Monday 22 December 2014

Jeremy Speres

RSA: Notional trade mark use and fish & chips

I’m happy to report that the finest trade mark judgement of 2014 originates in my back yard in the Western Cape!  We took a while, but as with our wine, good things come to those who wait. 

In Lucky Star Ltd v Lucky Brands (Pty) Ltd and others, Judge Owen Rogers, of the High Court at the foot of a mountain, deftly dealt with a claim of primary trade mark infringement, as well as dilution, of the applicant’s iconic LUCKY STAR word as well as device marks registered in respect of, amongst others, fish products, fresh salads and retail services.  The applicant’s mark is of course well-known in South Africa in respect of canned seafood products, especially its pilchards.

The respondent entities conduct business under the LUCKY FISH brand as a seafood restaurant and takeaway chain.  Incidentally, the chain is part of the same restaurant group as the unique Harbour House in Kalk Bay, where just yesterday this writer enjoyed (perhaps too much) chardonnay and yellow tail whilst observing some seals playfully unaware of the trade mark carnage afoot on their doorstep.  The applicant relied on the traditional likelihood of confusion / deception ground, as well as dilution, in an application for an interdict as well as an order declaring the respondents’ company names incorporating LUCKY FISH and LUCKY BRANDS in violation of section 11(2) of the Companies Act for being confusingly similar to the applicant’s registered mark.

I particularly liked this statement that tends to justify all those sophisticated principles us trade mark lawyers like to rely on in cases where others may think it’s simply a matter of common sense:
“It has been said that the question of confusing or deceptive similarity is very much a matter of ‘first impression’…Since the judge may not be representative of all the classes of persons who consume the relevant product or service, and since the judge will be seeing the marks as set out in court papers rather than in the market place, the judge will naturally need to test his or her first impression in accordance with the principles set out in the cases.”

Ultimately Judge Rogers found no likelihood of confusion or deception, having regard to the differences between the marks on the one hand and the goods and services on the other.  The following findings are noteworthy.

First, the Court considered the debate regarding the applicability of the doctrine of notional use to a defendant’s conduct in infringement matters.  Essentially, there has been some debate in our courts whether the way in which a defendant might notionally use its allegedly infringing mark (as opposed to the way in which it actually uses it) is relevant in an infringement matter (see para 12.8.4 in Webster & Page).  The Appellate Division in the Plascon-Evans matter commented obiter that the doctrine should not apply.  In this case the court however seemed to decide the issue, expressly rejecting the doctrine’s application to the defendant’s mark. 

Secondly, the Court adopted an approach similar to that of the Court of Justice of the European Union in the Specsavers v Asda saga.  There the court considered the fact that the claimant had made use of its registered mark in a particular way that differed to the form in which it was registered, as relevant to the likelihood of confusion assessment (as opposed to simply relying on the mark purely in the form in which it was registered).  In this case, the court considered the fact that the applicant always uses the LUCKY STAR mark in conjunction with other device elements as relevant, relying on this to distinguish the applicant’s mark further from that of the respondents (see para 46).  This approach does seem to be at odds with the traditional approach of comparing the mark as used by the defendant with the mark as registered by the claimant, and suggests an approach more akin to passing-off.  Perhaps, however, where the particular form in which the claimant has actually used its mark has become ingrained in the minds of the public, this should be taken into account so as to align trade mark law with the reality on the ground.  It is to be noted that the court in the recent EVOLYM matter adopted a similar approach (see para 22) – as pointed out to this writer by local trade mark sage Faan Wolvaardt.  Of course there’s a fine line between this approach and diluting the value of registered rights by allowing extraneous matter to be considered, a line which I’m glad I don’t have to decide on!

I know most of you will skip right past the company name objection bit, but on the off chance that you’re interested, here goes. The court indicated (in para 73) that when a company name objection is considered (at least in circumstances analogous to this case), the relevant public are not ordinary consumers, who do not generally see the company name as it appears on invoices, letterheads and the like, but those in the trade who do business with the company (landlords, bankers, suppliers etc) who are more knowledgeable of that particular industry and thus less likely to be confused.  I have my doubts about this as a general proposition for company name objections – yes, company names are very often different to the parties’ actual trading names, but they are likewise very often the same.  In this sense, company name objections are akin to trade mark opposition proceedings (where the notional use doctrine does apply to the defendant trade mark applicant’s mark) and regard should be had to how the defendant might use its company name if its registration is permitted.  I’d love to hear your thoughts on this, all three of you!

Jeremy Speres

Jeremy Speres

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