ICollege (Pty) Ltd v Xpertease Skills Development and Mentoring CC and Another

The appellant (iCollege) is a private Further Education and Training College registered with the Department of Higher Education and Training, providing skills-based training at 17 campuses nationwide and online. It is the proprietor of two trade mark registrations in class 41, with the dominant feature being the word 'iCOLLEGE'. The first mark was registered on 27 August 2015 (application 2013/32192) and the second on 24 June 2019 (application 2018/02190) in respect of education and training services. The first respondent (Xpertease) also uses a trade mark with the dominant element being the word 'iCollege' accompanied by 'ONLINE LEARNING', providing e-learning courses and international IT certification preparation. The respondent describes itself as an internet-based business providing professional education, without offering classroom-based tuition or locally accredited qualifications. In 2019, the appellant applied to the Gauteng Division of the High Court for an interdict in terms of sections 34(1)(a) and (c) of the Trade Marks Act 194 of 1993 to restrain the respondent from infringing its trade marks and passing off. The high court dismissed the application with costs. The appellant appealed to the Supreme Court of Appeal with leave.

• Whether the respondent's 'iCollege' mark so nearly resembles the appellant's registered 'iCOLLEGE' trade mark as to be likely to deceive or cause confusion within the meaning of section 34(1)(a) of the Trade Marks Act 194 of 1993
• Whether the requisites for an interdict to restrain trade mark infringement were established
• Whether the disclaimer of the word 'COLLEGE' precluded the appellant from claiming infringement
• Whether differences in the specific nature, ambit and teaching methods of the education services rendered by the parties affected the likelihood of confusion

The appeal was upheld with costs. The high court's order was set aside and replaced with: (1) an interdict restraining the first respondent from infringing the appellant's registered iCOLLEGE trade marks by using the iCOLLEGE mark and/or any confusingly or deceptively similar mark, trading style, name, get up or dress; (2) an order requiring the first respondent within 14 days to instruct the second respondent to transfer ownership of the domain name icollege.co.za to the appellant, failing which the second respondent must transfer it within 14 days thereafter; (3) an enquiry into damages suffered by the appellant; and (4) costs against the first respondent.

Where a registered trade mark and an allegedly infringing mark share an identical dominant word element ('iCOLLEGE') and are used in relation to identical services (education and training in class 41), the marks are so nearly resembling as to be likely to deceive or cause confusion within the meaning of section 34(1)(a) of the Trade Marks Act 194 of 1993, notwithstanding differences in font, capitalization, or additional descriptive words. Similarity on any one level - visual, aural or conceptual - is sufficient to establish likelihood of confusion. The court must apply the notional use test and consider the full range of permissible use for which the mark is registered, rather than comparing only the actual specific services, teaching methods or business models employed by the parties. A disclaimed element forming part of a composite mark may be taken into account when deciding whether the infringing mark as a whole so nearly resembles the registered mark as to be likely to deceive or cause confusion, even though the proprietor cannot claim infringement based solely on use of the disclaimed feature.

The Court noted that there is no reason to suggest a more lenient test for service marks as opposed to trade marks for goods, rejecting any suggestion that services require different treatment because they are ephemeral or not offered side by side. The Court observed that the test approved in Century City Apartments applies equally to both goods and services. The Court also remarked that where marks are very similar (even if not identical in the sense of being 'the same in all respects'), the likelihood that the court will find the marks likely to cause confusion or deception is great. The Court noted that section 34(1)(a) does not require the appellant to show that the nature and scope of the respondent's services or training methods are identical to the services covered by the trade mark registration.

This case reinforces the approach to trade mark infringement under section 34(1)(a) of the Trade Marks Act 194 of 1993 in South African law. It emphasizes that: (1) courts must consider marks as wholes rather than focusing on individual elements in isolation; (2) similarity on any one level (visual, aural or conceptual) is sufficient to establish likelihood of confusion; (3) the dominant or striking feature of a mark is what makes an impact on the consumer's mind; (4) the notional use test applies - courts must consider the full range of permissible use for which the mark is registered, not just actual use; (5) where services are identical or very similar, a lesser degree of resemblance is required to establish likelihood of confusion; (6) differences in specific business methods or teaching approaches are irrelevant to the infringement analysis; and (7) disclaimed elements can still be considered as part of the composite mark when assessing likelihood of confusion. The case provides important guidance on how to apply the principles from Plascon-Evans and Century City Apartments in the context of service marks for education and training services.