Sour grapes over name reg­is­tra­tion

Court con­sid­ers ‘like­li­hood of con­fu­sion’

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW - ILSE DU PLESSIS

THE South African Supreme Court of Ap­peal handed down a num­ber of trade­mark judg­ments late last year. The first of th­ese was in the case of Rood­ezandt Ko­op­er­atiewe Wyn­mak­ery v Robert­son Win­ery (Pty) Ltd and the Reg­is­trar of Trade­marks , which was handed down on Novem­ber 19 2014. As the names sug­gest, this case in­volved SA’s wine in­dus­try, an in­dus­try that pro­duces its fair share of trade­mark cases.

This was an ap­pli­ca­tion for the re­moval or can­cel­la­tion of a trade­mark reg­is­tra­tion. The facts were as fol­lows: Robert­son Win­ery, a long es­tab­lished win­ery sit­u­ated in the area of Robert­son in the West­ern Cape, has used the trade­mark Robert­son Win­ery & La­bel since 1941; the com­pany has reg­is­tra­tions cov­er­ing wine for var­i­ous trade­marks — Robert­son Win­ery & La­bel, Robert­son Vine­yards and Robert­soner — the ear­li­est one dat­ing back to 1997; Rood­ezandt had a 2008 reg­is­tra­tion for the trade­mark Robert­son Hills for wine; Robert­son Win­ery claimed that the reg­is­tra­tion for Robert­son Hills should be can­celled on the ba­sis of its ear­lier rights — it based its case on the sec­tions of the Trade Marks Act that deal with a like­li­hood of con­fu­sion aris­ing from an ear­lier reg­is­tra­tion and from the use of an­other trade­mark, namely sec­tions 10(12) and 10(14).

Judge Brand de­liv­ered the judg­ment. He con­sid­ered a num­ber of the ear­lier cases that deal with the is­sue of con­fus­ing sim­i­lar­ity, and he made spe­cific ref­er­ence to the case of Lab­o­ra­toire Lacharte v Ar­mour Dial 1976 (2) SA 774 (T). In this case the court made it clear the is­sue is not so much whether a judge who has time to con­sider the similarities and dif­fer­ences be­tween two trade­marks will be con­fused but whether con­sumers will be.

Judge Brand went on to sum­marise the prin­ci­ples that have been es­tab­lished in ear­lier cases:

The per­son claim­ing that there is a like­li­hood of con­fu­sion does not need to show that all rel­e­vant con­sumers are likely to be con­fused, but sim­ply that a sub­stan­tial num­ber might be;

The con­cept of con­fu­sion doesn’t nec­es­sar­ily mean that con­sumers ac­tu­ally be­lieve there is a con­nec­tion be­tween the two prod­ucts, it sim­ply means that they are con­fused about the ori­gin of the goods;

The is­sue of like­li­hood of con­fu­sion must be con­sid­ered through the eyes of the av­er­age con­sumer;

The trade­marks must be con­sid­ered both side by side and separately;

The court must re­mem­ber that con­sumers have im­per­fect rec­ol­lec­tion; and

The court must bear in mind that con­sumers will of­ten only re­mem­ber the dom­i­nant fea­tures of trade­marks.

The judge con­cluded that there was a like­li­hood of con­fu­sion in this case. Deal­ing with the is­sue that Robert­son is a ge­o­graph­i­cal area which is sig­nif­i­cant in the con­text of wine (the reg­is­tra­tion for Robert­son Vine­yards in fact has a dis­claimer of Robert­son in the ge­o­graph­i­cal sense), Judge Brand said this: “Although Robert­son is not a con­structed or in­vented word, but the name of a town, this does not nec­es­sar­ily mean that it could never ac­quire dis­tinc­tive­ness with ref­er­ence to wine.” In sup­port of this he re­ferred to an ex­am­ple given by Judge Harms in the ear­lier case of Cen­tury City Apart­ments Prop­erty Ser­vices CC v Cen­tury City Prop­erty Own­ers’ As­so­ci­a­tion 2010 (3) SA 1 (SCA)— that of Wind­hoek be­ing the name of a city in Namibia and a well-known beer. The judge also pointed out that Rood­ezandt was not us­ing the word Robert­son on its Robert­son Hills la­bel with ref­er­ence to the town, “but to dis­tin­guish its wines from oth­ers, ie as a trade­mark”.

A re­lated is­sue was the ar­gu­ment that Robert­son is the name of a de­fined pro­duc­tion area for wine un­der the so­called Wine of Ori­gin scheme. This same point came up in the re­cent de­ci­sions of Groupe LFE (SA) (Pty) Ltd v Swart­land Win­ery (467/09) (2011)

In those cases the courts ex­am­ined the re­la­tion­ship be­tween trade­marks and the Wine of Ori­gin scheme, and con­cluded that they are dif­fer­ent and dis­tinct things — a trade­mark is a badge of ori­gin for wine, the scheme is a badge of ori­gin for the grapes from which the wine is made. The fact that Robert­son is the name of a de­fined pro­duc­tion area un­der the scheme was there­fore not rel­e­vant.

So the reg­is­tra­tion for Robert­son Hills had to be can­celled. This left a fi­nal is­sue — does a can­cel­la­tion date back to the date on which the trade­mark was reg­is­tered (the reg­is­tra­tion date), or to the date on which the ap­pli­ca­tion for can­cel­la­tion was lodged? It’s per­haps sur­pris­ing that there was no author­ity on this point. The judge there­fore re­ferred to the “Oudekraal prin­ci­ple” of ad­min­is­tra­tive law — named af­ter the de­ci­sion of Oudekraal Es­tates (Pty) Ltd v Cape Town & Oth­ers 2004 (6) 222 (SCA) — which says that as ad­min­is­tra­tive de­ci­sions are of­ten acted on in the be­lief they were validly taken, they are ac­cepted as valid un­til chal­lenged and set aside by a court.

Judge Brand ex­tended this to say that mak­ing the can­cel­la­tion of a trade­mark reg­is­tra­tion ret­ro­spec­tive to the reg­is­tra­tion date could have con­se­quences that might be sub­stan­tially un­fair, es­pe­cially in the case of a reg­is­tra­tion that had been used (I imag­ine what he had in mind here was that the owner of such a trade­mark could sud­denly find it­self li­able for trade­mark in­fringe­ment, de­spite the fact it had gen­uinely be­lieved it was en­ti­tled to use its reg­is­tered trade­mark).

So the judge con­cluded that a can­cel­la­tion is ef­fec­tive from the date on which the ap­pli­ca­tion for can­cel­la­tion was brought.

This judg­ment con­tains a sum­mary of the prin­ci­ples in­volved in de­ter­min­ing the like­li­hood of con­fu­sion be­tween trade­marks and may be sig­nif­i­cant.



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