head of undesirability when the registration of a company name is in issue. . ."
[22] From these principles of law, it is clear that the court has a function to perform, or, as per Nel J in the Azisa
case (supra):
". . . the court should assess the similarity and likelihood of confusion and should not surrender its opinion to that of
its witnesses. In doing the assessment, the courts use the reasonable man test, namely, that of average person with
average memory and imperfect recollection, not one with an extraordinary or photographic memory."
[23] As a corollary to determining the risk of confusion and as a way of assessing whether the particular
undesirable name is calculated to cause damage, the courts have to weigh the scales as to which of the two
litigants will be more inconvenienced by its order, the company that carries a name, that is a registered mark,
which claims to have a reputation built over time by reason of its registered mark, or the company which
contains in its own mark, words that are likely to cause confusion, or deceive the public. I will return to my
assessment of the evidence in this case later on in this
Page 59 of [2008] 2 All SA 34 (C)
judgment. For the moment, let me state the legal principles with regard to trade mark infringement as defined
in the Act, particularly in the light of submissions made on behalf of the respondent, namely, that such
principles would be germane in the determination of whether or not a name is "undesirable".
Trade mark infringement in terms of the act
[24] Section 34(1)(a) provides that the rights acquired by registration of a trade mark shall be infringed by:
"(a)
the unauthorised use in the course of trade in relation to goods or services in respect of which the 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."
The definition immediately raises the question for my consideration, namely, whether Cape Town Lodge s o
nearly resembles Town Lodge as to be likely to deceive or cause confusion.
[25] The underlying goal of trademark law is to promote the proper functioning of the market place. The underlying
goal of trademark law is to promote the proper functioning of the market place through the avoidance of
confusion and deception. Section 34(1)(a) has greatly increased the ambit of trademark infringement.
[26] In order to show infringement under section 34(1)(a) the applicant has to establish in respect of its
trademark:
26.1 unauthorised use;
26.2 in the course of trade;
26.3 in relation to goods and services in respect of which the mark was registered;
26.4 of an identical mark or a mark so nearly resembling it as to be likely to deceive or cause confusion.
[27] Under the Trade Marks Act 194 of 1993, a trade mark's primary function is to distinguish, as opposed to
operating as a "badge of origin" as was the case under the old Act.
"The 'badge of origin' element of the trademark is no longer at the forefront and has been replaced by the
distinguishing capability of the mark."7
[28] The court in a trademark infringement case is only permitted to consider the marks themselves.
"In infringement of trade mark actions the enquiry is confined to a comparison of the registered mark with that
portion of the respondent's getup which is alleged to infringe the applicant's registered rights."8
The enquiry into the likelihood of confusion or deception is limited to a comparison of the marks. The onus
rests on the plaintiff to show on a balance of probabilities, that the mark used by the defendant so nearly
resembles the plaintiff's trade mark as to be likely to deceive or cause confusion. 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 a connection".9
Page 60 of [2008] 2 All SA 34 (C)
Furthermore, Corbett JA expressed the view that:
"When comparing the marks it is necessary to 'notionally transport myself to the market place and consider whether
the average customer is likely to be deceived or confused."10
This test has been adopted and accepted for the purposes of section 34(1)(a).
[29] The "likelihood of deception or confusion" must be judged with reference to the average purchaser. It must be
borne in mind that the purchaser will not necessarily see the marks side by side, but will probably come
across them separately on "different occasions". Deception or confusion exists when there is a probability
that a person or persons will be deceived into thinking:
"(a)
that the respondent's product is that of the applicant's; or
(b)
that there is a material connection between the respondent's product and the applicant as the producer and
marketer of the product in issue, or
(c)
is confused as to whether or not there is any such a connection."11
[30] In the Albion Chemical case (supra) Traverso DJP commented that: