5
elements of the marks are the prefix ‘PEPPA’ attached to the suffixes ‘DEW’
and ‘MATES’ respectively, and the use of a pepper device. The respondents
contend that the word PEPPADEW is not a dictionary word and was made-up
or invented, relating to a specific piquante pepper that is marketed locally and
internationally.
[8]
The high court held that there was a similarity between the two trade
marks to such a degree that, when the words DEW and MATES were
removed, there was a likelihood of confusion or deception. The full court
agreed with the high court and dismissed the appeal primarily on the basis
that the inclusion of a device in the form of a side-view of the rounded pepper
with a stalk as part of both trade marks was the most visible feature common
to both marks. It concluded that the visual description stood out when a
comparison was made as to the similarity or otherwise of the trade marks.
[9]
A court dealing with a s 10(14) application is required to postulate the
notional use by the opponent of its registered trade mark in respect of some
or all of the goods covered by the registration and use in a normal and fair
manner of the applicant’s trade mark in respect of any of the goods covered
by its application for registration.
[10]
Section 10(14) of the Act prohibits registration of, amongst others, a
mark that is so similar to a registered mark, that the use thereof in relation to
the goods or services in respect of which it is sought to be registered, which
are the same as or similar to the goods or services in respect of which the
opponent’s mark is registered, ‘would be likely to deceive or cause confusion’.
[11]
In considering whether the use of the appellant’s trade mark is likely to
deceive or cause confusion, this court in Cowbell AG v ICS Holdings Ltd 2001
(3) SA 941 (SCA); 2001 (4) All SA 24 (A) para 10, held that the essential
function of the trade mark is to indicate the origin of the goods in connection
with which it is used and the decision whether there is a reasonable likelihood
of confusion is a value judgment. In Orange Brand Services Limited v Account