Open Horizon Ltd v Carnilinx (Pty) Ltd (66901/2019) [2020] ZAGPPHC 674; 2020 BIP 415 (GP) (20 November 2020)

Open Horizon Ltd v Carnilinx (Pty) Ltd (66901/2019) [2020] ZAGPPHC 674; 2020 BIP 415 (GP) (20 November 2020)

The court found that the applicant cannot claim a monopoly over ocean-themed trade marks, as registered trade marks do not create monopolies in relation to concepts or ideas. The marks PACIFIC and ATLANTIC, while both referencing oceans, are conceptually distinct and do not create a reasonable likelihood of confusion in the minds of consumers. The applicant did not oppose prior registrations of other ocean-related marks, undermining its claim to exclusivity. The court held that the applicant failed to demonstrate that the respondent's use of the ATLANTIC marks was likely to deceive or cause confusion as required by section 34(1)(a) of the Trade Marks Act. The application to strike out was...

Citation
[2020] ZAGPPHC 674
Parties
Applicant: Open Horizon Ltd.; Respondent: Carnilinx (Pty) Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
20 November 2020
Case Number
66901/2019
Procedural Posture
Civil Application / Final Judgment
Outcome
Both the application to strike out and the main application for trade mark infringement are dismissed with costs, including the costs of two counsel where so employed.
Judges
W Hughes
Legal Topics
Trade Mark Infringement, Conceptual Similarity, Unlawful Competition, Section 34 Trade Marks Act, Likelihood of Confusion
Intellectual Property Commercial and Corporate Trade Mark Infringement Conceptual Similarity Unlawful Competition Section 34 Trade Marks Act Likelihood of Confusion

Case Brief

Summary, issues, holding and outcome

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Parties

Open Horizon Ltd.

Applicant

Carnilinx (Pty) Ltd

Respondent

Procedural Posture

Civil Application / Final Judgment

Legal Issues

  1. 1 Whether the respondent's use of ATLANTIC marks infringes the applicant's registered PACIFIC trade marks under section 34(1)(a) of the Trade Marks Act.
  2. 2 Whether the applicant is entitled to interdictory relief restraining the respondent from using the ATLANTIC marks.
  3. 3 Whether the applicant can claim a monopoly over ocean-themed trade marks in class 34 goods.

Ratio Decidendi

The court found that the applicant cannot claim a monopoly over ocean-themed trade marks, as registered trade marks do not create monopolies in relation to concepts or ideas. The marks PACIFIC and ATLANTIC, while both referencing oceans, are conceptually distinct and do not create a reasonable likelihood of confusion in the minds of consumers. The applicant did not oppose prior registrations of other ocean-related marks, undermining its claim to exclusivity. The court held that the applicant failed to demonstrate that the respondent's use of the ATLANTIC marks was likely to deceive or cause confusion as required by section 34(1)(a) of the Trade Marks Act. The application to strike out was...

Court Disposition

Both the application to strike out and the main application for trade mark infringement are dismissed with costs, including the costs of two counsel where so employed.

Orders

  • The application to strike out is dismissed with costs.
  • The application in terms of section 34(1)(a) is dismissed with costs, including the costs of two counsel where so employed.