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Revisiting the similarity between perfume and clothing

Determining the similarity between goods in different classes has become a confused area of South African law recently, with a number of courts handing down conflicting decisions.

The most recent of these is Chantelle v Designer Group (Pty) Ltd where the North Gauteng High Court overturned the decision of the Registrar of Trade Marks who had allowed registration of the trade mark CHANTELLE in class 3, even though the proprietor of the identical mark in class 25 had objected.

The High Court’s decision followed the 1991 Supreme Court of Appeal (SCA) ruling in Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales & Promotions (Pty) Ltd in which the mark FRENCH CONNECTION for clothing was able to prevent the registration of FRENCH CONNECTION for cosmetics. It was held that a likelihood of deception or confusion was present because these goods are often sold in the same stores and it had become common for clothing companies to expand their brands into cosmetics, including brands such as DKNY, Lacoste, Chanel to name a few.

The court in the Chantelle case found that the Registrar had misdirected itself on various key issues, including the fact that it did not consider the notional use that the appellant could make of its mark, as well as the fact that it was the respondent who had the onus to dispel any likelihood of confusion or deception. The court found that this onus had not been discharged, and that the Registrar should not have allowed the mark to proceed to registration.

The court agreed with criticisms made by Webster & Page (academic authorities on South African Trade Mark law) about the oft quoted English case British Sugar plc v James Robertson & Sons Ltd (this case is quoted as authority for how to examine the similarity of goods) saying that the court was wrong to examine the similarity between the goods in total isolation from the similarity between the marks. The likelihood of confusion or deception needs to be considered as a result of the combined effect of the similarity between the marks and the goods. The degree of similarity of each will determine their combined effect. In this case, because the marks were identical, the likelihood of deception or confusion was held to exist even though the goods were only somewhat similar.

For more information, please contact Philippa Dewey.

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