Shoprite Checkers (Pty) Ltd v Charoen Pokphand Group Co Ltd (72005/2015) [2016] ZAGPPHC 655; 2016 BIP 222 (GP) (28 July 2016)

Shoprite Checkers (Pty) Ltd v Charoen Pokphand Group Co Ltd (72005/2015) [2016] ZAGPPHC 655; 2016 BIP 222 (GP) (28 July 2016)

The court found that the dominant feature of both marks is the conjoined word FRESHMARK/FRESHMART, which is visually, aurally, and conceptually similar. The 'CP' component and Thai characters in Charoen's mark do not provide sufficient distinction for South African consumers, who would focus on the FRESHMART element. The services for which both marks are registered are identical, increasing the likelihood of confusion. Charoen failed to discharge the onus of proving that there is no reasonable probability or likelihood of confusion or deception. The court held that the global appreciation of the marks, considering their overall impression and dominant features, leads to the conclusion...

Citation
[2016] ZAGPPHC 655
Parties
Opponent: Shoprite Checkers (Pty) Ltd; Trade Mark Applicant: Charoen Pokphand Group Co Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
28 July 2016
Case Number
72005/2015
Procedural Posture
Opposition Proceedings / Referral From Registrar of Trade Marks Under S 59(2) of the Trade Marks Act
Outcome
The application for registration of the trade mark by Charoen Pokphand Group Co Ltd is refused. Costs of the opposition proceedings are awarded against Charoen Pokphand Group Co Ltd.
Judges
JW Louw
Legal Topics
Trade Mark Opposition, Likelihood of Confusion, Dominant Feature Test, Retail Services Classification
Intellectual Property Commercial and Corporate Trade Mark Opposition Likelihood of Confusion Dominant Feature Test Retail Services Classification

Case Brief

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Parties

Shoprite Checkers (Pty) Ltd

Opponent

Charoen Pokphand Group Co Ltd

Trade Mark Applicant

Procedural Posture

Opposition Proceedings / Referral From Registrar of Trade Marks Under S 59(2) of the Trade Marks Act

Legal Issues

  1. 1 Whether Charoen Pokphand Group Co Ltd's FRESHMART mark is sufficiently similar to Shoprite's FRESHMARK mark to cause a likelihood of deception or confusion if registered for retail services.
  2. 2 Whether the services for which the marks are registered are the same or similar, thereby increasing the risk of confusion.
  3. 3 Whether Charoen Pokphand Group Co Ltd has discharged the onus of proving no reasonable likelihood of confusion or deception.

Ratio Decidendi

The court found that the dominant feature of both marks is the conjoined word FRESHMARK/FRESHMART, which is visually, aurally, and conceptually similar. The 'CP' component and Thai characters in Charoen's mark do not provide sufficient distinction for South African consumers, who would focus on the FRESHMART element. The services for which both marks are registered are identical, increasing the likelihood of confusion. Charoen failed to discharge the onus of proving that there is no reasonable probability or likelihood of confusion or deception. The court held that the global appreciation of the marks, considering their overall impression and dominant features, leads to the conclusion...

Court Disposition

The application for registration of the trade mark by Charoen Pokphand Group Co Ltd is refused. Costs of the opposition proceedings are awarded against Charoen Pokphand Group Co Ltd.

Orders

  • The trade mark application of Charoen Pokphand Group Co Ltd is refused.
  • Charoen Pokphand Group Co Ltd is ordered to pay the costs of the opposition proceedings.