undesirable name is defined as:
'Words pertaining to a trade mark is contained in a name which will be used in regard to a
business which relates to the class of goods or services in which the trade mark is
registered while the Opponent has no proprietary rights in respect of such trade mark, nor
the consent of the said proprietor to use such words in a name.'
6.4
Comparison of Names and Tests to be Applied
6.4.1 The Registrar is respectfully referred to Webster & Page: South African Law of Trade Marks, 3ed,
at 484 where the authors deal with the test which must be applied to ascertain whether a
company name will be likely to deceive or mislead members of the public. It is stated that:
'The broad test, when comparing company names, is whether it is probable that the public,
when doing business with the one, would think they were doing business with the other, or
that the one is a branch of the other or is some way connected or associated with it, or that
the goods of the one are the goods of the other'.
6.4.2 The Registrar is therefore respectfully referred to the decision of Solmike (Pty) Ltd t/a Skipper's
Cabin v West Street Trading Co (Pty) Ltd t/a Skipper's Bar 1981 (4) SA 706 (D). There the Court
stated the following at 713B:
'To my mind both the combination 'Skipper's Bar' and the combination 'Skipper's Cabin' are
dominated phonetically and visually by the word 'Skipper'. This is the portion of the styles
most likely to impinge upon the mind of the observer and to be retained by it. . . As
regards (sic!) the ideas conveyed by the respective marks, it is correct that anyone who
systematically analyses the two combinations will conclude that the word 'Skipper' is used
in each in a different connotation. The question is, however, whether persons of the classes
exposed to the names are likely to undertake such analysis or whether whatever concept
the word 'Skipper' conveyed to them when they first encountered it is likely to be attributed
to it by them when they encounter it in the second combination. To my mind, the latter is
likely to be the case with most ordinary purchasers. They will remember a combination
dominated by whatever concept 'Skipper' conveyed to them in the first place and are
unlikely to notice when encountering the second name that is used in a context which lends
it a different connotation.'
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6.4.3 It is further submitted that when two names are compared, there are various factors that must be
taken into account and the Registrar is respectfully referred to p 134 of Webster & Page (op cit),
where the learned authors refer to the case of American Chewing Products Corporation v
American Chickle Co, (1949 (2) SA 736 (A)) where Greenberg J said:
'It must also be remembered that in coming to a conclusion on the question in issue, the
court must not only consider the marks when placed side by side, but must have regard to
the position of a person who might at one time see or hear one of the marks and later,
possibly with the imperfect recollection of that mark, come across the other mark.'
6.4.4 At 134 Webster & Page (op cit) the authors further confirm that due allowance must be made for
the imperfection of human recollection. The Registrar is in this regard referred to the case of
Rysta Limited's Appn. (1943 60 R.P.C 87 at 108. Line 39) where Luxmore LJ said:
'It is the person who only knows one word, and has perhaps an imperfect recollection of it,
who is likely to be deceived or confused. Little assistance therefore is to be gained from a
meticulous comparison of the two words, letter by letter and syllable by syllable
pronounced with the clarity to be expected from a teacher of elocution. The court must be
careful to make allowance for imperfect recollection and the effect of careless pronunciation
and speech on the part not only of a person seeking to buy under the trade description but
also the shop assistant ministering to that person's wants.'
6.4.5 In this regard, the Registrar is further referred to p 137 of Webster & Page (op cit) where the
learned authors refer to situations where there is a danger of confusion arising out of orders
placed over the telephone, which should be taken into account. When the similarity between the
names of the Opponent's trade mark and the company are considered, this danger is very likely.
6.4.6 The Registrar is also respectfully referred to the comments of Webster & Page (op cit) at 484 on
the case of Ewing (t/a The Buttercup Dairy Co) v Buttercup Margarine Co Limited, 1917 34 R.P.C
232, which describes the burden which rests on the Opponent in this matter:
'It is clear from the above remarks by Warrington J that it is not necessary for an applicant,
for an order for a change of name, to show that there is a likelihood of the goods or
business of the respondent being taken to be the goods or business of the Opponent; it is
enough if the Opponent can show that the similarity between the names is such as to
render it likely that the public might assume that the respondent is in some way connected
with the Opponent' (own emphasis).
6.4.7 The Registrar is furthermore respectfully referred to the Krediet Bank decision (op cit). There the
Court stated the following at 653C:
'Dit is wel so dat wanneer transaksies beklink word waarby die applikant of die betrokke
respondente by
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