the registered trade mark, notwithstanding the absence of confusion or deception: Provided that the provisions
of this paragraph shall not apply to a trade mark referred to in section 70(2)."
Although, for the purposes of paragraph (a) it is clear that the respondents' device of a spider, either within an oval
shape on a striped background or alone is not identical to the applicant's trade mark in the word "SPIDER", I am of
the opinion that it so nearly resembles it as to be likely to deceive or cause confusion. The respondents' device of a
spider is obviously a "device" and a "mark" within the meaning of the words, as defined in the Act. As appears from
the PlasconEvans Paints case (supra), in comparing the respondents' mark with the applicant's mark, in order to
decide whether the average type of customer wishing to purchase a surfboard would probably be confused or
deceived, the marks must be compared "with reference to the sense, sound and appearance of the marks". The
respondents' device of a spider, whether alone or within an oval shape, conveys in sense, (or meaning), sound and
appearance nothing but a spider. Counsel for the respondents suggested that it could be confused with a crab or
an insect but that is fanciful. It is common cause that it was intended to and would be understood by an ordinary
person of average intelligence to be a spider. Clearly, if considered side by side with the applicant's mark, it would
be distinguishable as being a pictorial representation of a spider, as opposed to the word "SPIDER", but both marks
convey the same thing, namely a spider. If one were to ask someone what the defendant's device was, the obvious
answer would be "a spider". The importance of what is conveyed phonetically by a mark is illustrated in the cases of
Hudson & Knight (Pty) Ltd v DH Brothers Industries (Pty) Ltd t/a Willow Town Oil and Cake Mills and Another
1979 (4) SA 221 (N) at 226FG and Greenblatt v Hirschon 1958 (4) SA 371 (A) at 375A. However, as further appears
from the PlasconEvans Paints case (supra) the marks must not only be considered side by side, but also separately.
I have no doubt, and counsel for the respondents seemed to concede, that if the notional purchaser of a surfboard
wished to purchase the surfboard shown in the aforesaid picture in the Zigzag magazine of May/June 1996, he
would have no alternative but to ask for a "SPIDER BOARD". The position of the red stripes
Page 327 of [1996] 4 All SA 316 (D)
behind the oval logo and the word "JARVIS" contained in an oval would not be sufficient, in my opinion, to
distinguish the respondents' board, as shown in the photographs, bearing the oval logo containing the spider
device, the separate spider device and the Jarvis logo, from the applicant's boards. The applicant's boards often
bear names and writing in addition to the word "SPIDER" and a spider device. The dominant feature and general
impression conveyed by markings on the respondents' boards is that they are "spider" boards. Without even
having to rely on the examples of deception relied upon by the applicant, that, in my opinion, is inescapable. That
the identification of a board as a "spider" board is likely to deceive the notional purchaser of a surfboard into
believing that the board is one of the applicant's "SPIDER" boards, or at least cause confusion between the two
boards goes without saying and is, once again, borne out by the respondents' apparent willingness to give an
undertaking not to use the device in conjunction with the word "surfboards".
In my opinion, then, the applicant has shown, certainly at a prima facie level, an infringement in terms of section
34(1)(a) of the Act, of its trade mark in the word "SPIDER" in relation to the surfboards manufactured by it.
I am, likewise, of the opinion that use by the respondents of the spider device is an infringement of the
applicant's trade mark in terms of section 34(1)(c ). The respondents' counsel argued that because the applicant's
surfboards are only known in coastal areas in which surfboards are used, no case has been made out by the
applicant that its mark is well known in the Republic, as contemplated by section 34(1)(c ). That cannot be a correct
interpretation of the words "well known in the Republic" as contemplated by subparagraph (c ). It would be absurd
to suggest that where a trade mark is used in relation to goods which are used or available only in one part of the
Republic it cannot be said that the trade mark is well known "in the Republic", for the purposes of section 34(1)(c ).
If the trade mark is well known in that part of the Republic of South Africa in which the goods in relation to which it
is used, are available, then that, in my opinion, is sufficient. In my opinion the applicant has sufficiently established
that the use of its trade mark "SPIDER" in relation to the surfboards manufactured by it is well known throughout
surfing circles, in the Republic of South Africa. I am further of the opinion that the respondents' use of the spider
device would be likely to take unfair advantage of, and be detrimental to the repute of the applicant's registered
"SPIDER" trade mark. It goes without saying that if prospective customers buy the respondents' surfboards,
believing that they are, or are even associated with, the applicant's "SPIDER" surfboards, that that will be the case.
Passing off Reputation
In my judgment the applicant has sufficiently established, at least at a prima facie level, that its "SPIDER" trade
mark, particularly when used in conjunction with a getup incorporating a representation of a spider, is associated
in the minds of the surfing public with surfboards manufactured, distributed and sold by it. As I have already
indicated, I am satisfied that there could be confusion between the respondents' surfboards bearing the spider
device and the applicant's surfboards, although the degree of confusion may or may not be governed to some
extent by whatever other devices the respondents place on their surfboards. A surfboard bearing only the spider
devices, as illustrated in some of the photographs would probably be more likely to be confused with the applicant's
surfboards than a surfboard bearing those devices and also the name "Jarvis" within an oval shape, but,
nevertheless, a real danger of confusion would, in my
Page 328 of [1996] 4 All SA 316 (D)
view, still be present. It was submitted in argument, by counsel for the respondents, that the use by Jarvis of a
representation of a spider predates, or, at best, was contemporaneous with the applicant's use thereof, and that if
a member of the public assumed that one of the respondents' boards was a board associated with Jarvis and with
the applicant, the applicant would have no cause for complaint as it would be trading off the reputation of Jarvis.
There are, however, disputes of fact with regard to the timing of the commencement of, and the extent of, the use
of the spider device by Jarvis and the applicant respectively, and it is neither possible nor necessary to resolve