Jonsson Holdings (Pty) Ltd v Aktiebolaget, P.J Jonnson Och Soner (52169/2021) [2024] ZAGPPHC 1091 (23 October 2024)

Jonsson Holdings (Pty) Ltd v Aktiebolaget, P.J Jonnson Och Soner (52169/2021) [2024] ZAGPPHC 1091 (23 October 2024)

The court found that the goods covered by the respondent's trademark application—heavy mining machinery—are fundamentally dissimilar to the applicant's goods, which are protective clothing and footwear. The overlap in industry does not render the goods similar in kind or use. There was no evidence of confusion, unfair advantage, or detriment to the applicant's mark. The applicant's arguments regarding complementary use and dilution of distinctiveness were speculative and unsupported. The court held that the requirements for refusal under sections 10(12), 10(14), and 10(17) of the Trade Marks Act were not met, and the opposition was dismissed.

Citation
[2024] ZAGPPHC 1091
Parties
Applicant: Jonsson Holdings (Pty) Ltd; Respondent: Aktiebolaget P. J. Jonnson Och Soner
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
23 October 2024
Case Number
52169/2021
Procedural Posture
Trade Mark Opposition / Opposed Application Transferred From Registrar to High Court
Outcome
Opposition dismissed; costs awarded against the applicant.
Judges
Holland-Muter
Legal Topics
Trade Mark Opposition, Similarity of Goods, Likelihood of Confusion, Distinctive Character, Unfair Advantage, Passing Off
Intellectual Property Trade Mark Opposition Similarity of Goods Likelihood of Confusion Distinctive Character Unfair Advantage Passing Off

Case Brief

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Parties

Jonsson Holdings (Pty) Ltd

Applicant

Aktiebolaget P. J. Jonnson Och Soner

Respondent

Procedural Posture

Trade Mark Opposition / Opposed Application Transferred From Registrar to High Court

Legal Issues

  1. 1 Whether the respondent's application to register the JONNSON trade mark in class 7 should be refused due to similarity with the applicant's registered marks in classes 9 and 25.
  2. 2 Whether the goods covered by the respective marks are similar enough to cause confusion or deception in the market.
  3. 3 Whether registration of the respondent's mark would take unfair advantage of or be detrimental to the distinctive character or reputation of the applicant's mark.

Ratio Decidendi

The court found that the goods covered by the respondent's trademark application—heavy mining machinery—are fundamentally dissimilar to the applicant's goods, which are protective clothing and footwear. The overlap in industry does not render the goods similar in kind or use. There was no evidence of confusion, unfair advantage, or detriment to the applicant's mark. The applicant's arguments regarding complementary use and dilution of distinctiveness were speculative and unsupported. The court held that the requirements for refusal under sections 10(12), 10(14), and 10(17) of the Trade Marks Act were not met, and the opposition was dismissed.

Court Disposition

Opposition dismissed; costs awarded against the applicant.

Orders

  • The opposition to trade mark application no 2018/32668 in class 7 in the name of the respondent is dismissed.
  • The applicant is directed to pay the costs of the application proceedings, including the costs of two counsel where applicable on Scale C.