South Africa Case Law

Better Homes Expo (Pty) Ltd v Consep Home Ideas (Pty) Ltd and Others (48170/17)

Better Homes Expo (Pty) Ltd v Consep Home Ideas (Pty) Ltd and Others (48170/17) [2019] ZAGPJHC 5; 2019 BIP 259 (GJ) (7 February 2019)

Court

South Gauteng High Court, Johannesburg

Case number

48170/17

Judge

Meyer

The court found that the phrase HOME IDEAS is descriptive and commonly used in the English language, conveying the meaning of ideas for the home. The applicant's reputation in the mark was not sufficient to render the phrase distinctive of its business alone. The addition of the word CONSEP and the markedly different get-up used by the respondents were sufficient to distinguish their business from that of the applicant. The evidence of actual confusion was unsatisfactory and did not establish a reasonable likelihood of confusion or deception. The applicant, having adopted a trading name conta…

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• Passing Off
• Trade Mark Distinctiveness
• Descriptive Terms
• Secondary Meaning
• Likelihood Of Confusion

Discovery Holdings Ltd v Sanlam Ltd and Others (8995/2012)

Discovery Holdings Ltd v Sanlam Ltd and Others (8995/2012) [2014] ZAWCHC 109; 2015 (1) SA 365 (WCC); 2014 BIP 210 (WCC) (3 July 2014)

Court

Western Cape High Court, Cape Town

Case number

8995/2012

Judge

P L Goliath

The court held that ESCALATOR FUNDS is descriptive of CPPI investment products, rejected infringement and passing off claims, and ordered the mark expunged.

• Trade Mark Infringement
• Descriptive Marks
• Secondary Meaning
• Passing Off
• Expungement Of Trade Mark
• Distinctiveness

Jordan Winery (Pty) Ltd and Another v Pritchard (11031/12)

Jordan Winery (Pty) Ltd and Another v Pritchard (11031/12) [2013] ZAWCHC 191; 2013 BIP 476 (WCC) (19 December 2013)

Court

Western Cape High Court, Cape Town

Case number

11031/12

Judges

Gamble, L. Van Biljon

The High Court granted an interdict against a winery using the name Sophia, holding that Jordan’s Sophia had acquired reputation and that future confusion was likely.

• Passing Off
• Unregistered Trade Mark
• Secondary Meaning
• Likelihood Of Confusion
• Goodwill And Reputation
• Trade Mark Infringement

3 Jerks Manufacturing CC v Vital Health Foods (Pty) Ltd (22452/2011)

3 Jerks Manufacturing CC v Vital Health Foods (Pty) Ltd (22452/2011) [2011] ZAWCHC 491; 2011 BIP 423 (WCC) (2 December 2011)

Court

Western Cape High Court, Cape Town

Case number

22452/2011

Judge

J I Cloete

High Court passing-off dispute over the name “CholesterolEase” failed because the term was found descriptive, not distinctive, and no confusion was proved.

• Passing Off
• Trade Name Distinctiveness
• Secondary Meaning
• Aural Confusion
• Advertising Value
• Unlawful Competition

Alliance Property Group (Pty) Ltd v Alliance Group Ltd and Another (252/2010)

Alliance Property Group (Pty) Ltd v Alliance Group Ltd and Another (252/2010) [2011] ZASCA 14; 2011 BIP 377 (SCA) (14 March 2011)

Court

Supreme Court of Appeal

Case number

252/2010

Judges

Harms, Heher, Ponnan, Tshiqi, Plasket

The Supreme Court of Appeal found that the dispute remained live as the respondents had not given an undertaking to cease using the name Alliance Group, and thus the appeal was not moot under section 21A. On the merits, the appellant had established a reputation in the name and trading style of Alliance Property Group in KwaZulu-Natal and the Eastern Cape, with the name acquiring a secondary meaning. The respondents' change to Alliance Group Ltd and expansion of services made their business and name strikingly similar to the appellant's, resulting in inevitable confusion and instances of actu…

Source excerpt

• Passing Off
• Proof Of Reputation
• Misrepresentation
• Interdict
• Secondary Meaning
• Likelihood Of Confusion

Mayo Foundation for Medical Education and Research v Theatre Mayo Clinic Company (Pty) Ltd and Others (1428/2006)

Mayo Foundation for Medical Education and Research v Theatre Mayo Clinic Company (Pty) Ltd and Others (1428/2006) [2009] ZAGPPHC 110; 2009 BIP 438 (GNP) (14 September 2009)

Court

North Gauteng High Court, Pretoria

Case number

1428/2006

Judge

B R Southwood

High Court passing-off dispute over the Mayo name. The applicant proved reputation in South Africa, but the court found the respondents had a lawful shared reputation and tacit consent.

• Passing Off
• Trade Mark Infringement
• Well Known Marks
• Consent And Estoppel
• Secondary Meaning
• Shared Reputation

Alliance Property Group (Pty) Ltd v Alliance Group Ltd (8828/2007)

Alliance Property Group (Pty) Ltd v Alliance Group Ltd (8828/2007) [2009] ZAKZPHC 31; 2009 BIP 412 (KZP) (20 June 2009)

Court

Kwazulu-Natal High Court, Pietermaritzburg

Case number

8828/2007

Judge

Sishi

The court dismissed a passing-off application, finding no protectable exclusive reputation in the descriptive word “Alliance” and no likelihood of confusion.

• Passing Off
• Trade Name Dispute
• Secondary Meaning
• Final Interdict
• Reputation And Goodwill
• Passing-off

Learn to Drice CC v Van De Weg (133/07)

Learn to Drice CC v Van De Weg (133/07) [2007] ZAECHC 86 (7 August 2007)

Court

High Courts - Eastern Cape

Case number

133/07

Judge

Dambuza

The court found that the applicant failed to prove that the trade name 'Learn to Drive' had acquired a secondary meaning distinctive of its business in the minds of the public. The words are generally descriptive and not inherently distinctive. The evidence did not establish that the public associated the words exclusively with the applicant's business, nor was there proof of actual or likely confusion. The advertisements and business practices of both parties were sufficiently distinguishable, and the applicant's reputation did not extend to exclusive rights in the descriptive words. Consequ…

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• Passing Off
• Trade Name Dispute
• Secondary Meaning
• Interdict
• Goodwill
• Likelihood Of Confusion

Value Car Group Limited and Another v Value Car Hire (Pty) Ltd and Others (10422/03)

Value Car Group Limited and Another v Value Car Hire (Pty) Ltd and Others (10422/03) [2005] ZAWCHC 23; [2005] 4 All SA 474 (C); 2005 BIP 172 (C) (13 April 2005)

Court

Western Cape High Court, Cape Town

Case number

10422/03

Judge

R B Cleaver

The High Court dismissed an application to stop use of the word “Value” in car hire branding, finding no proved reputation, confusion, or trade mark infringement.

• Passing Off
• Trade Mark Infringement
• Secondary Meaning
• Trade Practices Act
• Likelihood Of Confusion
• Passing-off

New Media Publishing (Pty) Ltd v Eating Out Web Services CC and Another (6937/03)

New Media Publishing (Pty) Ltd v Eating Out Web Services CC and Another (6937/03) [2005] ZAWCHC 20; 2005 (5) SA 388 (C); 2005 BIP 127 (C) (4 April 2005)

Court

Western Cape High Court, Cape Town

Case number

6937/03

Judge

Thring

The court found that the applicant's registered trade mark 'Eat Out Guide' and the respondent's mark 'Eating Out' are sufficiently similar in both sense and commercial context, and that the services provided by the respondent's websites are similar to the goods for which the applicant's mark is registered. Evidence of actual confusion among industry participants supported the likelihood of deception or confusion. The applicant succeeded in its trade mark infringement claim under section 34(1)(b) of the Trade Marks Act. However, the court held that 'Eat Out' is primarily descriptive and has no…

Source excerpt

• Trade Mark Infringement
• Passing Off
• Distinctiveness
• Secondary Meaning
• Internet Domain Names