as to the origin of the goods or the existence or nonexistence of such a connection.
The determination of these questions involve 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 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, 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 generic description of the
goods".
Page 645 of [2012] 1 All SA 636 (WCC)
[23] "A substantial number of persons" means "a not negligible number of ordinary members of the buying public".
(See Danco Clothing (Pty) Ltd v NuCare Marketing Sales and Promotions (Pty) Ltd and another 1991 (4) SA 850
(A) at 861FG.)
[24] The following facts are relevant in determining the issues in this case:
(a)
The 1993 Trade Marks Act came into effect on 1 May 1995. This Act repealed the 1963 Trade Marks Act,
except for certain transitional provisions. Section 34(1)(a) provides the same protection that was
afforded by section 44(1) of the 1963 Act.
(b)
Referring to section 34(1)(b); the Court found as follows in New Media Publishing (Pty) Ltd v Eating Out
Web Services CC 2005 (5) SA 388 (C) at 394CG:
"The enquiry . . . consists of two separate but closely interrelated questions: first, are the two marks identical
or sufficiently similar to one another; and secondly, is the respondent's mark being used unauthorisedly in the
course of trade in relation to services which are so similar to the applicant's goods in respect of which its mark
is registered that in such use there exists the likelihood of deception or confusion? . . .. There is, it seems to
me, interdependence between the two legs of the inquiry: the less the similarity between respective goods or
services of the parties, the greater will be the degree of resemblance required between their respective marks
before it can be said that there is a likelihood of deception or confusion in the use of the allegedly offending
mark, and vice versa. Of course, if the respective goods or services of the parties are so dissimilar to each
other that there is no likelihood of deception or confusion, the use by the respondent even of a mark which is
identical to the applicant's registered mark will not constitute an infringement; also, if the two marks are
sufficiently dissimilar to each other no amount of similarity between the respective goods or services of the
parties will suffice to bring about an infringement. I respectfully agree with the learned authors of Webster and
Page South African Law of Trade Marks 4th ed. Paragraph 12.23 (at 1241), where they say, with reference to s
34(1)(b) of the Act:
'(O)n a proper interpretation of the South African section the degree of resemblance between the marks
and the degree of resemblance between the goods or services must be such that their combined effect
will be to produce a likelihood of deception or confusion when that mark is used on those goods or
services.'"
(c)
The legal principles applicable in a trade mark infringement matter under the 1963 Act is set out in
PlasconEvans Paints Ltd v Riebeeck Paints (Pty) Ltd (supra). These principles have been held to apply
equally to an infringement in terms of section 34(1)(a) of the 1993 Act in PPI Makelaars and another v
Professional Provident Society of SA 1998 (1) SA 595 (SCA) [also reported at [1997] 4 All SA 444 (SCA)
Ed].
(d)
The likelihood of confusion must 'be appreciated globally: In Bata Ltd v Face Fashions CC and another
2001 (1) SA 844 (SCA) at paragraph 9 [also reported at [2000] JOL 7458 (SCA) Ed], the Court cited
with approval, the following from the decision of the European
Page 646 of [2012] 1 All SA 636 (WCC)
Court of Justice in Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224:
"Global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the
overall impression given by the marks, bearing in mind in particular, their distinctive and dominant
components."
(e)
The following principle was developed in the Bata case (supra) at paragraph 8:
"The only question that has to be decided in respect of the alleged infringements under section 34(1)(a) i s
whether the appellant has established that a substantial number of persons will probably be deceived into
believing or confused as to whether there is a material connection in the course of trade between the
appellant's clothing and the appellant's trade mark (see PlasconEvans at 640GI)."
(f )
In the case of John Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd 1977 (3) SA 144 (T) at 150H [also
reported at [1977] 3 All SA 466 (T) Ed] it was said that "deception" means to cause someone to