Woolworths (Pty) Ltd v KR Agencies CC (4288/14) [2014] ZAGPPHC 369; 2014 BIP 191 (GP) (13 June 2014)

Woolworths (Pty) Ltd v KR Agencies CC (4288/14) [2014] ZAGPPHC 369; 2014 BIP 191 (GP) (13 June 2014)

The court found that the opposed mark's dominant 'jt' element is visually and aurally similar to Woolworths' JT ONE marks, and that the strapline does not sufficiently distinguish the marks. The likelihood of confusion is heightened by consumer tendencies to abbreviate product names and by KR's own use of abbreviations. KR's claim of honest concurrent use failed due to non-compliance with procedural requirements and because use under licence does not confer rights to the licensee. The absence of evidence of actual confusion was deemed irrelevant to the legal test. Consequently, the opposed mark is prohibited from registration under sections 10(12) and 10(14) of the Trade Marks Act.

Citation
[2014] ZAGPPHC 369
Parties
Respondent: Woolworths (Pty) Ltd; Applicant: KR Agencies CC
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
13 June 2014
Case Number
4288/14
Procedural Posture
Opposition to Trade Mark Registration / High Court Review After Registrar Transfer
Outcome
KR Agencies CC's application for registration of trade mark 2007/18441 is refused. Costs awarded to Woolworths (Pty) Ltd.
Judges
J W Louw
Legal Topics
Trade Mark Opposition, Likelihood of Confusion, Honest Concurrent Use, Visual and Aural Similarity, Registration Requirements
Intellectual Property Trade Mark Opposition Likelihood of Confusion Honest Concurrent Use Visual and Aural Similarity Registration Requirements

Case Brief

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Parties

Woolworths (Pty) Ltd

Respondent

KR Agencies CC

Applicant

Procedural Posture

Opposition to Trade Mark Registration / High Court Review After Registrar Transfer

Legal Issues

  1. 1 Whether KR Agencies CC's trade mark is so similar to Woolworths' registered marks that its use would likely deceive or cause confusion.
  2. 2 Whether KR Agencies CC is entitled to registration based on honest concurrent use under section 14(1) of the Trade Marks Act.
  3. 3 Whether the absence of evidence of actual confusion is relevant to the likelihood of confusion or deception.

Ratio Decidendi

The court found that the opposed mark's dominant 'jt' element is visually and aurally similar to Woolworths' JT ONE marks, and that the strapline does not sufficiently distinguish the marks. The likelihood of confusion is heightened by consumer tendencies to abbreviate product names and by KR's own use of abbreviations. KR's claim of honest concurrent use failed due to non-compliance with procedural requirements and because use under licence does not confer rights to the licensee. The absence of evidence of actual confusion was deemed irrelevant to the legal test. Consequently, the opposed mark is prohibited from registration under sections 10(12) and 10(14) of the Trade Marks Act.

Court Disposition

KR Agencies CC's application for registration of trade mark 2007/18441 is refused. Costs awarded to Woolworths (Pty) Ltd.

Orders

  • The application of KR Agencies CC for registration of trade mark 2007/18441 jt's Your name can depend on it logo in class 25 is refused.
  • KR Agencies CC is ordered to pay the costs of the opposition to registration, including the costs of counsel.