The Western Cape High Court recently handed down its judgment in the case of Truworths Ltd v Pepkor Retail (Pty) Ltd. The facts were unusual, and so is the judgment.
The retailer, Truworths, had a registration for the trade mark The Look in class 25 for clothing. When rival retailer, Ackermans, used the term The Look for Less, Truworths complained. The matter was settled on very specific terms: Ackermans undertook that it would not use the term The Look on its own, nor would it use the term The Look for Less as the name of a store or as a swing-tag in relation to clothing.
Not much later Truworths found that Ackermans was using the phrase The Look for Less on clothing racks, shopping bags and in-store ads. In each case the words ‘The Look’ were more prominent than the words ‘For Less’. Truworths sued for infringement and passing off. Ackermans counter-claimed for cancellation of the registration. Ackermans argued that there had been no breach of the undertaking, and that there would be no confusion given the weak nature of the marks. It also claimed that the registration was invalid for non-distinctiveness, pointing to third party registrations for marks incorporating the word ‘look’.
Judge Mantame found for Truworths, holding that there had been infringement based on likelihood of confusion and dilution, as well as passing off. The judge also found that the registration was valid. She had harsh words for Ackermans, describing the company’s technical approach to the undertaking as ‘distasteful’ and ‘mala fide’. She said this: ‘One cannot enter into an agreement not to use another’s trade mark and months thereafter renege from that agreement on the basis that none of what the applicant complained about is prohibited in that undertaking… this court can only infer that Ackermans in proposing such an undertaking had ulterior motives.’
The judge found that the mark The Look was distinctive, but for controversial reasons. First because Ackermans had signed the undertaking: ‘By agreeing on an undertaking, Ackermans accepted that applicant had some rights and interests to protect.’Second, by using the name itself: ‘If respondent did not consider The Look for Less as an attractive phrase in the commercial sense, it would not have used it … by so doing it recognised it as a reputable and a distinct mark.’ And third, by refusing to give it up: ‘The fact that Ackermans refuses to desist from the use of The Look as a part of the infringing mark is an indication that Ackermans itself is of the view that the mark is inherently distinguishing.’ The judge went on to say that Ackermans was being disingenuous, in that it had ‘resorted to the argument that the mark is entirely descriptive’ in order to avoid the consequences of its actions.
And what were those consequences? Consumer confusion: ‘Ackermans consumers in all likelihood would form a view that what could be obtained from the trade mark owner…could as well be obtained from Ackermans for less… that in itself creates an unfair advantage.’
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