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CLOTHING AND COSMETICS: SIMILAR GOODS?

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The recent Gauteng High Court case of Chantelle v Designer Group (Pty) Ltd dealt with the tricky similar goods issue. In this case the mark was identical – one company had registered Chantelle for ladies undergarments (class 25), the other wanted to register Chantelle for cosmetics (class 3). With identical marks, the only issue was whether the goods were so similar that there was a likelihood of confusion.

Yes said the judge. But he probably had to, because the SCA made such a finding back in 1991 in the famous case of Danco Clothing (Pty) Ltd v Nu-Care Marketing. There the court held that a registration for French Connection for clothing was enough to stop registration of French Connection for cosmetics. The court’s finding there was based on the fact it was bound to consider notional use of the mark on both clothing and cosmetics, and that such notional use encompassed products being sold in the same stores and in close proximity. It also recognised the practice of brand extension.

The judge in the Chantelle case followed this reasoning: ‘It is likely that the average observant consumer of the appellant’s goods, stumbling upon the respondent’s cosmetics bearing the identical mark, notionally in the same shop and notionally a few counters away, would be confused and deceived into believing…that the cosmetics of the respondent originate from the same source.’

The judge also considered the old British Sugar case, which says that you must consider the following factors when determining similarity: the uses of the goods; the users of the goods; the physical nature of the goods; the trade channels; whether they’re found on same shelves; whether they’re competitive.

Clothing and cosmetics are very different in nature, so the judge in the Chantelle case concentrated on trade channels:‘Importantly, the appellant’s goods can notionally be sold in any fashion outlet, including stores such as Edgars, Truworths and others where cosmetics and fragrances are located and sold in close proximity to clothing and other garments.’ And he suggested that the goods are competitive, because clothing brands often extend to cosmetics – there’s mention of Hugo Boss, Chanel, Puma…

It’s a far cry from some of the decisions we’ve had of late. Like the SCA decision which held that Zonquasdrif could co-exist for wine and wine grapes because the goods are not so similar that confusion will arise. Or the case involving co-existence of the mark Due South, where the court suggested that if goods are in different classes they aren’t similar. Our law’s a bit of mess on this point right now.

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