clover saproprietary limited vs tropicana product inc 2023 tzhc 21851 6 october 2023

IN THE HIGH COURT OF THE UNITED REPUBLIC OF TANZANIA (DAR ES SALAAM DISTRICT REGISTRY) AT DAR ES SALAAM CIVIL APPEAL NO. 102 OF 2022 (Arising from the Ruling and Order of the Deputy Registrar of Trade and Service Marks, Hon. Loy Mhando (Deputy Registrar), in the Matter of Service Mark No. TZ/T/2018/654 TROPICANA (and device) in the name of TROPICANA PRODUCTS, INC. and Opposition to it by CLOVER SA (PROPRIETARY) LIMITED, delivered on the 28th of September2021) CLOVER SA (PROPRIETARY) LIMITED .................. APPELLANT VERSUS TROPICANA PRODUCTS, INC ............................ RESPONDENT JUDGMENT 28th July & 6th October2023 MKWIZU J: This is an appeal against the Deputy Registrar of Trade and Service marks granting the respondent's application for registration of the trademark TROPICANA (and device) in TROPICANA PRODUCTS, INC. The Appellant, the owner of the well-known trademark TROPIKA opposed the application on the grounds of similarity, that the words TROPIKA and TROPICANA denote the same thing to a common consumer and therefore create confusion. The appellant's objection was overruled on the ground that the Respondent's trademark "TROPICANA" (word and Device) is distinct and different visually and structurally from the Appellant's well-known mark TROPIKA. Disgruntled, the appellant has filed a memorandum of appeal with five grounds of appeal as follows: 1. That, the Honourable trial Deputy Registrar of Trade and Service Marks erred in law and facts by deciding that when compared as a whole, the Respondent's trademark "TROPICANA" (word and Device) is distinct and different visually and structurally from the Opponent's well-known mark TROPIKA. 2. That, the Honourable trial Deputy Registrar of Trade and Service Marks committed a distinct and material error of evaluation and principle by considering "CANA" the relevant portion of the mark TROPICANA (rather than only the last two letters "NA") as sufficient to distinguish the marks from one another. 3. That, the Honourable trial Deputy Registrar of Trade and Service Marks committed a distinct and material error of evaluation and principle in finding that, the word "TROPIC"/'TROPICAL" are common words in the market in respect of goods falling under class 32 and that offering exclusive rights to the use of the said words to only one person would be denying others the right to use the said words which is generic. 4. That, the Honourable trial Deputy Registrar of Trade and Service marks committed a distinct and material error of evaluation and principle by finding that the picture of the leaf device represented as the title above the letter "I", last element "CANA" (which should respectively be a comparison of "NA' and not 'CANA') and that the colour in the applicant's trademark TROPICANA is enough to remove the likelihood to deceive or confuse. 5. That, the Honourable trial Deputy Registrar of Trade and Service Marks erred both in law and fact by not considering that, the words TROPIKA and TROPICANA denote the same thing to a common consumer and therefore create confusion. The respondent was reported to have been outside the country after the filing of the appeal in this court and her previous agent declined service for lack of instruction. Service was then done through substituted service through DHL to the respondent's last known address but again could not respond to the appeal hence the ex-parte hearing. The appeal was disposed of through written submissions. Submitting on the first grounds Mr. Mkama M. Kalebu, advocate for the appellant was categorical that in trademark, distinctive is the first principle and essence of a brand as provided for under section 16 (1) and (2) of the Trade and Service Marks Act Cap. 326 R.E 2002 where a trademark stands as a badge of origin of the source. To distinguish one trademark from another, Mr Mkama said, the law has set two conditions under section 16 (3) of the Act, (i) inherently capable of distinguishing and (ii)by reason of the use of the trade or service mark or of any other circumstances. To him, the respondent's trademark TROPICANA has no inherent distinctive against the appellant mark TROPIKA because of the presence of the possibility of confusion between the two marks for it is difficult for normal eyes to distinguish between these two symbols both visually and structurally without remaining confused. He cited to the court the decisions in CANON KABUSHIKI KAISHA v. METRO-GOLDWYN- MAYER INC, C-39/97, ECR 1998, I-5507 where it was observed that: "The essential function of the trademark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any confusion, to distinguish the product or service from others with another origin". And on how to compare the marks, the learned counsel referred the court to the passage in Cornish W.R (199), Intellectual Property, Third Edition, London, Sweet & Maxwell, p. 603 quoting Parker J. in Pianotist's Application (1906) 23 R.P.C 774 at 777 where it was stated that: "You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. You must consider all the circumstances, and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks." He contended that since the kind of customers who would likely buy the appellant’s goods are the same customers that are likely to buy the respondent’s goods, then the effect of having the two similar trademarks registered is to cause confusion between the parties’ goods and members of the public. He went further to state that there is no difference between the respondent's mark TROPICANA" (word and Device) against the appellant's well-known mark TROPIKA. The respondent's trademark is a composite trademark and subject to substantial examination in the channel of trade as customers will look more at TROPICANA words which is the source of the similarity rather than the device. He maintained that the respondent's mark will also affect the appellant's mark by looking at factors like the strength of the mark; the proximity of the goods; evidence of actual confusion; the similarity of marketing channels used, and the degree of caution exercised by the typical purchaser. On the second ground, Mr. Mkama faulted the Deputy Registrar of Trade and Service Marks for considering "CANA" the relevant portion of the mark TROPICANA (rather than only the last two letters "NA") as sufficient to distinguish the marks from one another. He said Trademark as part of intellectual property is built on encouraging new ideas and innovation, the main focus being on brand protection that is why under section 2 of the Act, the mark must be a "visible sign" that is capable of graphic reproduction, including a word, name, brand, device, heading, label, ticket, signature letter number, relief, stamp, seal, vignette, emblem or any combination thereof. His main point here is that the respondent had added the elements C and NA in his mark TROPICANA which are incapable of graphical reproduction contending that the element C added in the respondent mark is used in lieu of element K which phonetically sounds the same. The element NA which was considered by the Honorable Deputy Registrar to distinguish the two marks does not add any meaning or alter the general arrangement of mark TROPIKA. It only took unfair advantage of the appellant's mark which is prohibited under sections 31 and 32(1) and (2) of the Act. He on this point relied on the case of PREMIER BRANDS UK LTD. v. TYPHOON EUROPE LTD & ANOR [2000] EWHC 1557 (Ch), stressing that a trader may not take unfair advantage of the trademark of another. On ground three, the leaned advocate submitted that the deputy registers erred in law and fact for findings that "TROPIC'/'TROPICAL" are common words in the market in respect of goods falling under class 32 and that offering exclusive rights to the use of the said words to only one person would be denying others the right to use the said words which is generic. The learned advocate was of the view that since the appellant mark does not fall under the list of prohibited marks as provided in section 19 of the Act, it qualifies as an exclusive protection. The learned advocate admitted that limitation of colour in a trademark may be taken into consideration in deciding on the distinctive character of the trademark, but, he said, under section 17(2) of the Act, another trademark may also be registered without limitation of colour and in these circumstances, it shall be deemed to have been registered for all colours maintaining that since the appellant does not claim any colour, it is deemed to have been exclusive rights for all colours and therefore the respondent's mark is not and cannot be distinguished based on colour. To him, the assessment of conflicting marks must be made in their entirety, or how the marks are perceived by consumers in the marketplace, rather than by analyzing each mark separately. The extent as to whether consumers can or cannot be confused can only be ascertained by considering the entire mark. He invited the court in ground four of the appeal to find the issue of colour, the presence of a leaf above the letter "I" and an additional element of "NA" not sufficient to differentiate the Marks TROPIKA and TROPICANA by consumers. On ground five, the learned counsel submitted that the words TROPIKA and TROPICANA denote the same thing to a common consumer and therefore create confusion for ordinary people therefore the class of persons who are likely to be the consumers of the goods in question must be considered in determining whether there is a likelihood of confusion or not. He contended that the matter in question covers goods under Class 32 of the Nice Classification that include goods like mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. Users of the product within the group are ordinary people and therefore words TROPIKA and TROPICANA denote the same thing to a common consumer and therefore create confusion. He through the decision in Tanzania Breweries Ltd v. Kibo Breweries and Kenya Breweries, Civil Case No. 34 of 1999 (Dar Es Salaam Registry (unreported) invited the court to wear the shoes of a common man, spread the marks before it, and ask itself whether there are resemblances between the two which would make it pick a product which was not intended but the opposite and urged the court to allow the appeal with costs. I have thoroughly examined the appellant's counsel’s written submissions in support of the appeal. It is common knowledge that a trademark is a symbol, word, or word legally registered or established by use as representing a company or product. Section 2 of the Act defines a trade or service mark to mean; any visible sign used or proposed to be used upon, in connection with, or in relation to goods or services to distinguish in the course of trade or business the goods or services of a person from those of another. The registration and protection of a trademark in Tanzania Mainland is regulated by the Trade and Service Marks Act, Cap 324 RE 2002, and its regulations. Section 16 (1) and (2) of the above Act stipulates a qualified trademark for registration purposes. The section reads: “16(1) A trade or service mark shall be registered if it is distinctive (2) For this section a trade or service mark is distinctive if it is capable, in relation to goods or services in respect of which it is registered or proposed to be registered, of distinguishing, goods or services with which its proprietor is or may be connected in the course of trade or business from goods or services in the case of which no such connection subsists, either generally or, where the trade or service mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of registration."( emphasis added) Gleaned from the above section is simply that the trademark for registration must be distinctive if it is capable of being distinguished in identifying a particular product from other trademarks identifying other products by its consumer. It is evident from the records that both the respondent's and appellant's trademarks are all in relation to goods under class 32. The appellant's trademark is TROPIKA used for dairy fruit mix beverages products while the respondent's application was in respect of a trademark TROPICANA for minerals and aerated waters and other non-alcoholic drinks, fruit juice, syrups, and other preparations for making beverages. The appellant's appeal is pegged on the similarity in the overall impression created by the two marks, visually and structurally, the similarity of goods and services involved, and the likelihood of creating actual confusion by consumers in the marketplace. The appellant is insistent that there is no difference between the respondent's mark TROPICANA" (word and Device) against the appellant's well-known mark TROPIKA creating a likelihood of confusion, mistake, and/or deception with the consuming public for it is difficult for normal eyes to distinguish between these two symbols both visually and structurally without remaining confused. The Deputy Registrar of the Trade and Service Mark viewed the two marks as dissimilar. He found that when compared as a whole, the Applicant's trademark "Tropicana" (word and device) is distinct and different visually and structurally from the Opponent's TROPIKA" (word) which is claimed to be a well-known mark. Indeed, the law under section 20 (1) of the Trademarks Act bars the registration of identical or resembling trade or service marks. Thus, the court's duty under the complained circumstances is to see if the two trademarks used simultaneously in the marketplace are likely to confuse and deceive consumers. This position was clearly expressed in Kiwi European Holdings B v V. Sajad Ali Limited [2005] TLR 43 where it was held: “(iii) The burden of satisfying the court that there has been an infringement of a trademark is on the party who alleges the infringement; it is for him to pursue that there is a resemblance between the two marks and that such resemblance is deceptive. (iv)It is the duty of the judge to decide whether the trade mark complained of so resembles the registered mark as to be likely to deceive or cause confusion in the minds of the public. (v)In deciding the question of similarity between two marks, one has to approach it from the point of view of a man of average intelligence and of imperfect recollection, and that an ordinary purchaser is not gifted with immense powers of observation" (Emphasis added) I find it apposite, to begin with the third ground of appeal where the deputy registrar is censured for finding that the words "TROPIC"/'TROPICAL" are common in the market in respect of goods falling under class 32 and that offering exclusive rights to the use of the said words to only one person would be denying others the right to use the said words which is generic. I have examined the records. The deputy registrar's findings were based on the fact that the prefix "TROPIC" is commonly used by companies that manufacture beverages in Tanzania based on the availability of other marks in the Register that have incorporated the said prefix in their marks and that the word TROPICAL, is commonly used worldwide in goods related to mixed soft and hard drinks and therefore the word "tropic" alone, cannot be exclusively owned as a mark by one person for goods related to soft drinks failing under class 32. His decision on this point on pages 14 and 15 goes thus: "I agree with the learned Counsel for the Applicant that the prefix" TROPIC" is commonly used by companies which manufacture beverages in Tanzania based on the availability of other marks in the Register which have incorporated the said prefix in their marks. Additionally, the word TROPICAL is commonly used worldwide in goods related to mixed soft and hard drinks. According to the free dictionary (ww.thefreedisctionary.com) the word "TROPICAL DRINKS" has been defined to mean "any of various mixed alcoholic drinks consisting usually of brandy, whiskey, vodka, or gin combined with fruit juice or other liquors and often served children. It is clear that the word "tropic" alone, cannot be exclusively owned as a mark by one person for goods related to soft drinks failing under class 32 as is the case with the marks under contention in Tanzania several manufactured soft drinks have incorporated the word tropic" in their marks mostly referred for mixed fruit juice. It is not uncommon for consumers of juices to request for purchase of 'tropical juice" when intending to buy mixes fruit drinks. It is my finding therefore that the word "Tropical"is common in the market concerning goods failing under class 32, conferring exclusive rights to the use of the said word to only one person would be denying others the right to use the said word which is generic. (bold is mine) It is for the above reasons that the Deputy Registrar went ahead to look into the other words in the competing trademarks other than "TROPIC". I certainly do not find any reason to fault the deputy registrar's decision on this point. Typically, Generic terms are words or symbols that are used for a range or class of similar things. According to the Blacks Law Dictionary, 8th edition, the phrase Generic name is defined as: - "a term that describes something generally without designating the source or creator of the things. A generic name cannot be protected as a trademark for the things it denotes". It is for that reason I hold that generic terms like Tropical can never receive trademark protection. The deputy registrar was thus, in my view right in his conclusion that the prefix Tropic is not part of the protected mark for doing so would be to give the monopoly of the products falling under Class 32 to the appellant. The appellant’s counsel was of the view that since the appellant mark does not fall under the list of prohibited marks under section 19 of the Act, it deserves exclusive protection. Admittedly, the appellant’s trademark is not one of the prohibited marks in Tanzanian laws, but that alone does not give the appellant exclusive protection to the use of the prefix TROPICAL. The protection if any would only go to the whole trademark TROPIKA and not otherwise. It should be noted here that the deputy Registrar's analysis of the words Tropic/Tropical from the two rival trademarks was just a preliminary step in determining the similarities and differences between the rival trademarks that ended in narrowing the areas of focus. The prefix "Tropic" was only viewed as an important factor in evaluating the requested protection visa vis the pointed-out similarities in a way to assess the customer's reaction towards the conflicting trademarks. As the records would show, on page 16 of his decision, the learned Deputy Register did not end by pronouncing the words Tropic generic terms but he went ahead to determine the similarities in the rival trademarks as required and the words KA in the appellant Trade mark "TROPIKA"and CANA in the respondents trade mark "TROPICANA" were assessed in connection to the generic words "TROPIC" before the final decision was made. I find the 3rd ground a misconception. Next are the complaints laid on grounds 1,2,4 and 5 which are interrelated and therefore determined jointly. It is common knowledge that apart from the trademark itself, in assessing the similarity of the goods or services concerned, the court looks at the general nature of the goods that the trademarks represent, their end users, their method of use, and whether they are in competition with each other or are complementary. I have given thorough scrutiny to the two trademarks in line with the instructive passage cited to me by the appellant counsel from Cornish W.R (199), Intellectual Property, Third Edition, London, (supra), the original proceedings, and the deputy registrar's decisions. It is true as submitted by the appellant counsel that the respondent's trademark is made up of a composite word TROPICANA, the combination of the words Tropic and CANA (words and device). The Appellant's counsel argues that the said combination of the two prefixes in the respondent trademark makes it so similar to the appellant's trademark to the extent of creating confusion suggesting that the said trademark should be examined as a whole. The learned counsel was in a way advising the court to embark on the application of the "Rule of Anti-Dissection" discussed in the case of M/S South India Beverages Pvt Ltd v General Mills Marketing Inc. and Another (No. 961/2013 in CS (OS) 110/2013) that: “This rule mandates that the Courts while dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety as an indivisible whole rather than truncating or dissecting them into its parts and make comparison with the corresponding parts of a rival mark to determine the likelihood of confusion.” (emphasis added) Under the above rule, the composite marks are to be considered in their entirety. A mark is not to be dissected or split up into its parts and have each party compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. The rationale for the rule is said to be the commercial impression of a composite trademark on an ordinary customer which is normally created by the mark as a whole. This means that the likelihood of concussion is to be assessed from the level of the impression formed by the mark to the ordinary customer in the marketplace, not the impression created from a scrupulous assessment as expressed in carefully weighed analysis in legal briefs. Another clarification on how to assess the trademark similarities was expressed by the Indian Court in K.R. Chinna Krishna Chettiar v. Sri.Ambal & Co. & Anr AIR 1970 SC 146 where it was held that the resemblance between the two marks must be considered in relation to the ear as well as the eye. Again, Stiefel Laboratories, Inc & Another vs Ajanta Pharma Ltd, 211(2014) DLT the same Indian Court said: - "... You must take the two words. You must judge them, both by their look & by their sound. You must consider the goods to which they are to be applied. You must consider the nature & kind of customer who would be likely to buy those goods. You must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks. If considering all those circumstances, you conclude that there will be confusion-that is to say, not necessarily that one man will be injured & the other will gain the illicit benefit, but that there will be confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case. "(Emphasis added) I have analysed the two rival trademarks in line with the rules of the comparison above. I agree that the appellant's trademark "TROPIKA" and the respondent's mark "TROPICANA" are different both visually, structurally, and phonetically and contain no resemblance anyhow. The parties' trademarks are differentiated by the letters "KA" in the appellant's trademark "TROPIKA" and "CANA" from the respondent's trademark "TROPICANA". Though it is true as submitted by the appellant's counsel that element C in the respondent's trademark TROPICANA has indeed been used in lieu of element K which phonetically sounds the same, the element ANA added in the respondent's mark TROPICANA creates a very definite transformation of the appellant's mark TROPIKA conveying a visual, physical, and phonetic difference to each other. The evaluation of the appearances, the physical look of the trademarks as used in the Juice boxes from the ordinary consumer's standpoint, and the impression that one may draw from it affirms the Deputy Registrar's findings. The word TROPIKA is drafted in graphic words preceded by the word "Clover" at the top while the respondent's box contains the logo "TROPICANA" styled words preceded by a small leaf with the words Essentials after the complained trademark. Both fonts and designs used are different, neither identical nor confusing to an ordinary observer. The court is thus, strongly convinced that there exists no resemblance between the respondent's Mark TROPICANA, and the appellant's Mark TROPIKA, to confuse the mind of the public, or create any likelihood of deception or confusion to the ordinary users/customers in the marketplace. That said, I hold and find grounds 1,2,4 and 5 of the appellant's appeal without merit. Eventually, this unopposed appeal is dismissed for having no merit with no order as to costs. DATED at DAR ES SALAAM this 6th day of October 2023. E. Y Mkwizu Judge 06/10/2023