Education company infringed trademark, SCA rules

The Supreme Court of Appeal (SCA) has ordered an education provider to stop using a trademark that looks similar to another company’s as this could “cause consumers to wrongly believe” a link exists between them. This constitutes trademark infringement and the infringing company has been restrained from using the logo.

iCollege Pty and Xpertease Skills Development are companies providing education services. iCollege Pty provides skills-based training in international courses, with campuses around the country and online learning. It registered two trademarks which use the word “ICOLLEGE”.

Xpertease, on the other hand, is also an education provider that also uses a trademark with the word “iCollege”. Xpertease is an internet-based e-learning provider for international technology certification training.

Andrew Rens, a leading scholar in intellectual property law, tells Business Day that having “a trademark doesn’t prevent copying but [rather] use in connection with a specific class of consumer goods or services”. That means “anyone can use the word [that is trademarked] and can even use it to sell things except for those goods or services for which it is registered”.

That iCollege Pty and Xpertease offer education services with this trademark raised concern about trademark infringement. In 2019, iCollege Pty went to the high court to stop Xpertease using the trademark.

The Pretoria high court was asked to decide whether Xpertease’s trademark was one so nearly resembling iCollege Pty’s trademark that it would cause confusion to the average person. But the high court dismissed iCollege Pty’s claim, ruling that the services each provided were “not identical” and, because the pictures accompanying the words “iCollege” were different, the marks themselves were different too.

However, the SCA found that the high court was mistaken.

Assessing the two marks, appeal judges Ashton Schippers and Keoagile Matojane held that “the marks are visually and aurally confusingly similar”. It was irrelevant that Xpertease’s “iCollege” mark was in lower case and in a different font, the judges said, because “the main idea or general impression conveyed is the education services offered by (an entity called) iCOLLEGE”. In other words, the average consumer shopping for education services could not tell which iCollege belonged to which company.

Xpertease argued that its services were different because, unlike iCollege Pty, these are entirely online.

The SCA found that due to the similarity of services, this argument held little water, and because the name “iCollege” is “not commonly used”, there is a greater chance a consumer would be confused.

“The purpose of a trademark registration is to protect the mark as a badge of origin,” the SCA said. Xpertease had no legal consent to use its own mark “in respect of identical services in the class in which [iCollege Pty’s] trademark has been registered”.

Gustav Loubser, an advocate at the Cape Bar who practices in this area of law, says an infringement occurs where someone, who is not the owner of a trademark, “without the owner’s consent, performs one of the acts specifically reserved for the owner”. According to Loubser, iCollege, in registering its trademark, had “the exclusive right to use such mark in education and training services”. Because Xpertease also used an “iCollege” logo in connection with education services, the SCA found this to be an infringement.

Xpertease was ordered to pay iCollege Pty’s legal fees and transfer the website “icollege.co.za” to iCollege Pty. The SCA also ordered an inquiry to assess the damages suffered by iCollege Pty as a result of Xpertease’s infringement.

Rens says that to prevent infringement, companies must register a trademark “for a particular class of goods or services”. The company would then have a claim “if someone else sells goods and services in the same class and also uses a word, phrase, logo or picture that is confusingly similar to the registered mark”.

Rens warns that companies must be proactive. “If a company is spending quite a bit of money on branding consultants,” he says, “they should involve their lawyers early so that the lawyers can check and advise whether the anticipated branding is going to create an issue before too much is spent on it”. This will prevent litigation headaches in the future.

THE PURPOSE OF A TRADEMARK REGISTRATION IS TO PROTECT THE MARK AS A BADGE OF ORIGIN