features of each mark, is likely to be confused or deceived into believing that clothing bearing the words 'Power
House'' have a connection in the course of trade with the 'Power' trademark. In deciding this issue I have regard
only to the respondent's 'Power House" mark without the distinctive dog device. In my view, the common
element of the appellant's and the first respondent's marks is of minor significance when the marks are looked at
as a whole. It is not possible to ignore the word 'House' in the first respondent's mark. I have considerable
difficulty in imagining that the notional purchaser of the first respondent's clothing would focus attention only on
the word 'Power'. The word 'House' is as significant as the word 'Power' and the two words used together
sufficiently distinguish the first respondent's clothing from that of the appellant.
The result is the same whether the two marks are viewed side by side or in the market place where clothing is
sold. The overall impression which is created is that the marks do not resemble each other closely and the
average customer would not be confused or deceived into believing that clothing bearing the 'Power House' mark
is clothing made or sold by the appellant. Accordingly it has not been established that the marks resemble each
other so closely that deception or confusion is likely to arise" (emphasis added in italics).
[59] In comparing Bata with PlasconEvans (supra) Raath AJ comments as follows in Zimbo Spares Co Pty Ltd t/a
Motoquip v Car Quip CC and another, unreported, case number 24116/03 (T):
"It is somewhat difficult to fully reconcile this reasoning with the reasoning in regard to the word 'mica' in the
passage quoted above from PlasconEvans. On the approach in Bata one may have expected an objection to the
effect that a monopoly could not be claimed in regard to the word 'mica', being a generic name of a known
substance. Perhaps the reasoning in PlasconEvans was swayed by the consideration that appellant's use of the
word 'mica' in the painting trade was unique amongst trade names until the respondent in that matter
commenced using the mark Mikacote."
I agree with Raath AJ and when the alleged infringement by "Shatterproof" is discussed hereunder, the Bata
approach will be of particular significance.
[60] In Standard Bank of SA Ltd v United Bank Ltd30 the competing marks, which were used in the home loan
market, were "Equity Access Plan" by United Bank Limited and "Access" of which Standard Bank was the
proprietor. It was argued that once it is indicated that the whole of the registered mark appears in the
infringing mark, then, and whatever the context or the other feature of that mark, no inquiry into the
likelihood of deception or confusion needs to be undertaken. This approach was based on Metal Box South
Africa Ltd v Midpak Blow Moulders (Pty) Ltd31 where it was held that an applicant is required to prove: (i) the
use by the respondent of the applicant's mark; (ii) use as a trade mark; (iii) in relation to goods in respect of
which the trade mark is registered and (iv) such use being unauthorised. Mr Puckrin, for Standard Bank,
argued that if a defendant's mark infringed, it did not avail him to show that he has distinguished his mark
by additions extraneous to the mark. Schutz J (as he then was) then inquired whether it is possible to
distinguish within the mark itself, in the
Page 282 of [2006] 2 All SA 260 (T)
sense that the difference between the two marks is made such that there is no likelihood of deception or
confusion [at 788GH]. There was no South African authority on this point. After extensive inquiry into foreign
case law, Schutz J concluded as follows at 796I:
". . . Standard does not have an 'absolute monopoly' in the sense contended for, that the marks are not identical,
. . . and that in order to succeed Standard has to prove the likelihood of deception or confusion." After referring
to the PlasconEvans test concerning confusion, the learned Judge, at 801I802C held that United Bank had
infringed the mark of Standard Bank: "Given all these circumstances, do I think that there is a probability that a
substantial number of persons will be at least confused, if not deceived? The answer is that I do. Take the case of
the man who has watched Standard's notional television advertisement . . . Suppose that his interest is aroused
in the idea propagated as Standard's Access scheme. Suppose that he is thinking of buying a house and taking
out a bond. Suppose that a few days later he sees, somewhere, an advertisement for United's Equity Access
Plan. Given the facts that he does not have the two marks before him side by side, and that memory is often
imperfect, may this not lead him to a United branch to open discussions, or may he not at least be confused? In
the case of an individual I see this as perfectly possible. If that be so, it translates itself into a probability that a
substantial number of persons will be so confused. When I say of the one individual that it is merely possible that
he will be confused, I postulate that at least a majority will not be confused. But it is the remaining minority that
will satisfy the test."
Standard Bank succeeded in its application for an interdict.
[61] Returning to Shatterproof and Shatterprufe. I agree that the instances on the website and tax invoice where
the word shatterproof is emphasised do amount to infringement in the sense that the word, although used in
a descriptive context, stands out in such a manner that a substantial number of persons are likely to be
confused as to the origin of the goods. It differs from Bata in the sense that the two words are very similar in
spelling and are phonetically identical. Judged as a whole, the concept of "shatterproof" (supra) i s
overwhelming, despite the spelling that differs. In this sense the present facts are close to "access" in
Standard Bank (supra). By way of bold emphasis "shatterproof" stands out and is likely to be perceived as
more than mere description and as a trade mark.
[62] However, the applicant has undertaken in August 2003, without conceding infringement, not to use the word
in its emphasised form. This mere undertaking is, however, rejected by the respondent as "cold comfort"
against future infringement. The question is whether the respondent's approach to the undertaking is
justified in the circumstances. In Peter Jackson (Overseas) Ltd v Rand Tobacco Co (1936) Ltd32 Shreiner J (as
he then was) said the following in regard to the value which should, in interdict proceedings, be attached to
an undertaking not to use a trade mark in future:
"The risk of recurrence is obviously the central consideration, but where there has been a deliberate copying of
the applicant's mark��by the respondent the proper view seems to be that this in itself casts such doubt upon the