M-Systems Group (Pty) Ltd v Cochrane Steel Products (Pty) Ltd (61028/2015) [2016] ZAGPPHC 677; 2016 BIP 228 (GP) (10 August 2016)

M-Systems Group (Pty) Ltd v Cochrane Steel Products (Pty) Ltd (61028/2015) [2016] ZAGPPHC 677; 2016 BIP 228 (GP) (10 August 2016)

The court found that 'CLEARVU' is an invented word and not merely descriptive of the goods or services for which registration is sought. Although the mark may allude to a characteristic of the fencing products, it is not exclusively descriptive and is used in relation to a broader range of goods and services. The applicant demonstrated extensive use of the mark, resulting in significant reputation and recognition among the public and professionals. The court concluded that 'CLEARVU' is capable of distinguishing the applicant's goods and, alternatively, has acquired distinctiveness through prior use. The opposition was dismissed, but the registration was made subject to endorsements...

Citation
[2016] ZAGPPHC 677
Parties
Applicant: M-Systems Group (Pty) Ltd; Respondent: Cochrane Steel Products (Pty) Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
10 August 2016
Case Number
61028/2015
Procedural Posture
Opposition Proceedings / Judgment on Opposition to Trademark Registration
Outcome
Opposition dismissed; trademark applications registered with conditions; costs awarded to applicant.
Judges
AC Basson
Legal Topics
Trademark Registration, Distinctiveness, Prior Use, Trade Mark Act, Descriptive Marks
Intellectual Property Commercial and Corporate Trademark Registration Distinctiveness Prior Use Trade Mark Act Descriptive Marks

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 11 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

M-Systems Group (Pty) Ltd

Applicant

Cochrane Steel Products (Pty) Ltd

Respondent

Procedural Posture

Opposition Proceedings / Judgment on Opposition to Trademark Registration

Legal Issues

  1. 1 Is the mark 'CLEARVU' inherently capable of distinguishing the applicant's goods and services from those of other traders within the meaning of section 9 of the Trademarks Act?
  2. 2 Has the mark 'CLEARVU' acquired distinctiveness through prior use as contemplated in section 9(1) of the Trademarks Act?
  3. 3 Should the registration of 'CLEARVU' be subject to endorsements limiting exclusive rights to the words 'clear' and 'view'?

Ratio Decidendi

The court found that 'CLEARVU' is an invented word and not merely descriptive of the goods or services for which registration is sought. Although the mark may allude to a characteristic of the fencing products, it is not exclusively descriptive and is used in relation to a broader range of goods and services. The applicant demonstrated extensive use of the mark, resulting in significant reputation and recognition among the public and professionals. The court concluded that 'CLEARVU' is capable of distinguishing the applicant's goods and, alternatively, has acquired distinctiveness through prior use. The opposition was dismissed, but the registration was made subject to endorsements...

Court Disposition

Opposition dismissed; trademark applications registered with conditions; costs awarded to applicant.

Orders

  • Trademark Applications 2010/13544 and 2010/13545 are registered in the name of Cochrane Steel Products (Pty) Ltd, subject to the condition that registration gives no right to the exclusive use of the words 'clear' and 'view' separately and apart from the mark.
  • The trademark registrant admits that registration shall not debar others from bona fide descriptive use in the course of trade of the words 'clear view' and 'view'.