Orange Brand Services Ltd v Account Works Software (Pty) Ltd (970/12) [2013] ZASCA 158; 2013 BIP 313 (SCA) (22 November 2013)

Orange Brand Services Ltd v Account Works Software (Pty) Ltd (970/12) [2013] ZASCA 158; 2013 BIP 313 (SCA) (22 November 2013)

The Supreme Court of Appeal held that the registrar and the lower court erred by focusing on the actual industries in which the marks were used rather than the goods covered by the registrations. The correct approach is to assess the likelihood of confusion based on the notional use of the marks in relation to computer software, as both registrations cover such goods. The court found that the dominant feature of both marks is the word 'ORANGE', which is distinctive in the context of software and technology. The addition of 'WORKS' does not sufficiently differentiate the marks, and the use of ORANGEWORKS is likely to cause at least initial confusion with ORANGE. The court concluded that...

Citation
[2013] ZASCA 158
Parties
Appellant: Orange Brand Services Limited; Respondent: Account Works Software (Pty) Ltd
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
22 November 2013
Case Number
970/12
Procedural Posture
Civil Appeal / Appeal From North Gauteng High Court, Pretoria, Which Sat on Appeal From the Registrar of Trade Marks.
Outcome
Appeal upheld. The opposition to the trade mark application succeeds and the application for registration of ORANGEWORKS is refused.
Judges
Nugent, Tshiqi, Theron, Majiedt, Swain
Legal Topics
Trade Mark Registration, Likelihood of Confusion, Distinctiveness of Mark, Opposition Proceedings
Intellectual Property Commercial and Corporate Trade Mark Registration Likelihood of Confusion Distinctiveness of Mark Opposition Proceedings

Case Brief

Summary, issues, holding and outcome

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Parties

Orange Brand Services Limited

Appellant

Account Works Software (Pty) Ltd

Respondent

Procedural Posture

Civil Appeal / Appeal From North Gauteng High Court, Pretoria, Which Sat on Appeal From the Registrar of Trade Marks.

Legal Issues

  1. 1 Whether the mark ORANGEWORKS is so similar to the earlier mark ORANGE that its use in relation to computer software would be likely to deceive or cause confusion.
  2. 2 Whether the registrar and lower court erred by comparing the marks based on the industries in which they are used rather than the goods covered by the registrations.
  3. 3 Whether the dominant feature of the mark ORANGEWORKS is likely to cause confusion with the mark ORANGE in the context of computer software.

Ratio Decidendi

The Supreme Court of Appeal held that the registrar and the lower court erred by focusing on the actual industries in which the marks were used rather than the goods covered by the registrations. The correct approach is to assess the likelihood of confusion based on the notional use of the marks in relation to computer software, as both registrations cover such goods. The court found that the dominant feature of both marks is the word 'ORANGE', which is distinctive in the context of software and technology. The addition of 'WORKS' does not sufficiently differentiate the marks, and the use of ORANGEWORKS is likely to cause at least initial confusion with ORANGE. The court concluded that...

Court Disposition

Appeal upheld. The opposition to the trade mark application succeeds and the application for registration of ORANGEWORKS is refused.

Orders

  • The appeal is upheld with costs, including the costs of two counsel.
  • The order of the court below is set aside and substituted with: (a) The opposition to trade mark application number 2006/05687 ORANGEWORKS in Class 9 succeeds and the application is refused. (b) The applicant for registration is directed to pay the opponent’s costs of opposition.