Publisher gets away with use of Wegbreek magazine title
In Media 24 Bpk v Ramsay Son & Parker 2006 (5) SA 204 (C) (June 22 2006, reported September 2006), the Cape Provincial Division of the High Court of South Africa has resolved a long-standing dispute between the publishers of two outdoor lifestyle magazines.
South Africa has 11 official languages and this case, together with an earlier case between the same parties, sets out the approach taken by courts in relation to trademarks that have the same meaning in two official languages, but have no phonetic or visual similarity whatsoever.
Getaway is a well-known English language magazine, published by Ramsay Son & Parker, and has been on the South African market for many years. In 2004 Media 24 Bpk brought out a magazine, in Afrikaans, called Wegbreek. This Afrikaans word essentially has the same meaning as 'getaway'.
Media 24 was interdicted at that time from using the name Wegbreek for its magazine on the basis that it infringed the GETAWAY trademark and also constituted passing off. In terms of a subsequent settlement agreement, it then started using the name Weg, which simply means 'away', for its magazine.
In the most recent case between these parties, the tables were turned. Ramsay Son & Parker itself launched a magazine called Wegbreek, which is an Afrikaans version of its well-known Getaway magazine. Media 24 launched an urgent application asking the court to restrain Ramsay, Son & Parker from using the title Wegbreek. Media 24 contended that the name Wegbreek was so similar to its WEG trademark that it would cause confusion among the buying public and constitute passing off.
The High Court held that the standard for proving deception in the context of trademark infringement, is the probability, and not the reasonable possibility, of confusion.
In reaching its decision and finding against Media 24, the court made reference to the fact that, in the settlement negotiations in the previous case, both parties had agreed that the trademark WEG was sufficiently different from the trademark WEGBREEK. This obviously undermined Media 24's argument that the two trademarks were confusingly similar.
Media 24 also argued that, due to its earlier, disputed use of the trademark WEGBREEK, it still had some residual reputation in that mark. The court did not accept this and held that, when it signed the settlement agreement, Media 24 began building a reputation in the trademark WEG, and effectively relinquished any reputation it had in WEGBREEK.
The court concluded that, apart from the common element 'WEG', the two trademarks did not sound the same, and the addition of the word 'breek' to the word 'weg' in the Wegbreek magazine title introduced sufficient phonetic and visual differences.
The court also held that the likely association between GETAWAY and its direct Afrikaans translation, WEGBREEK, reduced the chances of potential buyers being confused between the two magazines and between the trademarks WEGBREEK and WEG.
The court therefore found in favour of Ramsay Son & Parker.
Chris Job, Adams & Adams, Pretoria
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