Wednesday, April 11, 2007

By Wim Alberts
At the end of the day, to use the South African national saying, it is not so easy to get away from the reach of the Trade Marks Act! This is the implication of the recent unreported decision of the Cape High Court in Ramsay, Son & Parker (Pty) Ltd v Media 24 Limited and New Media Publishing (Pty) Ltd., case number 4656/04, delivered on 26 January 2005. In this decision it was held that the use of the trade mark WEGBREEK amounts to an infringement of the trade mark GETAWAY. If a direct translation would be used, the best Afrikaans equivalent of GETAWAY would probably be WEGKOM. However, the court was satisfied that the use of WEGBREEK amounted to an infringement of the rights provided by the Trade Marks Act 194 of 1993. In terms of the Act, section 34(1)(a) provides that a trade mark is infringed by the unauthorised use in the course of trade in relation to goods in respect of which the trade mark is registered of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion. This section featured in the case under discussion.

In coming to its decision, firstly, on the claim for trade mark infringement, the court mentioned that when a comparison is made between the two marks, for infringement purposes, it is necessary to ignore extraneous factors, and the general get-up and content of the two magazines must not be taken into account (paragraph 10). In other words, it is only the two marks themselves that would be in focus. In this regard the court stated that the respective marks GETAWAY and WEGBREEK are not phonetically or visually similar. It must be pointed out in this regard that it is trite that in South African trade mark law a comparison of marks can take place on three bases. The first is visual, the second is phonetical, and the third is conceptual. Received wisdom has been, for a number of years, that a finding of confusing similarity on any of these grounds would suffice for infringement. However, in recent times European decisions which place a different emphasis have been followed in South African Law (see the decision of the European Court of Justice in Sabel BVV v Puma AG, Rudolf Dassler Sport [1998] RPC 199, as applied in the decisions of the Supreme Court of Appeal in Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) and Bata Ltd v Face Fashions CC 2001 (1) SA 844 (SCA)). More in particular, it has been pointed out in such decisions that the likelihood of confusion must be "appreciated globally". In regard to the contention that no dictionary could be found containing a direct translation of the noun "getaway," the court in the Ramsay decision stated (paragraph 11) that the issue is not whether WEGBREEK is a direct translation of GETAWAY, it "must be determined not so much by reference to lexicographers but by attempting to determine how the average South African who understands or uses both Afrikaans or English would answer that question". It was then found that the average South African would regard WEGBREEK as a close translation of GETAWAY (paragraph 11). The court indicated (paragraph 12) that its view that the marks were confusingly similar was reinforced by evidence of actual confusion. The second ground on which reliance was placed, was passing off. In this regard the court is of course obliged to consider, not only the two trade marks, but the get up, the layout and the contents of the two products concerned, in this case magazines. The court stated (paragraph 19) that an examination of several editions of the magazines reveals a number of similarities. Firstly of course there is the fact that WEGBREEK is virtually a translation of GETAWAY. Both were also glossy publications of a comparable size and weight, and were aimed at the same readership. It was furthermore indicated that the contents of each, if translated, would be appropriate for placement in the other. The court also indicated that a particular column that was copied amounted to plagiarism (paragraph 19). The conduct concerned thus amounted to passing off.

Two issues raised by the decision require brief comment. Firstly, the decision can be seen to confirm the accepted view that conceptual similarity between two marks is sufficient for a finding of infringement. However, care should be taken in the application of this principle. It is readily apparent that not all marks on the Trade Mark Register are equal. On the one hand one may find marks which are registerable, but which have a very low level of distinctiveness. On the other hand one will find marks that are extremely distinctive, such as LION in relation to beer, DIESEL in relation to clothing, and APPLE for computers. Would these marks be infringed by the use of, respectively, LEOPARD, PETROL, or PEAR? This question is of particular relevance to the use of trade marks in the media, as it is often the case that newspapers would adopt quite descriptive marks, alluding to the fact that it deals with matters of finance, sport, or even a particular sport, entertainment etc. Unless the use of such a mark has with the passage of time established the mark as being very distinctive (THE NEW YORK TIMES for instance) the rights granted by registration would be of a rather limited nature. In practical terms it would imply that even small changes to a mark would remove the use thereof outside the scope of the statutory monopoly provided by the Act. Another example from a different field, referred to by the court in the Cowbell case, would be COCA-COLA and PEPSI-COLA, which both co-exist as they only share a descriptive term.

The second point that must be commented on, is the issue of language. In a sense, the language aspect is not really the essence of the matter, but the larger issue of conceptual similarity between the two marks. In South Africa, it is theoretically possible that a mark registered in English could be infringed by the use of conceptually similar marks in any of the other ten official languages. Other languages can of course also feature. If the example of an exotic wine is considered, it may for instance be that connoisseurs would even be aware of the French translation of an English trade mark. In the context of determining confusion, the courts’ approach often relates to the issue of the type of consumer involved. This is a well-established criterion in trade mark law. For instance, it has been held that the purchaser of liqueur would be an educated, sophisticated and discerning person who would be very brand conscious and who would be unlikely to be confused easily (Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A)). Similarly, a medical practitioner involved in the prescription of pharmaceutical products would as well be unlikely to be confused (Adcock-Ingram Laboratories Ltd v SA Druggists Ltd 1983 (2) SA 350 (T)). In contrast, in relation to products such as sweets, for example, children would usually be involved and it is likely that they will be more readily confused than adults (American Chewing Products Corporation v American Chicle Co 1948 (2) SA 736 (A)). The issue of language therefore rather seems to "translate" into a consideration of the average consumer that would be involved. In other words, would a mark used in a different language be understood by a substantial number of speakers thereof to refer to the mark as registered?