Last time I discussed Discovery v Sanlam, the case where the court held that Discovery’s registration for Escalator Funds had not been infringed by Sanlam’s use of the mark Sanlam Escalating Fund, because the presence of the well-known house mark Sanlam meant that there was little likelihood of confusion.

Two recent SA High Court decisions (both Gauteng division) reflect a worrying lack of consistency in approach. In the first case, Wellness Warehouse, a retailer of health products, applied to register in class 35 (retail services) a mark comprising the word livewell and a device consisting of three interlocking ovals above the letter ‘e’ of ‘well’. General Nutrition Corporation opposed this application on the basis of its registration for the mark GNC Live Well in class 35 for retail services. The opposition failed because the judge felt that there was no likelihood of confusion. This finding was based on the fact that the dominant and memorable feature of the one mark was GNC, whereas in the case of the other it was the interlocking ovals device. The fact that the expression ‘live well’ has very little distinctiveness was obviously a factor. As was the fact that, in the words of the judge, consumers for health products ‘generally come from the better educated portions of the public… these will be discerning customers who are careful about the products… and less likely to be deceived or confused as to the origin.’

Fair enough! But a few months later another class 35 (retail services) trade mark application filed by Wellness Warehouse – this one being for eatwell and the same interlocking ovals device– was opposed by Woolworths. This opposition was based on registrations for a mark comprising the words ‘eat well’, the name Woolworths, the Woolworths ‘Double W’ device, and a flower device. But on this occasion the court upheld the opposition, saying that there was a likelihood of confusion. This finding was based on the fact that consumers would focus on the feature ‘eat well’ and disregard features like the name Woolworths and the Double W device. And the judge rejected the notion that the purchasers of health products are particularly discerning. Despite the fact that the judgement in the GNC case was brought to her notice.

Inconsistencies like these don’t reflect well on SA trade mark law. They also don’t make life easier for trade mark owners. But what is clear is that companies should endeavour to choose trade marks that are inherently distinctive, rather than rely on distinctiveness that may come with time and usage, or on the fact that the weak mark will be used together with a distinctive house mark.

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