be registered as trade marks or, if registered,

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Tuwe AN

shall, subject to the provisions of sections 3 and 70, be liable to be removed from the register:

(1)

a mark which does not constitute a mark,

(2)

a mark which-

(a)

is not capable of distinguishing within the meaning of section 9, or

(b)

consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or rendering of the services,

(c)

consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practice of the trade.

Provided that a mark shall not be refused registration by virtue of the provisions of paragraph (2) or, if registered, shall not be liable to be removed from the register by virtue of the said provisions if at the date of the application for registration or at the date of an application for removal from the register, as the case may be, it has in fact become capable of distinguishing within the meaning of section 9 as a result of use made of the mark."

The Opponent contends that the onus rests upon the Applicant to satisfy the Registrar that its trade mark qualifies for registration. If the Applicant is not able to discharge this onus, the application should be refused

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Tuwe AN

(Webster & Page South African Law of Trade Marks para 8.41).

The Applicant has the onus of proving that a trade mark qualifies for registration. If there is any doubt whether the mark should be registered, the application should be refused. What the Applicant has to establish is that there is no reasonable probability, i.e. no likelihood, of consumer deception or confusion (The Upjohn Company v Merck and Another 1987 (3) SA 221 (T) at 224.

In essence, the issue in this matter is...