South Africa is bumbling along with its own unique approach to the "likelihood of confusion" test in trademark. It's IP mother ship in Europe looks on, curiously perhaps.

1. NOT FOLLOWING EUROPEAN
TRADE MARK LAW
IGNORANCE OR ARROGANCE?
Darren Olivier | Partner
Maureen Makoko | Associate

2. 2A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W

3. 3
UK TRADE MARKS ACT
Section 5 – Relative grounds for refusal of registration
(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for
which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is
protected.
(2) A trade mark shall not be registered if because –
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those
for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or
similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on
the part of the public, which includes the likelihood of association with the earlier trade mark.
Section 10 – Infringement of registered trade has very similar wording
A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W

4. 4
SIMILAR PROVISIONS CAN BE FOUND IN:
Article 8 of the European Union Trade Marks
Regulations; and
Section 10 and Section 34 of the South African
Trade Marks Act
A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W

5. 5
1. COMPARISON OF MARKS
 Phonetic, Visual, Conceptual
 What is the level of similarity?
2. COMPARISON OF GOODS
 Respective uses of the goods and services
 Respective users of the goods and services
 The physical nature of the goods and services
 The respective trade channels which the goods and services reach the
market
 If the goods and services can be found on the same or different
shelves
 The extent to which the goods or services are competitive
 What is the level of similarity?
HOW THE TEST IS APPLIED
A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W

6. 6
4. STRENGTH OF THE EARLIER MARK
 Analysis of the strength of the earlier mark (inherently and
because of its reputation)
5. NATURE OF THE CONSUMER
 Consider this in detail including the nature of the purchasing
decision
6. GLOBAL ASSESSMENT
 Global appreciation test (1-5 which are assessed
systematically, are then all wrapped up)
A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W

7. 7
CLAIRE HARRISON v MS ASHLEY NEMES (UK CASE)
The decision from page 9 clearly identifies the points to be considered on page 11
and then goes through all the points to determine whether there is likelihood of
confusion. The Court then reiterates how they will determine the likelihood of
confusion in paragraph 28.
CASE LAW ANALYSIS
A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W

8. 8
KABUSHIKI KAISHA YAKULT HONSHA v GUANGDONG SUN RISE
INDUSTRIAL CO LTD (EU CASE)
• Marks are identical YAKULT
• Goods are dissimilar therefore no likelihood of confusion
• Earlier trade mark is a strong mark (becomes irrelevant)
THE COURT STATED:
“Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) of the
EUTMR is not fulfilled, and the opposition must be rejected.
The finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of
distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive
character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the
outcome reached.”
A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W

9. RSA APPROACH
9A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W
34(1) The rights acquired by registration of a trade mark shall be infringed by –
(a) the unauthorised use in the course of trade in relation to goods or services in respect of
which the trade mark is registered, of an identical mark or of a mark so nearly resembling it
as to be likely to deceive or cause confusion;
(b) the unauthorised use of a mark which is identical or similar to the trade mark
registered, in the course of trade in relation to goods or services which are so similar to the
goods or services in respect of which the trade mark is registered, that in such use there
exists the likelihood of deception or confusion.’

10. RSA APPROACH
9A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W
• 10 cases located using Saflii involving trade mark legislation
• Of those only 4 really deal with the likelihood of confusion test
• The Urban case (para 14 and 34)
• Twist v Pepsi Twist (para 25, 26 & Medion reference)
• E-Travel v Amadeus I.T Group (the entire judgment)
• Big Boy Scooters (para 37, 42, 43)

11. COMMON MISTAKES
9A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W
• Conflation of the elements under the test (Pepsi)
• Failure to analyse each element of the test (all of the cases)
• Inaccurate use of wording often leading to confusion as to meaning (Urban, Pepsi)
• No analysis of the strength of the earlier trade mark (all of the cases)
• Limited references to European decisions on the exact same point (Pepsi)
• Misuse of the phrase “confusingly similar” often indicating conflation
• Company Name objections: S11

12. ADVANTAGES OF LOOKING NORTH
9A D A M S & A D A M S N O T F O L L O W I N G E U R O P E A N T R A D E M A R K L A W
• Systematic approach that reduces the risk of mistakes or oversights
• Makes constructing arguments and submissions more simple
• Vast database of decisions that are easy to search
• Easier to guide the judge or adjudicator to one’s train of thought
• Easier to teach others
• Caters for South Africa’s diversity

13. “Train yourself to let go of the
things you fear to lose.”
George Lucas
* Yoda credit: Disney.com
*Yakult credit: YalkultEurope.com