South Africa Case Law

ICollege (Pty) Ltd v Xpertease Skills Development and Mentoring CC and Another (106/2022)

ICollege (Pty) Ltd v Xpertease Skills Development and Mentoring CC and Another (106/2022) [2023] ZASCA 70 (24 May 2023)

Court

Supreme Court of Appeal

Case number

106/2022

Judges

Schippers, Mabindla-Boqwana, Matojane, Olsen, Unterhalter

The Supreme Court of Appeal found that the respondent's use of the iCollege mark was visually and phonetically identical to the appellant's registered iCOLLEGE trade marks, with both marks sharing the dominant word element 'iCOLLEGE' and similar logos. The court held that the differences in font, case, and the addition of 'ONLINE LEARNING' did not detract from the overall impression of similarity. The services offered by both parties were found to be identical or closely related, increasing the likelihood of confusion among consumers. The court rejected the respondent's argument regarding the…

Source excerpt

• Trade Mark Infringement
• Likelihood Of Confusion
• Visual And Phonetic Similarity
• Badge Of Origin
• Domain Name Transfer

iCollege (Pty) Ltd v Xcellence Skills Development and Mentorship CC and Another (40105/2019)

iCollege (Pty) Ltd v Xcellence Skills Development and Mentorship CC and Another (40105/2019) [2021] ZAGPPHC 609 (20 September 2021)

Court

North Gauteng High Court, Pretoria

Case number

40105/2019

Judge

Basson

The court held that the threshold for granting leave to appeal is high and requires a reasonable prospect of success. The applicant failed to demonstrate that another court would reach a different conclusion regarding the similarity of services and marks. The word 'college', even with the prefix 'i', is not sufficiently distinctive to warrant trade mark protection beyond its descriptive use. The court found no reasonable likelihood of confusion or deception among notional consumers, especially given the differences in the nature of the services and target customers. The applicant's criticisms…

Source excerpt

• Trade Mark Infringement
• Passing Off
• Badge Of Origin
• Likelihood Of Confusion
• Notional Consumer
• Interdictory Relief

ICollege (Pty) Ltd v Xcellence Skills Development and Mentorship CC and Another (40105/2019)

ICollege (Pty) Ltd v Xcellence Skills Development and Mentorship CC and Another (40105/2019) [2021] ZAGPPHC 463 (19 July 2021)

Court

North Gauteng High Court, Pretoria

Case number

40105/2019

Judge

Basson

The court found that while both parties use the 'iCollege' mark in relation to education and training services, the applicant failed to prove that the respondent's use is likely to deceive or cause confusion among a substantial number of notional customers. The word 'college' is a commonplace, descriptive term, and the addition of the prefix 'i' does not render it distinctive enough to serve as a badge of origin. The applicant did not provide evidence of actual confusion or demonstrate that the respondent's services are materially connected to its own. The differences in teaching methods, acc…

Source excerpt

• Trade Mark Infringement
• Passing Off
• Anti Dilution
• Section 34 Trade Marks Act
• Badge Of Origin
• Likelihood Of Confusion

Dix v Calzanetto Sociedad Limitada (A5002/2019)

Dix v Calzanetto Sociedad Limitada (A5002/2019) [2019] ZAGPJHC 499; 2019 BIP 196 (GJ) (12 December 2019)

Court

South Gauteng High Court, Johannesburg

Case number

A5002/2019

Judges

T P Mudau, K E Matojane, L Windell

Appeal concerning trade mark infringement where genuine Calzanetto goods were resold and invoices bore the mark. The court held the resale was not infringement.

• Trade Mark Infringement
• Parallel Importation
• Badge Of Origin
• Unauthorised Use
• Passing Off
• Trade-mark-infringement

Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd and Another (503/2013)

Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd and Another (503/2013) [2014] ZASCA 173; 2014 BIP 294 (SCA) (19 November 2014)

Court

Supreme Court of Appeal

Case number

503/2013

Judges

Brand, Maya, Shongwe, Theron, Meyer

The Supreme Court of Appeal upheld removal of the trademark “Robertson Hills,” finding it likely to confuse with the respondent’s “Robertson” marks, but made removal effective from the removal application date.

• Trademark Rectification
• Likelihood Of Confusion
• Distinctiveness Of Geographical Names
• Retrospective Effect Of Removal
• Badge Of Origin
• Wine Of Origin Scheme

Mettenheimer and Another v Zonquasdrif Vineyards CC and Others (965/12)

Mettenheimer and Another v Zonquasdrif Vineyards CC and Others (965/12) [2013] ZASCA 152; 2014 (2) SA 204 (SCA); [2014] 1 All SA 645 (SCA); 2013 BIP 302 (SCA) (19 November 2013)

Court

Supreme Court of Appeal

Case number

965/12

Judges

Brand, Theron, Pillay, Petse, Meyer

The Supreme Court of Appeal held that the respondent’s use of Zonquasdrif Vineyards for wine grapes did not infringe the Zonquasdrift trade mark for wine.

• Trade Mark Infringement
• Likelihood Of Confusion
• Close Corporation Name Dispute
• Badge Of Origin
• Wine Of Origin Scheme
• Trade-mark-infringement

Verimark (Pty) Ltd v Bayerische Motoren Werke AktienGesellschaft ; Bayerische Motoren Werke AktienGesellschaft v Verimark (Pty) Ltd (250/06)

Verimark (Pty) Ltd v Bayerische Motoren Werke AktienGesellschaft ; Bayerische Motoren Werke AktienGesellschaft v Verimark (Pty) Ltd (250/06) [2007] ZASCA 53; 2007 (6) SA 263 (SCA); 2007 BIP 213 (SCA) (17 May 2007)

Court

Supreme Court of Appeal

Case number

250/06

Judges

Harms, Streicher, Cloete, Ponnan, Combrinck

The Supreme Court of Appeal held that Verimark’s use of the BMW logo in product demonstrations and packaging did not infringe BMW’s trade marks or take unfair advantage of them.

• Trade Mark Infringement
• Anti Dilution Provision
• Badge Of Origin
• Unfair Advantage
• Consumer Perception
• Trade-mark-infringement

Bergkelder Bpk. v Vredendal Koöp Wynmakery and Others (105/05)

Bergkelder Bpk. v Vredendal Koöp Wynmakery and Others (105/05) [2006] ZASCA 5; 2006 (4) SA 275 (SCA); [2006] 4 All SA 215 (SCA); 2006 BIP 128 (SCA) (9 March 2006)

Court

Supreme Court of Appeal

Case number

105/05

Judges

Harms, Streicher, Cameron, Lewis, Cachalia

The Supreme Court of Appeal held that the Bocksbeutel bottle mark lacked distinctiveness and could not function as a badge of origin, so the appeal failed.

• Container Marks
• Distinctiveness
• Trade Mark Registration
• Expungement
• Badge Of Origin
• Shape Marks