Discovery Holdings Ltd v Sanlam Ltd and Others (8995/2012) [2014] ZAWCHC 109; 2015 (1) SA 365 (WCC); 2014 BIP 210 (WCC) (3 July 2014)

Discovery Holdings Ltd v Sanlam Ltd and Others (8995/2012) [2014] ZAWCHC 109; 2015 (1) SA 365 (WCC); 2014 BIP 210 (WCC) (3 July 2014)

The court found that the applicant's mark 'ESCALATOR FUNDS' is a combination of ordinary English words that are descriptive of the nature and characteristics of the CPPI investment products offered. The mark lacks inherent distinctiveness and has not acquired secondary meaning or reputation sufficient to function as a badge of origin in the minds of the relevant public. The evidence showed that the mark was always used in conjunction with the applicant's house mark 'DISCOVERY', and there was no credible evidence of consumer recognition of 'ESCALATOR FUNDS' as an independent source indicator. The respondents' use of 'SANLAM ESCALATING FUND' was found to be descriptive and always...

Citation
[2014] ZAWCHC 109
Parties
Applicant: Discovery Holdings Ltd; Respondent: Sanlam Ltd; Respondent: Sanlam Life Insurance; Respondent: Registrar of Trade Marks
Court
Western Cape High Court, Cape Town
Jurisdiction
South Africa
Judgment Date
3 July 2014
Case Number
8995/2012
Procedural Posture
Civil Application / Judgment on Application and Counter Application
Outcome
Application dismissed with costs; counter-application for expungement of trade mark registration granted with costs.
Judges
P L Goliath
Legal Topics
Trade Mark Infringement, Descriptive Marks, Secondary Meaning, Passing Off, Expungement of Trade Mark, Distinctiveness
Intellectual Property Commercial and Corporate Trade Mark Infringement Descriptive Marks Secondary Meaning Passing Off Expungement of Trade Mark Distinctiveness

Case Brief

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Parties

Discovery Holdings Ltd

Applicant

Sanlam Ltd

Respondent

Sanlam Life Insurance

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Civil Application / Judgment on Application and Counter Application

Legal Issues

  1. 1 Whether the applicant's registered trade mark 'ESCALATOR FUNDS' is distinctive or merely descriptive of the services offered.
  2. 2 Whether the respondents' use of 'ESCALATING FUND' or 'SANLAM ESCALATING FUND' infringes the applicant's trade mark rights under section 34(1)(a) of the Trade Marks Act.
  3. 3 Whether the applicant has established a likelihood of confusion or deception in the market between the competing marks.

Ratio Decidendi

The court found that the applicant's mark 'ESCALATOR FUNDS' is a combination of ordinary English words that are descriptive of the nature and characteristics of the CPPI investment products offered. The mark lacks inherent distinctiveness and has not acquired secondary meaning or reputation sufficient to function as a badge of origin in the minds of the relevant public. The evidence showed that the mark was always used in conjunction with the applicant's house mark 'DISCOVERY', and there was no credible evidence of consumer recognition of 'ESCALATOR FUNDS' as an independent source indicator. The respondents' use of 'SANLAM ESCALATING FUND' was found to be descriptive and always...

Court Disposition

Application dismissed with costs; counter-application for expungement of trade mark registration granted with costs.

Orders

  • The application is dismissed with costs.
  • The First and Second Respondents' counter-application succeeds with costs.