Brown v Edcon Ltd (39873/2013) [2014] ZAGPPHC 371; 2014 BIP 185 (GP) (13 May 2014)

Brown v Edcon Ltd (39873/2013) [2014] ZAGPPHC 371; 2014 BIP 185 (GP) (13 May 2014)

The court held that although both marks share the word 'STONE', this element is common in the fashion and clothing industry and is not uniquely associated with the respondent. When the marks are considered as a whole, the differences between 'HARBOUR' and 'DRI' are significant and sufficiently distinguish the two marks. The evidence showed that 'STONE' is an ordinary word used in various trade marks, and granting the respondent a monopoly over it would be unjustified. The applicant discharged the onus of proving no likelihood of confusion or deception. Therefore, the application for registration of the trade mark STONE-DRI in classes 18 and 25 must succeed.

Citation
[2014] ZAGPPHC 371
Parties
Applicant: Joel Brown; Respondent: Edcon Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
13 May 2014
Case Number
39873/2013
Procedural Posture
Review Application / Opposition to Trade Mark Registration Referred by Registrar Under Section 59(2) of the Trade Marks Act
Outcome
Application for registration of trade mark STONE-DRI in classes 18 and 25 granted; costs awarded against the respondent.
Judges
D S Fourie
Legal Topics
Trade Mark Opposition, Likelihood of Confusion, Dominant Feature Test, Onus of Proof, Trade Mark Registration
Intellectual Property Trade Mark Opposition Likelihood of Confusion Dominant Feature Test Onus of Proof Trade Mark Registration

Case Brief

Summary, issues, holding and outcome

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Parties

Joel Brown

Applicant

Edcon Ltd

Respondent

Procedural Posture

Review Application / Opposition to Trade Mark Registration Referred by Registrar Under Section 59(2) of the Trade Marks Act

Legal Issues

  1. 1 Whether the applicant's trade mark STONE-DRI is so similar to the respondent's registered trade mark STONE HARBOUR that its use would be likely to deceive or cause confusion.
  2. 2 Whether the word 'STONE' as a common element in both marks is sufficient to create a likelihood of confusion or deception among consumers.
  3. 3 Whether the applicant has discharged the onus of proving no likelihood of consumer deception or confusion.

Ratio Decidendi

The court held that although both marks share the word 'STONE', this element is common in the fashion and clothing industry and is not uniquely associated with the respondent. When the marks are considered as a whole, the differences between 'HARBOUR' and 'DRI' are significant and sufficiently distinguish the two marks. The evidence showed that 'STONE' is an ordinary word used in various trade marks, and granting the respondent a monopoly over it would be unjustified. The applicant discharged the onus of proving no likelihood of confusion or deception. Therefore, the application for registration of the trade mark STONE-DRI in classes 18 and 25 must succeed.

Court Disposition

Application for registration of trade mark STONE-DRI in classes 18 and 25 granted; costs awarded against the respondent.

Orders

  • The application for registration of trade mark 2010/09603-4 STONE-DRI in classes 18 and 25 is granted.
  • The costs for opposing the application shall be paid by the respondent.