For the past 3 (three) decades, our Courts have sparred with the daunting task of determining whether certain goods or services could be considered 'similar' in opposition and trade mark infringement matters. The recent case of Jonsson Holdings (Pty) Ltd v Aktiebolaget, P.J Jonsson Och Soner was no exception.

This matter concerned an opposition filed by Jonsson Holdings (Pty) Ltd (herein "Jonsson") to trade mark application no. 2018/32668 JONSSON (Word) in class 7 in respect of "screening machines; crushing machines; conveying machines; screening panels; screening media; slied liners for screening, crushing and conveying machines; conveyor belts for conveying machines; protective elements for screening, crushing and conveying machines", filed by Swedish company, Aktiebolaget P.J Jonsson Och Soner (herein "Aktiebolaget").

The opposition

The opposition was based on sections 10(12), 10(14) and 10(17) of the Trade Marks Act, 194 of 1993 (herein "Trade Marks Act"). Section 10(14) of the Trade Marks Act deals specifically with bars to registration where the marks concern 'similar' goods and/or services. The infringement claim equivalent can be found in section 34(1)(b) of the Trade Marks Act.

Jonsson is part of the Jonsson Workwear Group, which manufactures and distributes workwear, clothing, footwear, and personal protective equipment (PPE) under the well-known JONSSON brand, both in South Africa and to approximately 30 (thirty) countries abroad.

Jonsson is the proprietor in South Africa of trade mark registration no. 2011/28608 JONSSON (Word) in class 9 in respect of "protective clothing; protective headgear; protective footwear; eye wear, including protective eye wear; protective face shields and masks and goods ancillary or related to the aforementioned all in class 09" and trade mark registration no. B1968/01589 JONSSON (Word) in class 25 in respect of "articles of clothing including men's and boy's overalls."

Jonsson is also the proprietor of several registered composite marks which incorporate the word JONSSON (herein "JONSSON Logo"), including trade mark registration no. 2011/28609 JONSSON (Composite) in class 9 in respect of "protective clothing; protective headgear; protective footwear; eye wear, including protective eye wear; protective face shields and masks and goods ancillary or related to the aforementioned all in class 09."

The JONSSON Logo has been used continuously in South Africa since 1955 and Jonsson has built up a considerable reputation in, and has goodwill attaching to, its JONSSON mark. The JONSSON mark is also notionally used by Jonsson in the exact same font and colours in various other logo marks, with words and phrases, such as "WORKWEAR ZONE" and "WORKWEAR DEPOT". Jonnson argues that the words "workwear", "zone", and "depot" are descriptive, alternatively non-distinctive.

As with all opposition proceedings, the onus was on Aktiebolaget to satisfy the Court that, on a balance of probabilities, there is no reasonable probability of confusion or deception if both marks were used in an ordinary manner.

Jonsson contends that the goods for which Aktiebolaget seeks registration of its identical JONSSON trade mark in class 7, are similar to the goods covered by its JONSSON trade marks in class 9 ("protective equipment") and 25 ("workwear"). The Court deemed this submission 'farfetched', as Jonsson's goods in classes 9 and 25 concern protective clothing, overalls, and footwear, whilst Aktiebolaget's goods concern heavy mining machinery used for heavy mining works.

But are these goods as far removed as the Court suggests?

In the case of Mettenheimer and another v Zonquasdrif Vineyards CC and others [2] the Court found that despite the similarity in the parties' respective marks, the goods in respect of which these marks were used and registered, namely "wine" and "wine grapes", were so dissimilar that confusion or deception in the marketplace was unlikely.

In the opposition matter between National Brands Limited and Lesaffre et Compagnie [3] the Tribunal dismissed the opposition filed by National Brands against Lesaffre's trade mark application for the BAKER'S BONUS and BAKERMAN device mark. The Tribunal held that "flower, yeast, baking powder, bread improvers (raw materials and additives for preparing and improving bakery products) dough making bread, salt", were not similar to "biscuits, confectionery, crisp breads and related goods."

In a recent European case before the Cancellation Division in the European Union Intellectual Property Office (EUIPO),[4] the Cancellation Division held that "wine" and "gin" are not similar. This finding was, however, made with reference to a 'Similarity Tool' utilised by examiners in the EUIPO.

In stark contrast to the above case law, and in the case of Danco Clothing (Pty) Ltd v Nu-case Marketing Sales and Promotions (Pty) Ltd and another [5] the Court found that the use by one party of the mark FRENCH CONNECTION in respect of "cosmetics" is likely to lead to deception or confusion in the marketplace when considering the identical mark, FRENCH CONNECTION, registered in the name of another, in respect of "clothing".

In the case of New Media Publishing (Pty) Ltd v Eating Out Web Services CC [6] the Court held that the use by one party of the mark EATING OUT for an "electronic restaurant guide", is likely to lead to deception or confusion in the marketplace when considering the other parties' registered trade mark EAT OUT GUIDE for "magazines". Notably in this case, the Court held that goods and services could be considered similar for purposes of the Trade Marks Act.[7]

In the case of Wetsuits South Africa (Pty) Ltd t/a Reef Wetsuits v South Cone Inc and Others [8] the Court held that "casual shirts, T-shirts and shorts, flip flops, sandals and casual shoes, and duffel bags" were similar to "wetsuits, articles of protective clothing for water sports and other sports activities or waterproof clothing, and bags."

Why then do we have such differing views?

The concept of protection for trade marks in relation to similar goods and services were introduced when the Trade Marks Act, 193 of 1994, came into force on 1 May 1995.

Since such time, our Courts have wrestled with the scope concerning 'similarity'. However, some cases have provided guidance on this point.

In the opposition case of Foschini Retail Group (Pty) Ltd v Jan Frederick Coetzee [9] the Court had to consider whether the goods and services in respect of which the applicant's composite trade mark application was filed in classes 16, 29, 30, and 41 was similar to the goods and services in respect of which the opponent's DUE SOUTH trade mark was registered in classes 8, 9, 11, 21, 28, and 35.  In considering whether the goods and services were similar, the Court was guided by the approach in the United Kingdom case of British Sugar PLC v James Robertson & Sones Ltd [10] the Court held that the following factors should be considered when assessing the similarity between goods or services:

• the respective uses of the goods or services;
• the respective users of the goods or services;
• the physical nature of the goods or acts of service;
• the respective trade channels through which the goods or services reach the market;
• in the case of self-service consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; and
• the extent to which the goods or services are competitive.

This is not a closed list but should provide some guidance in considering whether goods or services are indeed similar.

In applying the above criteria in the Foschini-case, the Court held that none of the goods or services were similar.

As concerns the current matter under discussion, and in applying the above criteria, one may come to a similar conclusion as that reached by the Court.  That having been said, the test ignores the complementarity factor in that the goods for which Jonsson's trade marks are registered, namely PPE and workwear, may very well be complementary to mining equipment and machinery.

The principle of complimentary goods for purposes of establishing similarity was considered in the English case of Elliot's Trade Mark Application (LUV Trade Mark) [11]. In this matter, the appointed person held that goods are complimentary where although it is not necessary to use the products together, it may be important to use them together. Where goods share an intended purpose, it may render them complimentary.

One may also consider whether the respective kinds of goods are produced by the same manufacturer. This is exactly what Jonsson argued before the Court. Jonsson submitted that well-known manufacturers such as Caterpillar, John Deere and Jeep manufacture both machinery and clothing under the same brand.  The Court was, however, not convinced by this argument, stating that Jonsson has provided no evidence that it intends to manufacture heavy machinery.

In conclusion

The conundrum concerning the similarity in goods has once again proven to be quite challenging.  In this instance, it appears that the Court followed a very narrow approach as to the similarity of goods, as opposed to a broader approach, which may have rendered the parties' goods, at the very least, complimentary.

Footnotes:

[1] (52169/2021) [2024] ZAGPPHC 1091 (23 October 2024). [2] 2014 (2) SA 204 (SCA) at para. 11 to 19. [3] Lesaffre Et Compagnie and National Brands Limited (16/11/2011). [4] Symphony 6 v Symphonie (Case no 000055634). [5] 1991 (4) SA 850 (A). [6] [2005] ZAWCHC 20; 2005 (5) SA 388 (C) at 394C-F. [7] Ibid at 400.   [8] (4806/19) [2021] ZAWCHC 151; 2021 BIP 10 (WCC); [2021] HIPR 177 (WCC) (22 June 2021). [9] (A1/11) [2013] ZAGPPHC 8. [10] 1996 R.P.C. 281 (Chancery Division) (U.K). [11] [2014] RPC 13 425 (AP).