In the recent Gauteng case of TPN Group (Pty) Ltd v EBay Inc (16 March 2015) Judge Louw held that there was no likelihood of confusion between the marks EBay and Rentbay for the same or similar services in classes 35 and 36. It’s hard to grumble with this finding, the opposition really was a bit of a long shot!

The judge relied heavily on the famous SCA judgment of Bata Ltd v Face Fashion CC and Another 2001 (1) SA 844 (SCA), where the court rejected the claim that there was a likelihood of confusion between the clothing marks Power and Power House. In that case the court spoke of the fact that an appreciation of similarity must be based on ‘their distinctive and dominant components’. It said that if it were to find a likelihood of confusion in this case, ‘it would result in the appellant having a virtual monopoly to use the word “power” on clothing,’ despite the fact that there were other registrations incorporating the word. It made the point that ‘power’ is ‘an ordinary word in everyday use, as distinct from an invented or made-up word, and it cannot follow that confusion would probably arise if it is used in combination with another word.’

Judge Louw applied this reasoning to the EBay case. He said this: ‘If full effect was given to this (EBay’s) argument, it would, as in the case of “power” in Bata, result in eBay having a virtual monopoly to use the word “bay” in respect of the services for which it is registered and services similar thereto. As in the case of “power” the word “ bay” is an ordinary word and not an invented word and it would, similarly, not follow that confusion would arise if it is used in combination with another word. The evidence of TPN shows that there are some forty trade mark registrations in classes 35 and 36 in which the word “bay” is used as part of the mark… Bearing in mind that each of the marks has two equally significant features, the overall impression created by the marks is that they do not resemble each other closely, either visually, aurally or conceptually.’

More proof – if proof really be needed – that weak trade marks result in weak rights. Get creative brand owners!

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