ALBEX court clarifies scope of anti-dilution provision

In Albion Chemical Company (Pty) Ltd v FAM Products CC, the Cape Town High Court has cleared up any uncertainty and established the scope of protection afforded by Section 34(1)(c) of the South African Trademarks Act against dilution of a well-known mark.

Albion Chemical Company (Pty) Ltd is the owner of the well-known ALBEX mark for household bleach in South Africa. Albion has owned a registration for ALBEX, which is particularly popular among lower-income consumers, since 1956. In September 2003 Albion became aware that a new bleach, sold under the mark ALL BLAX, had been introduced on to the market by FAM Products CC. ALL BLAX was sold in packaging and with a get-up so similar to that of ALBEX that Albion filed an application in the Cape Town High Court for an interim injunction against FAM.

Albion claimed that:

• ALL BLAX's packaging and get-up amounted to passing-off;
  
  
• ALL BLAX was confusingly similar to ALBEX pursuant to Section 34(1)(a) of the Trademarks Act; and
  
  
• ALL BLAX diluted ALBEX under Section 34(1)(c) of the Trademarks Act.

FAM argued that:

• the products' get-ups were sufficiently dissimilar to avoid any likelihood of confusion;
  
  
• the marks ALBEX and ALL BLAX were not confusingly or deceptively similar; and
  
  
• the anti-dilution provision of the Trademarks Act could not be used by the proprietor of a well-known registered trademark where (i) use of the alleged infringing mark is for goods identical to those for which the well-known mark is registered, and (ii) the plaintiff's infringement claim fails because of a lack of confusion or deception.

The Cape Town High Court found in favour of Albion on all grounds. It reaffirmed that (i) confusing similarity may be found based on a similarity in respect of the sense, sound or appearance of the marks, and (ii) the intention of the defendant to deceive or confuse can play a role in determining whether the marks are confusingly or deceptively similar.

On the dilution issue, the ALBEX court held, in contrast to the obiter dictum in Triomed (Pty) Ltd v Beecham Group Plc (2001(2) SA 522(TPD)), that Section 34(1)(a) applies to all registered trademarks, whereas Section 34(1)(c) gives additional protection to well-known trademarks "against the use of a competing mark which would be likely to take unfair advantage of or be detrimental to the distinctive character or the repute of the registered trademark notwithstanding the absence of confusion or deception".

The court considered the clear wording of Section 34(1)(c) and ruled that (i) the section cannot be interpreted as applying only to use on goods other than those for which the trademark is registered, and (ii) the owner of a well-known mark may obtain relief under both Sections 34(1)(a) (or 34(1)(b)) and 34(1)(c) where the facts support its claim. Where the owner of a well-known mark can only prove similarity, and not confusing or deceptive similarity, between the marks, it may still succeed pursuant to Section 34(1)(c), even where the goods or services on which the infringing mark is used are identical (or similar) to those for which the well-known trademark is registered.

Suzaan Laing, Adams & Adams, Cape Town