respondent and it appeared to be in stark contrast with the general appearance of the letterhead and especially the fold
over flap of the letterheads which I refer to above. Both are geometric forms.
They do not fit in naturally in the space created by the folded overlap. The flap is the most distinctive part of the first
respondent's letterhead, business cards and application forms and forms an integral part of the whole design. The triangular
and square motifs were both hastily designed by me and some of my staff members. It is not final proofs and needed to be
looked at by a specialist."
Whatever the respondent hoped to achieve he now uses an oval logo bounded by an ellipse. The letters "P.P.I."
are prominent in the oval in the same proportions as before and as used in the applicant's logo. The words printed
are "Professional Personal Service". They are now printed below the letters "P.P.S.". Again the same blue colour is
used.
Section 34(1) of the Act provides as follows:
"34
(1)
The rights acquired by registration of a mark shall be infringed by
(a)
the unauthorised use in the course of trade in relation to goods or services in respect of which trade
mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or
cause confusion;
(b)
the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of
trade in relation to goods or services which are so similar to the goods or services in respect of which
the trade mark is registered, that in such use there exists the likelihood of deception or confusion;
(c )
the unauthorised use in the course of trade in relation to any goods or services of a mark which is
identical or similar to a trade mark registered, if such trade mark is well known in the Republic and the
use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the registered trade mark, notwithstanding the absence of confusion or
deception: Provided that the provisions of this paragraph shall not apply to a trade mark referred to in
Section 70(2)."
There is no doubt that the respondent uses his present mark in the course of trade in relation to services in respect
of which the applicant's mark is registered. The respondent's first logo still appears on papers which he uses, on his
own admission, as scrap paper.
The question is whether the respondent's present logo is likely to deceive or cause confusion. The test to be
applied has been stated on numerous occasions. The most compelling and authoritative is that stated by the
Appellate Division in PlasconEvans Paints v Van Riebeeck Paints 1984 (3) SA 623 (A) at 640. Corbett JA says the
following:
Page 212 of [1996] 2 All SA 206 (W)
"In an infringement action the onus is on the plaintiff to show the probability or likelihood of deception or confusion. It is not
incumbent upon the plaintiff to show that every person interested or concerned (usually the customer) in the class of goods
for which his trade mark has been registered would probably be deceived or confused. It is sufficient if the probabilities
establish that a substantial number of such persons will be deceived or confused. The concept of deception or confusion is
not limited to inducing in the mind of the interested persons the erroneous belief or impression that the goods in relation to
which the defendant's mark is used are the goods of the proprietor of the registered mark, that is the plaintiff, or that there
is a material connection between the defendant's goods and the proprietor of the registered mark. It is enough for the
plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the
existence, or nonexistence, of such connection.
The determination of these questions involves essentially a comparison between the mark used by the defendant and the
registered mark, and, having regard to the similarities and differences in the two marks, an assessment of the impact which
the defendant's mark would make upon the average type of customer who would be likely to purchase the kind of goods to
which the marks are applied. This notional customer must be conceived as a person of average intelligence, having proper
eyesight and buying with ordinary caution. A comparison must be made with reference to the sense, sound and appearance
of the marks. The marks must be viewed as they would be encountered in the market place and against the background of
relevant surrounding circumstances. The marks must not only be considered side by side but also separately. It must be
borne in mind that the ordinary purchaser may encounter goods, bearing the defendant's mark, with an imperfect
recollection of the registered mark and due allowance must be made for this. If each of the marks contains a main or
dominant feature or idea the likely impact made by this on the mind of the customer must be taken into account. As it has
been put, marks are remembered rather by general impressions or by some significant or striking feature than by a
photographic recollection of the whole. And finally consideration must be given to the manner in which the marks are likely
to be employed as, for example, the use of name marks in conjunction with a generic description of the goods."
Applying these tests I have no hesitation in holding that the applicant has succeeded in proving that the
respondent's logo will cause deception and confusion. I am not impressed by counsel's argument that there are
several different features of the two marks. That has nothing to do with the test to be applied.
It was also suggested that only professional men would be those to be misled by the respondent's logo. As
such, professional men are not easily misled. That is a fiction. In any event, professional men also seek shortterm
insurance and they could be misled into thinking that the respondent was a duly authorised agent of the applicant.
Counsel for the applicant elected to seek a permanent interdict. The applicant's clear right flows from the
registration of the mark. The respondent's use of the applicant's mark proves the second requirement, namely
infringement of the clear right. There is no other adequate remedy available to the applicant.
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