TPN Group (Pty) Limited v Ebay Inc (37922/13) [2015] ZAGPPHC 190; 2017 BIP 57 (GP); 2015 BIP 213 (GP) (16 March 2015)

TPN Group (Pty) Limited v Ebay Inc (37922/13) [2015] ZAGPPHC 190; 2017 BIP 57 (GP); 2015 BIP 213 (GP) (16 March 2015)

The court found that although the RENTBAY mark shares the 'Bay' element with eBay's marks, both marks consist of two equally significant features, and the combination of 'Rent' and 'Bay' in TPN's mark is sufficiently distinct from eBay's use of 'eBay'. The word 'Bay' is not an invented word and is commonly used in other trade marks. The services for which TPN seeks registration are either not identical or only superficially similar to those covered by eBay's registrations. The evidence did not establish a reasonable likelihood of confusion or deception among the public. The court also found that RENTBAY does not take unfair advantage of or detract from the distinctive character or repute...

Citation
[2015] ZAGPPHC 190
Parties
Applicant: TPN Group (Pty) Limited; Respondent: Ebay Inc
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
16 March 2015
Case Number
37922/13
Procedural Posture
Review Application / Referral From Registrar of Trade Marks Under S 59(2) of the Trade Marks Act
Outcome
All of eBay's objections to the registration of the RENTBAY mark in classes 35 and 36 are dismissed.
Judges
J W Louw
Legal Topics
Trade Mark Registration, Likelihood of Confusion, Well Known Marks, Paris Convention Protection, Distinctive Character, Reputation in Trade Marks
Intellectual Property Trade Mark Registration Likelihood of Confusion Well Known Marks Paris Convention Protection Distinctive Character Reputation in Trade Marks

Case Brief

Summary, issues, holding and outcome

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Parties

TPN Group (Pty) Limited

Applicant

Ebay Inc

Respondent

Procedural Posture

Review Application / Referral From Registrar of Trade Marks Under S 59(2) of the Trade Marks Act

Legal Issues

  1. 1 Whether the RENTBAY mark is identical or sufficiently similar to eBay's registered marks to cause deception or confusion under s 10(14) of the Trade Marks Act.
  2. 2 Whether the use of RENTBAY would be inherently deceptive or likely to deceive or cause confusion under s 10(12).
  3. 3 Whether RENTBAY is identical or similar to a well-known mark and would take unfair advantage of or be detrimental to the distinctive character or repute of eBay's marks under s 10(17).

Ratio Decidendi

The court found that although the RENTBAY mark shares the 'Bay' element with eBay's marks, both marks consist of two equally significant features, and the combination of 'Rent' and 'Bay' in TPN's mark is sufficiently distinct from eBay's use of 'eBay'. The word 'Bay' is not an invented word and is commonly used in other trade marks. The services for which TPN seeks registration are either not identical or only superficially similar to those covered by eBay's registrations. The evidence did not establish a reasonable likelihood of confusion or deception among the public. The court also found that RENTBAY does not take unfair advantage of or detract from the distinctive character or repute...

Court Disposition

All of eBay's objections to the registration of the RENTBAY mark in classes 35 and 36 are dismissed.

Orders

  • eBay Inc's opposition to application no. 2010/23707 for registration of the mark RENTBAY in class 35 and to application no. 2010/23708 of the mark RENTBAY in class 36, both in the name of TPN Group (Pty) Ltd, is dismissed with costs.
  • The said applications may proceed to grant.