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February 27, 2016

What's in a name? Confusion between bras and soaps?

Intellectual Property – confusion between similar goods

In Chantelle v Designer Group (Pty) Ltd [2016] JOL 35151 (GP) the court had to decide if the decision by the Registrar of Trade Marks to allow Designer Group’s trade mark to proceed to registration, was correct.

Designer Group had applied for the registration of the trade mark ”Chantelle” in respect of soaps, perfumery, essential oils, cosmetics, fragrances, deodorants and deodorisers, anti-perspirants and body care products. Chantelle, the appellant, was the registered owner of a trade mark with the identical name, registered in respect of girdles, brassiers, articles of underclothing and swim-suits.

Chantelle asked Designer Group to withdraw its application for registration. When Designer Group refused, Chantelle opposed, but the Registrar of Trade Marks allowed Designer Group’s trade mark to proceed to registration.  Designer Group appealed the decision by Registrar of Trade Marks.

Held that the two marks were exactly the same. The use of the identical mark in relation to different classes of goods (clothing and cosmetics) then had to be compared. The onus was on the respondent to dispel the likelihood of confusion amongst consumers.

The Court concluded that it was 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, albeit perhaps momentarily, that the cosmetics of the respondent originate from the same source as the clothing of the appellant. The fact that the appellant's products consist of lingerie and swim-wear, as opposed to "outer" garments, would make no difference to the incidence of confusion and deception.

The appeal was upheld.