Wednesday, August 10, 2011

In an opposition hearing before the Registrar of Trademarks, Clover SA (Pty) Limited (Clover) opposed the registration of a trade application for YOGI-YO in the name of Dairy World (Pty) Limited (Diary World). Whilst the Registrar has not yet handed down a written decision with reasons for his finding, he dismissed Clover’s opposition with costs at the end of the hearing. A brief summary of the facts and arguments follow below.
On 24 May 2005, Dairy World applied to register trademark application no. 2005/10174 YOGI-YO in class 29 in respect of  “Meat, fish poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes, eggs, milk, milk, dairy and yoghurt products; edible oils and fats”. The application thereafter proceeded to advertisement where it met with an opposition from Clover.
Clover is the proprietor of the YOGI SIP trademarks in South Africa in respect of, inter alia, milk and yoghurt products. It owns registrations for the YOGI SIP trademark in both classes 29 and 30. The latter class relates to coffee, tea, etc.  Clover submitted that in May 2005, YOGI SIP was the only drinking yoghurt in the market incorporating the word YOGI. It also submitted that the word YOGI has always been associated exclusively with Clover since 1988.
Clover’s opposition was based on sections 10(12) and 10(14) of the Trademarks Act (the Act).  Section 10(12) of the Act provides that a mark shall not be registered if it is inherently deceptive or its use would be likely to deceive or cause confusion, is contrary to law, is contra bonos mores, or is likely to give offence to any class of persons. Section 10(14) prohibits the registration of a trademark which is identical to a registered trademark belonging to a different proprietor 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 as or similar to the goods or services, in respect of which such trademark is registered, would be likely to deceive or cause confusion.
Clover argued that if one applied the doctrine of imperfect recollection, it is probable that a person seeing the mark YOGI-YO would not distinguish it from the YOGI SIP trademark and would thus be confused or deceived as to the origins of the goods bearing such mark.
Briefly, the doctrine of imperfect collection states that when considering whether or not confusion or deception will arise due allowance must be made for the imperfection of human recollection. With imperfect recall it is likely that only the striking feature will remain in the memory.
It was contended that the marks YOGI SIP and YOGI-YO are so similar in both sound and appearance that use of the mark YOGI-YO in relation to the goods for which the applicant seeks registration is likely to result in confusion or deception. On the other hand, Dairy World claimed that YOGI is a colloquial term, and a simple and obvious abbreviation of the word “yoghurt”. Dairy World included the word in its trademark to enable members of the public to identify its product as a yoghurt product.  When comparing the two trademarks one must make a global appreciation of the marks, taking into account their distinctive and dominant parts. Where marks contain a common element, which is further in common use in the market for the goods concerned, the public are likely to pay more attention to the other features in each mark, and to distinguish the goods by those features.
Dairy World submitted that at the time of filing its YOGI-YO trademark, there were twenty trademarks, in classes 29 and 30 on the Register, incorporating the word “YOGI”. All of these trademarks were filed and/or used in relation to yoghurt or yoghurt products. Some of these trademarks were even endorsed with disclaimers relating to the exclusive use of the word “yoghurt”. These disclaimers tend to show that the Registrar links the word “YOGI” with the word “yoghurt”. Therefore, at the time of the filing of the YOGI-YO trademark application, no single proprietor had or could claim exclusive rights to the mark YOGI.  In addition, Dairy World’s YOGI-YO product has been sold side-by-side with Clover’s YOGI SIP product since at least 2006, approximately two years before Clover instituted proceedings against it. The absence of any evidence of actual confusion during this period is very relevant for the purposes of determining whether or not deception or confusion is likely to occur, and is indicative that no confusion will, in fact, take place.
Having considered the facts above and after hearing arguments from both the Opponent’s and Respondent’s Counsel, the Registrar dismissed Clover’s opposition to the YOGI-YO trademark application. 
This ruling indicates the need to consider the filing of an opposition more carefully when one is dealing with a trademark with clear descriptive elements.  
The Registrar has not yet handed down his written ruling, but the attorneys representing Clover have indicated that Clover will be appealing the decision. 
Watch this space for further updates! 

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