cf. Burnkloof Caterers Ltd (supra) at 136CF.
The fact that the respondents could not have believed that the applicants would have no objection to their use
of the spider device in any form, seems to me to be borne out by their willingness to give unequivocal undertaking,
in their attorney's letter of the 7th May 1996, that they would not use the logo in conjunction with the words
"SURFBOARDS". Prima facie this is an acknowledgment that the use of the logo in conjunction with the word
"SURFBOARDS", as it appears in the aforesaid picture in the Zigzag magazine, could constitute a representation
that a surfboard so described was one of the applicant's surfboards.
In my judgment, therefore, the defence of estoppel also fails.
The Trade Mark Infringement
The respondents' case is that the applicant has no registered rights in the representation of a spider or in an oval
shape, that the devices used by the respondents are neither "identical" to the applicant's mark, or "so nearly
resembling it as to be likely to deceive or cause confusion" and that the applicant has not proved the likelihood of
members of the public being deceived or confused into
Page 325 of [1996] 4 All SA 316 (D)
mistaking the respondents' mark for the applicant's mark. In argument, counsel referred to the fact that there is no
precedent for finding that a logo or representation such as those used by the respondents amounts to the
infringement of a trade mark consisting of a word.
The main legal principles to be applied in determining whether there has been an infringement of a trade mark
were summarised by Corbett JA in PlasconEvans Paints v Van Riebeeck Paints 1984 (3) SA 623 (A) 640G641E 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, i.e.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.
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."
In my opinion there is no logical reason why the use of a device could not constitute an infringement of a trade
mark consisting of a word. The fact that neither party was able to cite any precedent for this proposition is
irrelevant.
"Mark" is defined in section 2(1) of the Act as follows:
" 'mark' means any sign capable of being represented graphically, including a device, name, signature, word, letter,
numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the
aforementioned;"
Page 326 of [1996] 4 All SA 316 (D)
"Device" is defined as follows:
" 'device' means any visual representation or illustration capable of being reproduced upon a surface, whether by printing,
embossing or by any other means;"
Paragraphs (a) and (c ) of section 34(1) of the Act, relied upon by the applicants, provide as follows:
"34.
Infringement of registered trade mark. (1) 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;
(b)
...
(c )
the unauthorised use in the course of trade in relation to any goods or services of a mark which is identical or
similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the said
mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of