aforementioned, it was argued,
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was clearly trade mark use.23 A demand was addressed to the applicant and various correspondence
ensued. On 15 August 2003, and without in any manner acknowledging that the use originally complained of
constituted infringing use, the applicant, through its attorney, provided an undertaking that it would cease
emphasising Shatterproof.
[55] Without acknowledging the infringing conduct, such an undertaking is, it was contended, "cold comfort" to
the respondent and the respondent need not accept such undertaking.24 The onus rested upon the
applicant to take care to keep a safe distance from the margin line between infringing and not infringing.25
The respondent also ascertained that the applicant was using Shatterproof on its windscreens. It was
contended that the aforementioned use was clearly not use in a "bona fide descriptive manner" but, indeed,
trade mark use.26
[56] A further indication of the lack of bona fides of the applicant, it was contended, is that it has applied for
registration of the trade mark shatterproof. The aforementioned conduct supports the inference that the
applicant wishes to use this term as a trade mark.
The respondent argued that it has every reasonable apprehension that the applicant will continue to infringe
its trade mark rights. As such, it was contended that the relief sought in the form of the declaratory order is
to be dismissed and the interdict sought in the counterapplication should be granted.
[57] I have considered the three instances to which the respondent refers as having infringed upon its trade
mark. In PlasconEvans Paints Ltd v Van Riebeeck Paints (Pty) Ltd.27 The competing trade marks were Micatex
and Mikacote. At 640G641E Corbett, JA (as he then was) stated the test for infringement as follows:
"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 as
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 minds of 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, ie 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 non
existence of such a connection.
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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 of as a
person of average intelligence, having proper eyesight and buying with ordinary caution. The 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."
[58] In Bata Ltd v Face Fashions CC and another28 the facts were as follows.29 The appellant, a Canadian
company, was the proprietor of several trademarks based upon the word "Power". Thus there was "Power"
as well as "Power" and device, both in respect of "all footwear"; "Power Points" in respect of "articles of
clothing including footwear of all kinds"; "Power" in respect of "articles of clothing" and "Power" and device
in respect of "clothing, including boots, shoes and slippers". The appellants' licensee in South Africa used the
"Power" and "Power" and device marks on footwear it manufactured and imported for resale in South Africa.
It also sold items of clothing on which the marks were displayed. The respondents manufactured and sold
clothing under the name "Power House" or "Powerhouse". It was usually, but not invariably, accompanied by
a distinctive dog device. In Bata (supra) counsel for the appellant submitted that the common element in both
marks, the word "Power", was likely to lead to confusion despite the fact that it is used in combination with
the word "House" on the first respondent's clothing. The argument was rejected in the following terms:
"If full effect is given to this argument it would result in the appellant having a virtual monopoly to use the word
'Power' on clothing. According to the evidence, however, there are numerous trade mark registrations in South
Africa in respect of clothing which incorporate or include the word 'Power'. It is an ordinary word in everyday use
as distinct from an invented or madeup word, and it cannot follow that confusion would probably arise if it is
used in combination with another word.
What has to be considered, therefore, is whether the notional customer of average intelligence, viewing the
marks as a whole or looking at the dominant
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