Bata Limited v Face Fashions CC

Bata Limited, a Canadian company, was the proprietor of six registered trade marks in class 25 under the Trade Marks Act 62 of 1963, including marks consisting of the word "Power" and "Power Points" registered for footwear and clothing. Futura Footwear Limited was licensed to use these marks. The first respondent (Face Fashions CC) and Power House CC used the trade marks "Power House" or "Powerhouse" on clothing since 1987, usually accompanied by a distinctive dog device. On 3 July 1997, the first respondent became the registered proprietor of the dog device. The second respondent was a member of both the first respondent and Power House CC. Bata sought an interdict restraining the respondents from making or selling clothing bearing the marks "Power" or "Power House" or "Powerhouse", alleging trade mark infringement and passing off. The matter was heard by Meskin J who reserved judgment but was killed in a motor vehicle accident before delivering judgment. The parties agreed to be bound by his draft judgment, which was handed down by Broome DJP dismissing the application. Bata appealed with leave granted by Galgut J.

• Whether the respondents infringed the appellant's registered trade marks under section 34(1)(a) of the Trade Marks Act 1993 by using a mark so nearly resembling the registered marks as to be likely to deceive or cause confusion
• Whether the respondents infringed the appellant's registered trade marks under section 34(1)(c) of the Trade Marks Act 1993 by using a similar mark that would take unfair advantage of or be detrimental to the distinctive character or repute of the registered marks
• The proper interpretation of 'similar' in the context of section 34(1)(c) of the Trade Marks Act 1993
• The requirements for establishing infringement under section 34(1)(c) of the Trade Marks Act 1993

The appeal was dismissed with costs.

1. For purposes of section 34(1)(a) of the Trade Marks Act 1993, when assessing whether marks resemble each other so closely as to cause deception or confusion, the marks must be compared as a whole and consideration given to their dominant features and overall impression, viewed from the perspective of the average customer in the marketplace. 2. Common descriptive words in everyday use, when incorporated into composite trade marks with other significant words, do not necessarily create a likelihood of confusion or deception even if the common element appears in both marks. 3. For purposes of section 34(1)(c) of the Trade Marks Act 1993, the word "similar" should be interpreted to mean "having a marked resemblance or likeness" and not given too wide an interpretation so as to avoid creating an unacceptable monopoly and unduly stultifying freedom of trade. A slight or superficial resemblance is insufficient to constitute similarity under this section. 4. To establish infringement under section 34(1)(c), a plaintiff must provide evidence and particulars demonstrating how the use of the allegedly infringing mark would be likely to take unfair advantage of or be detrimental to the distinctive character or repute of the registered marks; mere repetition of the statutory language without supporting particulars is insufficient.

The Court noted that although the Standard Bank case was decided under the Trade Marks Act of 1963, which made no express reference to an identical mark, this Court held in Berman Brothers that the reference to "so nearly resembling" in the 1963 Act impliedly included the use of an identical mark. The Court also observed that there are numerous trade mark registrations in South Africa in respect of clothing which incorporate or include the word "Power", supporting the finding that it is an ordinary word in everyday use. The Court expressed inclination (using the phrase "I am inclined to hold") regarding the interpretation of "similar" in section 34(1)(c), suggesting some reservation about the definitiveness of this interpretation while ultimately adopting it for the purposes of the case. The Court noted that section 34(1)(c) introduces a new concept into South African law regarding protection against dilution of trade marks, providing context for the cautious approach to interpretation.

This case is significant for establishing important principles regarding trade mark infringement under the Trade Marks Act 1993 in South African law. It clarified the interpretation of section 34(1)(c), which was introduced for the first time in 1993 to provide protection against dilution of registered trade marks. The judgment provides guidance on how to assess similarity of marks for purposes of section 34(1)(c), holding that "similar" requires a "marked resemblance or likeness" rather than mere slight or superficial resemblance. This prevents overly broad interpretations that would create unacceptable monopolies and restrict freedom of trade. The case also confirms the application of the Plascon-Evans principles for assessing likelihood of confusion under section 34(1)(a), emphasizing that marks must be compared as a whole and from the perspective of the average customer. It demonstrates that common descriptive words like "Power" used in everyday language cannot be monopolized when used in combination with other words that sufficiently distinguish the marks.