South Africa: a trade mark infringement
One of the features of IP law in South Africa is that a considerable number of cases make their way to the Supreme Court of Appeal. A recent lower court decision by an acting judge suggests why this might be.
In South Africa trade marks are regulated by the Trade Marks Act 194 of 1993. In the case of Accounting Made Easy CC v School Accounting Made Easy (Pty) Ltd, Gauteng Division, 25 June 2019, the main issue was this: had a registration for the trade mark Accounting Made Easy in class 41 for accounting tuition services been infringed by the use of the trade mark School Accounting Made Easy for the same services. A further issue was whether the registration for Accounting Made Easy should be cancelled on the grounds that it was generic and descriptive.
The judge started off by citing a number of well-known South African and European decisions dealing with the likelihood of confusion. These authorities tell us that:
- The owner of the registration must establish that a substantial number of people will probably be confused as to the origin of the goods or the existence or non-existence of a connection in the course of trade;
- The court cannot simply consider marks side-by-side, it must also consider them as they might be seen in the marketplace;
- When it comes to comparing marks the court must consider sound, appearance and meaning;
- The court must consider the dominant features and general impressions of the marks;
- There must be a global appreciation of the marks.
- The court needs to consider the average customer;
- The court needs to consider that the ordinary purchaser has imperfect recollection.
The judge accepted that the parties operate in the same sphere: ‘Both the applicant and the respondent offer lessons in accounting to various institutions of learning and offer as well learning materials in different ways.’
The judge found that the term ‘Made Easy’ is common and non-distinctive in the field of tuition services, and therefore not associated solely with the mark Accounting Made Easy. But then the judge went on to hold that both Accounting Made Easy and School Accounting Made Easy are ‘unique’ marks that ‘can be distinguished from other similar marks.’ So there was no possibility of confusion between the trade marks and therefore no infringement.
As for the counterclaim for cancellation of the registration, this also failed. The judge said this: ‘Having found that the applicant’s trade mark can be distinguished from other trade marks it follows that the counter application must fail.’
Not an easy judgment to follow!