Marks sharing same ‘dex’ suffix held to be confusingly similar

South Africa
In ABE Construction Chemicals (Pty) Limited v Ardex Gesellschaft Mit Beschrankter Haftung (April 1 2011), the South African Tribunal of the Registrar of Trademarks has refused an application for the registration of the trademark ABEDEX consequent to opposition by German company Ardex Gesellschaft Mit Beschrankter Haftung, proprietor of the trademark ARDEX.
The applicant for registration, South African company ABE Construction Chemicals (Pty) Ltd, had applied for registration of its ABEDEX mark in Class 19 of the Nice Classification, in respect of, among other things, building material, coverings and coatings for building and roofs, and roofing materials and membranes. The applicant alleged that:
  • it had, since 1997, been using the ABEDEX mark in relation to its waterproofing products; and
  • this mark was one of several 'abe'-prefixed trademarks used by the applicant for its range of products.
The application was opposed on the grounds that it offended against the provisions of Sections 10(12) and 10(14) of the South African Trademarks Act (194/1993). The opponent relied on its trademark ARDEX, registered in Class 19 in respect of building materials, natural and artificial stone, cement, lime mortar, plaster and gravel.
In terms of Section 10(12), a mark is unregistrable if it is inherently deceptive, or if the use thereof would be:

  • likely to deceive or cause confusion;
  • contrary to law;
  • contra bonos mores; or
  • likely to give offence to any class of persons. 
Section 10(14) prohibits registration of a mark which is identical to a registered trademark belonging to a different proprietor, or so similar thereto that its use in relation to the same or similar goods for which the trademark is registered would be likely to deceive or cause confusion.
The opponent alleged that, having regard to the similarities between the respective marks, there was a reasonable probability of confusion or deception arising, should the applicant’s mark proceed to registration. The opponent argued that, aside from the visual similarities between the marks, confusion due to the phonetic similarities between the marks was heightened by the unique circumstances of South African society, with its many languages, dialects and accents.
The opponent asserted that the products sold under the respective marks were of the genus building materials. In any event, the opponent argued, the fact that the applicant had used its mark in relation to water-proofing materials only was irrelevant, as the test to be applied in terms of Section 10(12) required the tribunal to postulate normal and fair use by the applicant in respect of any of the goods covered by the application. Thus, the question of likelihood of confusion or deception had to be considered in the context of the applicant being entitled to use the ABEDEX mark in respect of all good covered by the application, and not limited to water-proofing materials.
The opponent asserted that the same test applied in relation to the Section 10(14) enquiry, but that, in addition to this, the tribunal was required to postulate notional use by the opponent of the ARDEX mark in respect of some or all of the goods covered by the registration. In the premises, the comparison had to be made in the context of the opponent being notionally entitled to use its mark in respect of water-proofing materials.
On this basis, the opponent reasoned that the respective marks were not distinguishable by virtue of the goods they covered, adding that, in any event, water-proofing materials were building materials and, as such, were similar to the goods in respect of which the applicant used its ABEDEX mark. 
Finally, the opponent alleged that the goods sold under the respective marks were not used exclusively by experts in the relevant industries, but by ordinary purchasers. Consequently, the question of likelihood of confusion or deception had to be considered from the perspective of the ordinary person, and not an expert. Against this background, the opponent concluded that the respective marks were confusingly similar, viewed from the perspective of the ordinary purchaser, with average eyesight and imperfect recollection.
In response, the applicant denied that the respective marks were confusingly similar, pointing out that the only similarity between the marks was the shared suffix 'dex', a suffix found in several marks in Class 19 of the register. The applicant asserted that this precluded the opponent from relying on this shared syllable, adding that it was, in any event, not appropriate to dissect marks in an attempt to find common elements in support of an allegation of confusing similarity. Furthermore, the applicant argued that, having regard to the trite principle that prefixes in trademarks were dominant and enjoyed greater prominence than suffixes, the mere presence of the shared suffix 'dex' was insufficient to give rise to a finding of confusing similarity. In support of this contention, the applicant referred to various cases in which it was held that the marks concerned were not confusingly similar, notwithstanding that they shared a common suffix, such as 'morex' and 'rex'.
In regard to the opponent’s allegations concerning the goods themselves, the applicant countered that the goods were not the same or even similar - rather, the goods were specialised products with specialised application, and were purchased by specialised building contractors as opposed to the ordinary consumer. 
In the event that the tribunal found in favour of the opponent, precluding registration of the applicant’s mark on the basis of Section 10(14) of the act, the applicant submitted that the application should proceed on the basis of Section 14(1) of the act. Section 14(1) deals with honest concurrent use, and provides that, in the case of such use, the registrar may, on application, register a trademark the registraton of which would otherwise offend against Section 10(14) of the act, among others.
In support of its honest concurrent use application, the applicant alleged that it had been using its ABEDEX mark in South Africa for 13 years, and that such use had occurred side-by-side with the opponent’s use of its ARDEX mark. The applicant further submitted that the fact that this side-by-side use had occurred for such an extensive period of time, without any known incidences of actual confusion, supported the notion that the marks were not confusingly similar. 
The opponent argued, in response, that the evidence submitted in support of the application did not prove use of the ABEDEX mark prior to 2001, when the application for registration was filed. Accordingly, there was no legal basis on which to find that the applicant had honestly used its ABEDEX mark, and that such use had been concurrent to the opponent’s use of its ARDEX mark, prior to 2001.
Having considered the arguments of both parties, the tribunal noted that, in determining confusing similarity, it should compare the respective marks in the way that members of the purchasing public might do - without the time to closely scrutinise similarities and dissimilarities between the marks. Without further discussion of this issue, the tribunal concluded that the respective marks were phonetically and conceptually similar, and that confusion or deception was likely.
Moving on to the honest concurrent use application, the tribunal determined that the applicant had failed to comply with the provisions of Section 14(1) of the act, read with the relevant regulations, which required that a statement of case or affidavit be lodged in support of the application. The tribunal held that the allegations as to the applicant’s concurrent use of the ABEDEX mark, and the reputation allegedly subsisting therein as a result of such use, were unsubstantiated by evidence. 
Consequently, the opposition was upheld and the honest concurrent use application dismissed. 
Lauren Frizelle, Spoor & Fisher, Pretoria

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