Make your trade­mark dis­tinc­tive

Re­cent — in­con­sis­tent — cases high­light the tricky is­sue of house mark rel­e­vance

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW - WALDO STEYN

TWO re­cent South African High Court de­ci­sions re­flect a wor­ry­ing lack of con­sis­tency in trade­mark judg­ments. They also show how courts some­times strug­gle with the is­sue of the like­li­hood of con­fu­sion in cases where trade­marks are ac­com­pa­nied by house marks.

In the first case a well-known re­tailer of health prod­ucts, Well­ness Ware­house, ap­plied to reg­is­ter the trade­mark livewell (in lower case) with a de­vice that com­prised three in­ter­lock­ing ovals above the let­ter “e” of “well”. The ap­pli­ca­tion was in class 35 and cov­ered re­tail ser­vices. A company called Gen­eral Nu­tri­tion op­posed this ap­pli­ca­tion on the ba­sis of its reg­is­tra­tion for the trade­mark GNC Live Well in var­i­ous goods classes and also re­tail ser­vices in class 35.

The op­po­si­tion failed, with the judge find­ing that there was no like­li­hood of con­fu­sion. The judge’s rea­son­ing was sim­ple — in the case of the op­pos­ing trade­mark the dis­tinc­tive fea­ture was GNC, whereas in the case of the op­posed trade­mark the dis­tinc­tive fea­ture was the in­ter­lock­ing ovals de­vice. The judge de­scribed the dis­tinc­tive fea­ture as “what will at­tract the mem­bers of the pub­lic to it”. Noth­ing too con­tro­ver­sial there, es­pe­cially in the case of an in­her­ently weak trade­mark such as Live Well!

The judge went on to say that, in the case of the op­pos­ing trade­mark, not only would the em­pha­sis be on GNC, but there would also be def­i­nite pause be­tween the words “live” and “well”, some­thing that would not hap­pen in the case of the op­posed trade­mark.

The judge ap­plied a “dis­cern­ing con­sumer” test, say­ing that con­fu­sion was un­likely be­cause con­sumers for health prod­ucts “gen­er­ally come from the bet­ter ed­u­cated por­tions of the pub­lic … th­ese will be dis­cern­ing cus­tomers who are care­ful about the prod­ucts … and less likely to be de­ceived or con­fused as to the ori­gin”.

This decision prob­a­bly wouldn’t have at­tracted much at­ten­tion if it hadn’t been for a decision that came out a few months later. The sec­ond decision in­volved another trade­mark ap­pli­ca­tion that Well­ness Ware­house had filed for re­tail ser­vices in class 35, this one be­ing for eatwell (in lower case) and the same in­ter­lock­ing ovals de­vice over the sec­ond let­ter “e”.

In this case the op­po­nent was the well-known re­tailer Wool­worths, which re­lied on its reg­is­tra­tion for a logo trade­mark com­pris­ing the words “eat well” in lower case, to­gether with the name Wool­worths, the Wool­worths “Dou­ble W” logo, as well as a flower de­vice. The Wool­worths trade­mark was regis­tered for var­i­ous goods in classes 5, 29, 30 and 32, but there was no reg­is­tra­tion in class 35.

In this case the op­po­si­tion was up­held, with the judge find­ing there was a like­li­hood of con­fu­sion. The judge said con­sumers would not no­tice fea­tures such as the name Wool­worths or the Dou­ble W logo, but would rather con­cen­trate on the fea­ture “eat well”.

The judge also re­jected the ar­gu­ment that po­ten­tial pur­chasers would be limited to the wealth­ier or bet­ter ed­u­cated.

Sur­pris­ingly, the judge made no men­tion of the ear­lier decision in­volv­ing GNC and Well­ness Ware­house, not­with­stand­ing the fact that it was ap­par­ently brought to her at­ten­tion.

Another in­ter­est­ing as­pect of the sec­ond decision is that the judge — who found there was a sim­i­lar­ity be­tween the goods cov­ered by Wool­worths’ reg­is­tra­tions and the re­tail ser­vices of Well­ness Ware­house’s ap­pli­ca­tion — did not even men­tion a con­tro­ver­sial decision handed down by the same court (Gaut­eng) a few years back.

In the Due South case the judge, who was strongly in­flu­enced by com-

The judge also re­jected the ar­gu­ment that po­ten­tial pur­chasers would be limited to the wealth­ier or bet­ter ed­u­cated

pe­ti­tion law and pol­icy, made a num­ber of eye­brow-lifting find­ings: goods will sel­dom be sim­i­lar to goods that fall into dif­fer­ent classes; there will sel­dom be sim­i­lar­ity be­tween goods and ser­vices; and re­tail ser­vices can­not be con­sid­ered sim­i­lar to goods as this would con­fer an un­jus­ti­fi­able mo­nop­oly on trade­marks cov­er­ing re­tail ser­vices. Many will be pleased that this judg­ment wasn’t fol­lowed.

The is­sue of what rel­e­vance the ad­di­tion of a house mark has is a tricky one. In a re­cent South African decision the judge said that, although the addi- tion of a house mark doesn’t nec­es­sar­ily avoid con­fu­sion, it is a fac­tor es­pe­cially where the common fea­ture be­tween the trade­marks is “so weak that any source-in­di­cat­ing value it has is over­whelmed by the ad­di­tion of an ar­bi­trary, dis­tinc­tive el­e­ment”. The judge re­ferred to a US decision where the court held that trade­mark Es­sen­tials was not in­fringed by the trade­mark Nor­ton McNaughton Es­sen­tials.

In a re­cent UK decision the court held that, although Thomas Pink’s trade­mark reg­is­tra­tions for Pink were in­fringed by Vic­to­ria’s Se­cret who used the name Pink (on its own) on stores and on cloth­ing, it was not in­fringed by the use of Pink in con­junc­tion with Vic­to­ria’s Se­cret on swing-tags. The lead­ing EU case on the topic is Me­dion v Thomp­son, which in­volved the trade­marks Life and Thomp­son Life. In that case the court held that adding a house mark doesn’t avoid in­fringe­ment if the common fea­ture re­tains its “in­de­pen­dent dis­tinc­tive role”.

What th­ese cases do, of course, is em­pha­sise the need to adopt dis­tinc­tive trade­marks. But that’s a mes­sage that sadly doesn’t seem to get through.

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