General trade marks principles
The court has had regard to the following general principles of trade mark law in determining the issue in the
present case:
1. The 1993 Trade Marks Act came into force on 1 May 1995. This Act repealed the 62 of 1963 Trade Marks Act,
save for certain transitional provisions. The infringement provisions of the 1963 Act were contained in section
54 and required an infringer to have used a deceptively or confusingly similar mark to a registered mark in
relation to the specific goods or services for which the proprietor's mark was registered. Section 34(1) of the
1993 Act provides for wider protection against infringement than the 1963 Act. Section 34(1)(a) provides for
the same protection afforded by section 44(1) of the 1963 Act, namely in relation to the goods or services for
which the mark is registered. Section 34(1)(b) provides for the protection against infringement in respect of
goods or services that are similar to the goods or services for which the mark is registered. Section 34(1)(c)
provides for protection for wellknown registered trade marks against those persons who would take unfair
advantage of the distinctive character or reputation of the wellknown trade mark in relation to any goods or
services.
2. In the case of PlasconEvans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 640G641E
Corbett, JA, as he then was, gave an authoritative summary of the legal principles applicable in a trade mark
infringement matter under the 1963 Act. These principles have been held to apply equally to an infringement
in terms of section 34(1)(a) of the 1993 Act. See Danco Clothing (Pty) Ltd v NuCare Marketing Sales and
Promotions (Pty) Ltd and another 1991 (4) SA 850 (A) at 861FG.
3. In adjudicating whether or not two marks are deceptively or confusingly similar the Court had regard to the
following principle enunciated in Bata Limited v Face Fashions CC and another 2001 (1) SA 844 (SCA) paragraph
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where Melunsky JA citing with approval the decision of the European Court of Justice in Sabel BV v Puma AG,
Rudolf Dassler Sport [1998] RPC 199 where he stated:
"Global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the
overall impression given by the marks, bearing in mind in particular, their distinctive and dominant components."
This principle was further enunciated in Bata (supra) at paragraph 8 in the context of section 34(1)(a) which is
equally applicable in the case of an infringement in terms of section 34(1)(b) as both sections deal with deception or
confusion as to origin as follows:
"The only question that has to be decided in respect of the alleged infringements under section 34(1)(a) is whether the
appellant has established that a substantial number of persons will probably be deceived into believing or confused as to
whether there is a material connection in the course of trade between the respondent's clothing and the appellant's trade
mark (see PlasconEvans at 640GI)."
The applicants have been called upon to show that there is a probability that a substantial number of people who
purchase tickets for the National Lottery and who are aware of the trade mark Lotto as used in connection with
that lottery will be confused as to whether the respondent's business conducted under the name LottoFun is that
of the second applicant or as to the existence or nonexistence of a material connection between the LottoFun
business and the first and second applicants as the body with overall responsibility for the conduct of the National
Lottery and the company operating the National Lottery respectively.
In Kellogg Co and another v Bokomo Cooperative Ltd 1997 (2) SA 725 (C) at 734C, citing Reckitt & Colman SA (Pty)
Ltd v SC Johnson & Son SA (Pty) Ltd 1993 (2) SA 307 (A) at 315F Van Reenen J said:
"(b)
The class of persons who are likely to be purchasers of the goods in question must be taken into account to determine
whether there is a likelihood of confusion or deception."
From the above it is clear that section 34(1)(b) of the Trade Marks Act is similar to section 34(1)(a), except that it is
not limited to the goods or services in respect of which the trade mark is registered, but covers use in relation to
similar goods or services. The introduction of section 34(1)(b) is in keeping with the common law which as
established that a common field of activity is not a prerequisite for success in passingoff proceedings. The
respondent further raised the defences of unclean hands, acquiescence and estoppel. It is not clear how the
respondent invokes firstly the defence of "unclean hands" preventing the applicants from obtaining the relief sought
on the basis of the respondent's infringement of the first applicant's Lotto Trade Mark. This defence, however, does
not avail the respondent.
As regards the defences of acquiescence and estoppel the respondent has not drawn a distinction between
these defences. The respondent's evidence in support of these defences is made out of two sets of circumstances,
first, "an exchange of correspondence between a Mr Nick Hodgman, at the time in a senior position with the second
applicant, and Mr Andre de Beer" and secondly, "to the installation of a lottery terminal "for the respondent's use".
Strictly speaking this was not raised in the answering affidavit but in the founding affidavit which the applicants
relied on and an answer to that was that by the deponent of the applicants' affidavit where he states:
Page 629 of [2007] 1 All SA 618 (T)
"No business relationship between the respondent and the second applicant was ever concluded pursuant to any of the
discussions held or communications which passed between them, and the respondent has not been granted any authority to
sell the lotto game tickets via the internet or at all."