What trade mark disclaimers have to do with distinctiveness…or not?

It is generally understood in trade mark jurisprudence that distinctiveness is a hallmark of trade mark registration and protection. In this regard, trade mark disclaimers exist to ‘free up’ non-distinctive and/or insufficiently distinctive parts of a trade mark while saving the parts of such mark that are distinctive. Following from this, a trade mark proprietor would not be permitted to sue for infringement in respect of the use of a disclaimed feature. However, in ICollege (Pty) Ltd v Xpertease Skills Development and Mentoring CC and Another decided in May, it appears that the Supreme Court of Appeal of South Africa followed a different line of reasoning.

Background

This was an appeal against the decision of the High Court in Pretoria which dismissed the appellant’s application for an injunction restraining the first respondent from infringing the appellant’s rights acquired through the registration of its trade marks; and from passing off its services as being those of the appellant. 

Kollege Kat...

The Supreme Court of Appeal (SCA) reversed the decision of the High Court and granted an injunction restraining the first respondent from infringing the applicant’s registered iCOLLEGE trade marks.

Facts

Both the appellant and the first respondent are in the business of providing of education and training services. The appellant’s trade marks which are registered in class 41, have the word, ‘iCOLLEGE’ as their dominant feature. The two marks are identical though one of the marks is a colour version and covers a wider specification of services in class 41. The appellant is also the registered proprietor of the domain name ‘icollegeint.co.za’.

The first respondent’s mark also has the word ‘iCollege’ as a dominant element albeit accompanied in use with the words ‘ONLINE LEARNING’. However, unlike the appellant, the first respondent does not offer classroom-based tuition nor locally accredited qualifications. 

The appellant’s appeal was against the decision of the lower court which had held that the first respondent’s use of ‘iCollege’ was not infringing.

The decision

In upholding the appeal, the SCA noted that the first respondent did not dispute that the appellant had not authorised it to use the appellant’s trade mark and that the only issue for decision was whether the respondent’s iCollege trade mark was ‘a mark so nearly resembling’ the appellant’s iCOLLEGE trade mark ‘as to be likely to deceive or cause confusion’ (per section 34(1)(a) of the Trade Marks Act).

While the appellant claimed that the two marks were identical and resulted in deception or confusion for a substantial number of persons; the first respondent contended that the marks in question are inherently different. As the SCA noted from the first respondent’s affidavit, the first respondent was of the view that: “the services which the respondent offers ‘are ephemeral; they are often concerned with the provision of trade-marked products of third parties and they are not offered side by side enabling customers to make instant comparisons, making quality control difficult”. 

The SCA disagreed with this position holding that the word element, ‘icollege’ was present in both the first respondent’s iCollege mark and the appellant’s iCOLLEGE trade mark and sound the same whether “clearly pronounced or carelessly spoken”. It is this identical word element that the notional user of education and training services will encounter. See paragraph 9. According to the SCA, the High Court should have considered the marks as wholes, rather than the exact details of each and/or comparing only the pictures in the marks. While there are differences between the logos used by the parties, the fact that there is phonetic and conceptual similarity on at least two levels of comparison: sound and appearance of the word element suffices for a finding of confusion or deception. See paragraphs 11-13. Indeed, s 34(1)(a) of the Act does not require the appellant to show that the nature and scope of the respondent’s services, or its training methods, are identical to the services covered by the trade mark registration.

The SCA also held as impermissible and irrelevant, the High Court’s consideration of whether the word “iCollege” is distinctive in respect of the products to which they pertain. For the SCA, what matters was that the ‘notional use test’, which required the court to consider the notional use to which the appellant is entitled to put its trade mark given the scope of the trade mark registration. See paragraph 16. Also, the SCA noted that once it is shown that there is resemblance likely to cause consumer deception or confusion between the two marks as to the origin of the services, there is primary infringement which entitles the appellant to an injunction.

Regarding the first respondent’s argument that the appellant is not entitled to an interdict for trade mark infringement because the word ‘COLLEGE’ has been disclaimed, the SCA held that what is important for the issue of infringement is whether the appellant’s trade mark as a whole had the necessary attributes that qualified it for registration even if the prominent part of that mark is an element which is being disclaimed. See paragraph 19.

Comment

It seems to this Kat that the SCA’s decision here is quite confusing. On one hand, the court held that it did not matter that the word “COLLEGE” was disclaimed in the appellant’s trade mark registration as what matters was whether the disclaimed feature forms part of a composite mark. On the other hand, the court held that a trade mark proprietor cannot bring a claim for infringement in respect of the use of a disclaimed feature. In this case, the infringement was exactly about the use of a disclaimed feature. This raises the question of why it was then impermissible and irrelevant for the lower court to look into the question of distinctiveness of the ‘iCollege’ element especially if raised by a party.