Kansai Plascon (Pty) Ltd v Duram (Pty) Ltd (38106/14) [2015] ZAGPPHC 44; 2015 BIP 202 (GP) (29 January 2015)

Kansai Plascon (Pty) Ltd v Duram (Pty) Ltd (38106/14) [2015] ZAGPPHC 44; 2015 BIP 202 (GP) (29 January 2015)

The court found that the term 'DTM' is used generically in the paint industry to refer to products that can be directly applied to metal and is not distinctive of the respondent's goods. Evidence presented demonstrated widespread use of 'DTM' by various entities, including the respondent, as a descriptive term rather than a trade mark. The respondent failed to discharge the onus of proving that 'DTM' was capable of distinguishing its goods at the relevant date. The court held that 'DTM' is a generic term and cannot be monopolised by any trader. Accordingly, the respondent's application for registration of 'DTM' as a trade mark was declined.

Citation
[2015] ZAGPPHC 44
Parties
Applicant: Kansai Plascon (Pty) Ltd; Respondent: Duram (Pty) Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
29 January 2015
Case Number
38106/14
Procedural Posture
Review Application / Opposition to Trade Mark Registration Referred From Registrar's Tribunal
Outcome
Applicant's opposition succeeds; respondent's trade mark application is declined; costs awarded to applicant.
Judges
Lebala
Legal Topics
Trade Mark Registration, Generic Terms, Distinctiveness, Section 9 Trade Marks Act, Section 10 Trade Marks Act
Intellectual Property Trade Mark Registration Generic Terms Distinctiveness Section 9 Trade Marks Act Section 10 Trade Marks Act

Case Brief

Summary, issues, holding and outcome

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Parties

Kansai Plascon (Pty) Ltd

Applicant

Duram (Pty) Ltd

Respondent

Procedural Posture

Review Application / Opposition to Trade Mark Registration Referred From Registrar's Tribunal

Legal Issues

  1. 1 Whether the term 'DTM' is capable of distinguishing the respondent's goods as required by section 9 of the Trade Marks Act.
  2. 2 Whether 'DTM' is a generic term and thus not registrable as a trade mark.
  3. 3 Whether the respondent's application for registration of 'DTM' should be declined on statutory grounds.

Ratio Decidendi

The court found that the term 'DTM' is used generically in the paint industry to refer to products that can be directly applied to metal and is not distinctive of the respondent's goods. Evidence presented demonstrated widespread use of 'DTM' by various entities, including the respondent, as a descriptive term rather than a trade mark. The respondent failed to discharge the onus of proving that 'DTM' was capable of distinguishing its goods at the relevant date. The court held that 'DTM' is a generic term and cannot be monopolised by any trader. Accordingly, the respondent's application for registration of 'DTM' as a trade mark was declined.

Court Disposition

Applicant's opposition succeeds; respondent's trade mark application is declined; costs awarded to applicant.

Orders

  • The applicant's opposition succeeds.
  • The respondent's registration of trade mark application no: 2011/21989 DTM in class 2 is declined.