In a recent High Court matter, Foschini Retail Group (Pty) Limited (“Foschini”) the proprietor of a number of trade marks for DUE SOUTH in various classes opposed trade mark applications for the mark DUE SOUTH and logo belonging to a Mr Jan Coetzee (“Mr Coetzee’s applications”).

DUE SOUTH

Foschini is a large company with numerous stores in major shopping centres in South Africa under the name DUE SOUTH, the aforesaid stores trading in a variety of outdoor, camping, sporting and adventure clothing and equipment.

Mr Coetzee trades from a single store in Franschoek, a small town in the Western Cape, promoting indigenous crafts and which publishes maps and travel guides.

Foschini opposed Mr Coetzee’s applications on the basis of Section 10(14) of the Trade Marks Act No. 194 of 1993 (“the Trade Marks Act”), which states that a mark shall not be registrable if it is identical to a registered trade mark 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 trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark.

In this case it was clear that the marks were similar, but the salient question and crux of the matter was whether the goods /services were so similar as to be likely to deceive or cause confusion.

Mr Coetzee applied for registration of his marks in relation to, inter alia, foodstuffs (in class 30)andtraining and education services (in class 41)and Foschini opposed, inter alia, the aforesaid applications on the basis of its prior registrations for its marks in relation to kitchen utensils and cooking apparatus(in class 21) and business management services (in class 35). Foschini argued that Mr Coetzee’s trade mark applications in classes 30 and 41 were so similar to its prior trade mark registrations in classes 21 and 35, as to be likely to deceive or cause confusion.

In South Africa there is considerable debate about how the similarity test is to be applied, some follow the holistic approach and others the mechanical approach.

The holistic approach states that the marks and goods cannot be seen in isolation, i.e. if a registered trade mark is distinctive or the two marks resemble each other, a lesser degree of similarity of goods/services will be required to prove a likelihood of confusion or deception.

The mechanical approach involves deciding whether the goods/services are similar. If the goods/services are not similar, then the enquiry ends there. However, if the goods/services are similar, one will have to determine whether or not there is a likelihood of confusion.  As far as the mechanical approach is concerned, case law dictates that various factors need to be considered in deciding whether or not goods are similar, namely the uses of the goods; the users of the goods; the physical nature of the goods; the trade channels through which the goods reach the market and the extent to which the goods are competitive. The same factors would apply in respect of services.

In this matter, the Court chose the mechanical approach rejecting Foschini’s claims that any of the goods or services were similar.

The mechanical approach was also followed by a South African Court in a recent infringement case where it held that the use of the same mark for wine and wine grapes would not cause confusion because the goods are quite different.

Therefore, it will be prudent for trade mark proprietors in South Africa to take cognisance of this decision and  evaluate the extent of their monopolies before taking formal action , as in South Africa there has been a marked trend to limit anti-competitive practices.

DM Kisch Inc represented the successful party in this matter.

Publication Name: Trade Marks and Monopolies

Date: May, 2013

Practice Area: Trade Marks