In Open Horizon Ltd v Carnilinx (Pty) Ltd, Gauteng High Court [2020] ZAGPPHC 674 the Applicant sought to interdict and restrain the Respondent from infringing its rights in the trade mark PACIFIC (which had been in use since 2007) by using (and seeking to register) the mark ATLANTIC and other combination marks containing the word ATLANTIC.
The Respondent, Carnilinx, is a former licensee and now a competitor of the Applicant. The Respondent’s licence was cancelled as the Respondent was selling counterfeit PACIFIC BLUE cigarettes, manufactured without authority.
Trade marks can be visually, conceptually or phonetically similar. The marks in question are clearly not visually similar. The Applicant did, however, argue that the marks are conceptually similar, as both refer to oceans. The Applicant also argued that the marks are phonetically confusingly similar as they both end with IC and were even more confusingly similar when the marks were used with the generic description: PACIFIC Cigarettes or ATLANTIC Cigarettes. The crux of the Applicant’s case was conceptual similarity.
The Applicant argued that the similarity was compounded by the use of similar brand cues (a wave device and the sub-brand names BREEZE, BLUE and WAVE). The packaging and get-up used by the Respondent were also argued to imitate that of the Applicant’s products.
One of the defences raised by the Respondent was that there are other ocean themed trade marks registered in relation to cigarettes and tobacco products in class 34, some of which were registered prior to the Applicant’s trade marks in the same class of interest. Examples are: ARKTIC, WAVE, GULF, CASPIA, OCEAN MIST, WINSTON ARCTIC COOL and BAYSIDE.
The concept of the ocean as a name has been used in relation to cigarettes since as far back as 1936. In addition, marks registered since those of the Applicant were not opposed by the Applicant. The Respondent argued that the failure to oppose the prior registered marks was a concession that the Applicant was not entitled to a monopoly of the concept of an ocean.
The judge considered many of the important precedents for trade mark infringement, including that the allegedly infringing mark needs to create an impression of a ‘material link’ between its goods and those of the registered trade mark, that the likelihood of confusion must be appreciated globally and that the average consumer will perceive the mark as a whole and not analyse it in detail. And importantly, the registered trade marks must not create monopolies in concepts or ideas.
The court held that the fact that both marks end in IC was not enough to say that there was conceptual similarity between the marks. There are many marks that end in IC. (The honourable court might have meant to refer to a phonetic similarity here.)
The court found that the applicant could not monopolise a thought or concept, which in this case was the ocean. Registered trade marks do not create a monopoly of ideas. The two oceans were held to be conceptually vastly different – globally, geographically and factually.
Unlawful competition is often something that is added as a backup in matters of infringement and/or passing off. Only two pages of the judgment are dedicated to this aspect of the case. Here, the court paused to consider that every person is entitled to freely carry on his trade or business in competition with rivals, while remaining in lawful bounds.
The Applicant argued that the “only plausible explanation is that the Respondent deliberately adopted its confusingly similar Atlantic marks and get-ups in order to imitate the Applicant’s successful Pacific range of products, thereby obtaining a springboard advantage”. But, after examining the authorities, the court dismissed the claim of unlawful competition, holding that there was no need to determine the issue in the circumstances.
Clea Rawlins
