Similarity assessment must consider not only classes, but also nature of goods

South Africa
In A.B.E. Construction Chemicals Limited v DEN Braven SA (Proprietary) Limited (November 18 2010), the Tribunal of the Registrar of Trademarks has handed down judgment in an opposition against the registration of a trademark by Den Braven SA (Proprietary) Limited. The case underlines the misunderstandings and possible dangers associated with confusing similarity between trademarks.
A.B.E. Construction Chemicals Limited is the proprietor of the following trademark registrations:
  • SUPER LAYCRYL in Class 2 of the Nice Classification in respect of “paints, varnishes, lacquers; primers; thinners; coatings; preservatives against rust and against deterioration of wood; anti-corrosives; anti-abrasives; colorants; mordants; raw natural resins; epoxy resins metals in foil and powder form for painters; decorators, printers and artists”, and Class 17 in respect of “rubber, gutta-percha; gum; asbestos; mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packaging; stopping; sealing; covering and insulating materials; sealants; epoxy resins; flexible pipes; not of metal (Registrations 1995/15643-4); and
  • SUPER LAYCRYL in Class 19 in respect of “building materials (non-metallic); non-metallic rigid pipes for building; asphalt; pitch and bitumen; roofing materials and membranes; non-metallic transportable buildings; monuments; not of metal; parts; fittings; accessories and components therefor” (Registration 1994/03041).
In 2004 Den Braven SA (Proprietary) Limited filed an application for registration of the mark SUPA-ACRYL in Class 1 in respect of “sealants”, more specifically “silicone and acrylic sealants, respectively”. At the examination stage the application was accepted by the examiner and was placed in line for advertisement. The application was subsequently opposed by A.B.E Construction based on the provisions of Sections 10(12) and 10(14) of the Trademarks Act (194/1993).
The sections that A.B.E. Construction relied upon in respect of the opposition provide as follows:
"The following trademarks shall not be registered as trademarks or, if registered, shall, subject to the provisions of Sections 3 and 70, be liable to be removed from the register:
(12) a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bono mores, or be likely to give offence to any class of persons;
(14) subject to the provisions of Section 14, a mark which is identical to a registered trademark belonging to a different proprietor, or so similar thereto that the use in relation to goods or services in respect of which it is sought to be registered and which are the same as, or similar to, the goods or services in respect of such trademark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trademark consents to the registration."
A.B.E. Construction averred that:

  • Den Braven’s SUPA-ACRYL mark was confusingly similar to its registered SUPER LAYCRYL marks; and
  • the use and registration in relation to the goods for which registration was sought would be likely to lead to deception and/or confusion. 
A.B.E. Construction also relied on the fact that its earlier registrations had acquired a reputation and, in support thereof, submitted that:
  • it started operating business as early as 1931 as a supplier of bitumen to municipalities;
  • it was a major supplier of different types of appliances and materials to hardware stores in and around Southern Africa; and
  • the mark SUPER LAYCRYL had been in use since early 1988.
Den Braven countered that there was no similarity or likelihood of confusion that would arise in the market place in relation to the respective parties’ marks and products. Den Braven also submitted that the registrar, in examining the application for SUPA-ACRYL, allowed the mark to proceed to registration in the normal course and was not confused or deceived thereby.
Den Braven further argued that the word 'supa' in its mark is purely laudatory, while 'Laycryl' was an invented word intended to incorporate most of the letters used in the word 'acrylic', which alluded to the fact that the product is applied placed flat to surfaces with a paintbrush. However, the tribunal dismissed this submission by Den Braven.  
The issue to be determined by the tribunal was whether the mark SUPA-ACRYL was deceptively or confusingly similar to the mark SUPER LAYCRYL. Den Braven bore the onus of proving that there was no likelihood of deception and/or confusion between its proposed mark SUPA-ACRYL and the registrations for SUPER LAYCRYL.
The test of confusing similarity applied by the tribunal must necessarily vary, to some extent, in accordance with the nature of the goods or services. When comparing the marks side by side, one has to determine whether the marks are conceptually, phonetically and visually similar. A.B.E. Construction’s counsel argued that, in determining whether goods are identical or similar, one should take into consideration not only the classes in which such goods are registered, but also the nature of the goods as described in the specifications. A.B.E. Construction stated that the tribunal should have regard to the fact that trademark 1995/15644 SUPER LAYCRYL was registered for a specification of goods that included the wording “sealing materials and sealants”, and that Den Braven sought to register its SUPER-ACRYL mark in relation to “sealants (silicone and acrylic sealants)”.
Den Braven denied that the goods were similar in nature and based its argument on the grounds that Den Braven’s product was used as a sealant between cracks or surfaces so as to accommodate movement and reduce further cracking. Den Braven further argued that A.B.E. Construction’s product was a liquid, while their product was a concentrated paste. A.B.E. Construction argued that sealants were ordinary, non-specialist builders-products which were easily and readily available in any hardware store, including self-service stores to which the ordinary public had ready and easy access, and therefore it is open to the general public to purchase sealants.
The tribunal had thus to decide whether the goods covered by SUPA-ACRYL and SUPER LAYCRYL were of the same description and sold over the same counter. The tribunal found that Den Braven's goods were the same, or similar, to those of A.B.E. Construction and that sealants are products that are easily accessible and sold in any hardware store to the general public.
Den Braven also argued that its trademark application was filed in a different class to that of A.B.E. Construction’s registrations. Therefore, it narrowed the scope of possible deception and/or confusion in the market place. The tribunal dismissed this argument and suggested that Den Braven filed in the wrong class. When considering the Nice Classification, sealants appear not to fall in Class 1. The tribunal further ruled that, even comparing marks in different classes, the prevailing issue was whether the goods covered by the respective marks are goods of the same description that are sold over the same counter.
When applying the test of similarity as to sound, sense and appearance, it was clear that there would be a likelihood of deception and/or confusion insofar as appearance and sound of the two marks were concerned. The tribunal found that:
  • Den Braven's goods were the same as, or similar to, those of A.B.E. Construction’s; and
  • sealants are easily accessible products which are sold in any hardware store to the general public.
The tribunal found that, even though the goods are covered by different classes, they are similar goods because that are easily and readily accessible over the same counter.
Den Braven failed to successfully discharge the onus that there would be no likelihood of deception and/or confusion between the two marks and, therefore, registration of Den Braven’s mark offended the provisions of Sections 10(12) and 10(14) of the act. 
Registration of SUPA-ACRYL in Class 1 was thus refused.
Odette Eybers, under supervision of Faan Wolvaardt, Spoor and Fisher Attorneys, Pretoria

Spoor and Fisher Attorneys represented A.B.E. Construction in this case.

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