Chantelle v Designer Group (Pty) Ltd (A743/2013) [2015] ZAGPPHC 222; 2015 BIP 231 (GP) (24 April 2015)

Chantelle v Designer Group (Pty) Ltd (A743/2013) [2015] ZAGPPHC 222; 2015 BIP 231 (GP) (24 April 2015)

The court found that the Registrar of Trade Marks misdirected themselves by failing to apply the doctrine of notional use and the correct allocation of onus under section 10(14) of the Trade Marks Act. The evidence established that the appellant's CHANTELLE mark is well-known in South Africa for women's fashion items and that goods covered by the respondent's Class 3 application are similar or related, often sold in close proximity in retail outlets. The identical marks are likely to cause confusion or deception among consumers regarding the origin of the goods. The Registrar erred by focusing on actual use and failing to consider the likelihood of confusion arising from notional, normal,...

Citation
[2015] ZAGPPHC 222
Parties
Appellant: Chantelle; Respondent: Designer Group (Pty) Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
24 April 2015
Case Number
A743/2013
Procedural Posture
Civil Appeal / Appeal From Registrar of Trade Marks Decision
Outcome
Appeal upheld; Registrar's order set aside; respondent's application for registration refused; costs awarded to appellant.
Judges
W R C Prinsloo, M F Legodi, C Pretorius
Legal Topics
Trade Mark Registration, Likelihood of Confusion, Onus of Proof, Notional Use, Similarity of Goods
Intellectual Property Commercial and Corporate Trade Mark Registration Likelihood of Confusion Onus of Proof Notional Use Similarity of Goods

Case Brief

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Parties

Chantelle

Appellant

Designer Group (Pty) Ltd

Respondent

Procedural Posture

Civil Appeal / Appeal From Registrar of Trade Marks Decision

Legal Issues

  1. 1 Whether the respondent's application to register the trade mark CHANTELLE in Class 3 should be refused due to likelihood of confusion with the appellant's registered CHANTELLE mark in Class 25.
  2. 2 Whether the Registrar of Trade Marks misdirected themselves in finding no likelihood of confusion or deception.
  3. 3 Whether the doctrine of notional use and the correct allocation of onus were properly applied.

Ratio Decidendi

The court found that the Registrar of Trade Marks misdirected themselves by failing to apply the doctrine of notional use and the correct allocation of onus under section 10(14) of the Trade Marks Act. The evidence established that the appellant's CHANTELLE mark is well-known in South Africa for women's fashion items and that goods covered by the respondent's Class 3 application are similar or related, often sold in close proximity in retail outlets. The identical marks are likely to cause confusion or deception among consumers regarding the origin of the goods. The Registrar erred by focusing on actual use and failing to consider the likelihood of confusion arising from notional, normal,...

Court Disposition

Appeal upheld; Registrar's order set aside; respondent's application for registration refused; costs awarded to appellant.

Orders

  • The appeal is upheld with costs.
  • The order of the Registrar of Trade Marks is set aside.