Martins Of London (Pty) Ltd v The Independent Tobacco FZ CO (11534/2009) [2017] ZAGPPHC 962 (19 September 2017)

Martins Of London (Pty) Ltd v The Independent Tobacco FZ CO (11534/2009) [2017] ZAGPPHC 962 (19 September 2017)

The court found that the applicant had established a reputation in the 'ROYALS' trade mark in South Africa. The respondent did not dispute this reputation. The dominant feature in both marks is the word 'ROYALS', and the goods covered are identical. The addition of the word 'BUSINESS' does not sufficiently distinguish the respondent's mark. The likelihood of confusion among ordinary consumers is high, as they may believe the goods originate from or are connected with the same source. The respondent failed to establish a bona fide entitlement to registration and appeared to be attempting to benefit from the applicant's established reputation. Accordingly, the opposition to registration was...

Citation
[2017] ZAGPPHC 962
Parties
Applicant: Martins Of London (Pty) Ltd; Respondent: The Independent Tobacco FZ CO
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
19 September 2017
Case Number
11534/2009
Procedural Posture
Trade Mark Opposition / Referral From Registrar of Trade Marks Under Section 59(2) of the Trade Marks Act
Outcome
Opposition to registration of trade mark no 2005/21229 upheld; respondent's application for registration refused; respondent ordered to pay costs.
Judges
N.M MAVUNDLA
Legal Topics
Trade Mark Opposition, Likelihood of Confusion, Reputation in Trade Mark, Dominant Feature Test, Bona Fide Entitlement
Intellectual Property Trade Mark Opposition Likelihood of Confusion Reputation in Trade Mark Dominant Feature Test Bona Fide Entitlement

Case Brief

Summary, issues, holding and outcome

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Parties

Martins Of London (Pty) Ltd

Applicant

The Independent Tobacco FZ CO

Respondent

Procedural Posture

Trade Mark Opposition / Referral From Registrar of Trade Marks Under Section 59(2) of the Trade Marks Act

Legal Issues

  1. 1 Whether the respondent's trade mark 'BUSINESS ROYALS' is likely to deceive or confuse due to similarity with the applicant's registered 'ROYALS' trade mark.
  2. 2 Whether the respondent has established a bona fide entitlement to register 'BUSINESS ROYALS'.
  3. 3 Whether the applicant has acquired sufficient reputation in the 'ROYALS' trade mark to disqualify the respondent's registration.

Ratio Decidendi

The court found that the applicant had established a reputation in the 'ROYALS' trade mark in South Africa. The respondent did not dispute this reputation. The dominant feature in both marks is the word 'ROYALS', and the goods covered are identical. The addition of the word 'BUSINESS' does not sufficiently distinguish the respondent's mark. The likelihood of confusion among ordinary consumers is high, as they may believe the goods originate from or are connected with the same source. The respondent failed to establish a bona fide entitlement to registration and appeared to be attempting to benefit from the applicant's established reputation. Accordingly, the opposition to registration was...

Court Disposition

Opposition to registration of trade mark no 2005/21229 upheld; respondent's application for registration refused; respondent ordered to pay costs.

Orders

  • The opposition to the registration of trade mark no 2005/21229 is upheld.
  • The registration of trade mark application 2005/21229 is refused.