Open Horizon Ltd v Carnilinx (Pty) Ltd (225/2021) [2022] ZASCA 75; 2022 BIP 458 (SCA); [2022] HIPR 202 (SCA) (26 May 2022)

Open Horizon Ltd v Carnilinx (Pty) Ltd (225/2021) [2022] ZASCA 75; 2022 BIP 458 (SCA); [2022] HIPR 202 (SCA) (26 May 2022)

The court held that the appellant's PACIFIC and the respondent's ATLANTIC marks are not confusingly or deceptively similar under s 34(1)(a) of the Trade Marks Act. The marks are conceptually related as names of oceans, but they are neither visually nor phonetically similar, and trade mark law does not grant monopolies over concepts or ideas. The average consumer would perceive PACIFIC and ATLANTIC as two distinct oceans, not as unidentifiable or interchangeable concepts. The appellant's unlawful competition claim was introduced late, lacked evidentiary support, and was not properly pleaded. Furthermore, the unlawful competition claim relied on the same factual basis as the trade mark...

Citation
[2022] ZASCA 75
Parties
Appellant: Open Horizon Ltd; Respondent: Carnilinx (Pty) Ltd
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
26 May 2022
Case Number
225/2021
Procedural Posture
Civil Appeal / Appeal From Gauteng Division of the High Court, Pretoria
Outcome
Appeal dismissed with costs, including those of two counsel.
Judges
Ponnan, Zondi, Makgoka, Mabindla-Boqwana, Meyer
Legal Topics
Trade Mark Infringement, Unlawful Competition, Likelihood of Confusion, Conceptual Similarity, Passing Off
Intellectual Property Commercial and Corporate Trade Mark Infringement Unlawful Competition Likelihood of Confusion Conceptual Similarity Passing Off

Case Brief

Summary, issues, holding and outcome

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Parties

Open Horizon Ltd

Appellant

Carnilinx (Pty) Ltd

Respondent

Procedural Posture

Civil Appeal / Appeal From Gauteng Division of the High Court, Pretoria

Legal Issues

  1. 1 Whether the respondent's ATLANTIC marks are confusingly or deceptively similar to the appellant's registered PACIFIC trade marks under s 34(1)(a) of the Trade Marks Act.
  2. 2 Whether the respondent's adoption and use of the ATLANTIC marks amounts to unlawful competition.

Ratio Decidendi

The court held that the appellant's PACIFIC and the respondent's ATLANTIC marks are not confusingly or deceptively similar under s 34(1)(a) of the Trade Marks Act. The marks are conceptually related as names of oceans, but they are neither visually nor phonetically similar, and trade mark law does not grant monopolies over concepts or ideas. The average consumer would perceive PACIFIC and ATLANTIC as two distinct oceans, not as unidentifiable or interchangeable concepts. The appellant's unlawful competition claim was introduced late, lacked evidentiary support, and was not properly pleaded. Furthermore, the unlawful competition claim relied on the same factual basis as the trade mark...

Court Disposition

Appeal dismissed with costs, including those of two counsel.

Orders

  • The appeal is dismissed with costs, including those of two counsel.