(Appellate Division)
Coram: Corbett, Miller et Nicholas, JJA, Galgut et Howard, AJJA.
Date of hearing: 27 February 1984.
Date of judgment: 21 May 1984.
Judgment
Corbett JA:
1.
Appellant With Trade Mark Micatex
Appellant, a company dealing in paints and allied products, is the proprietor of a trade mark registered in terms of the Trade Marks Act 62 of 1963 ("the Act"). The trade mark in question consists of the word "Micatex". It was registered on 13 September 1971 in respect of the following goods falling within class 2 of the fourth schedule of the Trade Marks Regulations, 1963 (the regulations current at the time of registration):
"Paints, varnishes (other than insulating varnish), enamels (in the nature of paint), distempers, lacquers, preservatives against rust and against deterioration of wood and anti-corrosives, all containing mica".
FIG. 1: Plascon Paint Container with Micatex Trade Mark.
2.
Respondent
Respondent is a company also carrying on business as a dealer in paints and allied substances.
Paragraphs (1-3)
3.
Ingredients of Micatex
The texture coating sold by the appellant under its Micatex trade mark contains the silicate known as mica. The mica ingredient in the texture coating constitutes approximately 9 % by weight of the texture coating as a whole. It is what is termed a "filler". The other ingredients of the appellant's texture coating are pigment and other fillers (not including mica) plus-minus 34 percent; emulsion (resin) 19 %; and water 38 %. The use of mica as an ingredient is confined to specialty paints, such as texture finishes, to which it imparts additional strength and resistance to checking and cracking. Another filler substance that Micatex contains is marble.
Paragraphs (11-13).
FIG. 2: Mica Silicate Mineral.
4.
Respondent Selling Texture Coating Under Mark Mikacote
In about April 1979, the appellant became aware of the fact that the respondent was selling and offering for sale in the Cape Province a texture coating under the mark Mikacote.
Paragraph 16.
5.
Ingredients of Mikacote
With regard to the use by the respondent of the mark Mikacote, it is relevant to note that the respondent's texture coating does contain mica, the breakdown of this product, shown as a percentage by weight, being the following: pigment and other fillers (not including mica) 32,97; mica 8,72; emulsion (resin) 19,44; water 36,39; additives 2,48. Mikacote does not, however, contain marble, one of the ingredients of Micatex.
Paragraph 19.
6.
Purchasers of The Products
The goods in relation to which the marks Micatex and Mikacote were being used were offered for sale in hardware stores, multiple stores, general dealer's stores, and similar outlets. They were purchased, inter alia, by word of mouth, either over the counter or over the telephone, or by selection by appearance. The purchasers included not only persons skilled in the paint trade, but also persons having no specialized knowledge and merely wanting to perform painting work themselves or by means of unskilled employees. It is averred by respondent that such purchasers nevertheless "generally have a more than rudimentary knowledge of the products and the substances contained in them".
Paragraph 20.
FIG. 3: Paint Offered for Sale.
7.
Trade Marks Containing Mica
Prior to launching the notice of motion proceedings appellant caused a search to be made in the records of the Registrar of Trade Marks in regard to all trade marks containing the word "Mica". There were at the time five such marks. None of them was registered in the same class as Micatex. Moreover, there was no other trade mark registered in class 2 of the fourth schedule, other than Micatex, which incorporated the words "Mica" or "Mika". In fact, there is no evidence of any use in South Africa in respect of paint or allied products of any trade mark containing the word "Mica", save for the use by appellant of the trade mark "Micatex" and the use by the respondent of the marks "Mikadek" and "Mikacote".
Paragraph 22.
8.
Test
In an infringement action, the onus is on the plaintiff to show the probability or likelihood of deception or confusion. It is not incumbent upon the plaintiff to show that every person interested or concerned (usually as the customer) in the class of goods for which his trade mark has been registered would probably be deceived or confused. It is sufficient if the probabilities establish that a substantial number of such persons will be deceived or confused. The concept of deception or confusion is not limited to inducing in the minds of interested persons the erroneous belief or impression that the goods in relation to which the defendant's mark is used are the goods of the proprietor of the registered mark, i.e. the plaintiff, or that there is a material connection between the defendant's goods and the proprietor of the registered mark; it is enough for the plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of such a connection.
Paragraph 35.
FIG. 4: Likelihood of Deception or Confusion.
9.
Comparison Between Mark Used by Defendant and Registered Mark
The determination of these questions involves essentially a comparison between the mark used by the defendant and the registered mark and, having regard to the similarities and differences between the two marks.
10.
Impact Made Upon Average Customer
An assessment must be made of the impact which the defendant's mark would make upon the average type of customer who would be likely to purchase the kind of goods to which the marks are applied.
Paragraph 36.
11.
The Notional Customer
This notional customer must be conceived of as a person of average intelligence having proper eyesight and buying with ordinary caution.
Paragraph 36.
12.
Sense, Sound and Appearance of Marks
The comparison must be made with reference to the sense, sound, and appearance of the marks.
Paragraph 36.
13.
Marks Viewed as Encountered in Market Place
The marks must be viewed as they would be encountered in the market place.
Paragraph 37.
14.
Against the Background of Relevant Surrounding Circumstances.
Marks must be viewed against the background of surrounding circumstances. Marks not only considered side by side but separately.
Paragraph 37.
15.
Purchaser has Imperfect Recollection.
It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant's mark, with an imperfect recollection of the registered mark and due allowance must be made for this.
Paragraph 37.
16.
Dominant Feature
If each of the marks contains a main or dominant feature or idea the likely impact made by this on the mind of the customer must be taken into account. As it has been put, marks are remembered rather by general impressions or by some significant or striking feature than by a photographic recollection of the whole.
Paragraph 37.
17.
Manner in Which the Marks are Likely to be Employed.
Finally, consideration must be given to the manner in which the marks are likely to be employed as for example, the use of name marks in conjunction with a generic description of the goods.
Paragraph 37.
18.
Not Notional User
The Court stated it had some difficulty, however, in applying the notional user approach to the use by the defendant of his mark, especially as regards the type of goods to which the mark is applied. If the actual proven user by the defendant falls outside the ambit of the plaintiff's monopoly, then the Court failed to see how it can be said to infringe merely on the ground that a notional fair and normal user of his mark – which had not in fact occurred - would trespass upon the plaintiff's monopoly. To take a pertinent example: suppose the respondent, in this case, had used a mark which was deceptively similar to the plaintiff's mark in relation to an insulating varnish (an item specifically excluded from the goods in respect of which the appellant's mark was registered). The Court doubted whether the suggestion that the respondent's mark might also fairly and normally be used in relation to other varnishes would establish infringement on the respondent's part.
Paragraphs (40-41).
19.
Comparing Micatex and Mikacote
Both Trisyllabic
They are both trisyllabic; they both have as their first two syllables the word "mica". (Though in the respondent's case this is spelt "mika", phonetically the words are identical.) On the other hand, the only similarity between the suffix "cote" and the suffix "tex" is that they are both monosyllabic.
Paragraph 42.
20.
Transport to the Market Place
The Court stated it must notionally transport itself to the market place and consider whether the average customer is likely to be deceived or confused. And here the Court must take into account relevant surrounding circumstances, such as the way in which the goods to which the marks are applied are marketed, the types of customers who would be likely to purchase the goods, matters of common knowledge in the trade and the knowledge which such purchasers would have of the goods in question and the marks applied to them.
Paragraph 43.
21.
Purchasers Having no Specialized Knowledge
As already mentioned, the goods to which the Micatex and Mikacote marks were applied were offered for sale in hardware stores, multiple stores, general dealer's stores and similar retail outlets. Potential purchasers included not only persons skilled in the paint trade, such as building and painting contractors, but also persons having no specialized knowledge and wanting merely to perform painting work themselves or by means of unskilled employees. It is doubtful whether the former, ie persons skilled in the paint trade would be deceived or confused by respondent's mark Mikacote, but the position of the latter, ie persons having no specialized knowledge, is by no means so clear.
Paragraph 44.
FIG. 5: Purchasers can be Skilled or Unskilled in the Trade.
Image by rawpixel.com
22.
Dominant Impression “Mica”
In the Court’s opinion, the dominant impression or idea conveyed by each of the marks centers on the word "mica". "Mica" constitutes in each case the first two syllables of the mark. It is the portion of the mark that makes the initial impact and on which stress is laid in pronunciation. It is a known word for a known substance. In the painting trade appellant's use of the word "mica" in its registered trade mark was unique among trade names, until the respondent commenced using the mark Mikacote. The suffixes "tex" and "cote" make less of an impression, particularly as they appear to be derived from the term "texture coating" or, at any rate, would be understood by a substantial number of interested customers as being so derived.
As the evidence shows, the term texture coating is one generally used in the trade to denote the products to which the marks Micatex and Mikacote were applied. Consequently, a potential customer, with no specialized knowledge in this field and an imperfect recollection of the appellant's trade mark, would tend to recall it as "Mica-something" or "a word starting with mica". At any rate, in the Court’s view, a substantial number of such customers would probably have this type of recollection. A person with such an imperfect recollection who went, say, to a hardware store to purchase the appellant's product and encountered, or was offered, a tin of Mikacote could well, in my opinion, be deceived into thinking that this was the product he was seeking; and it is likely that this could occur on a substantial scale. Moreover, the Court was of the opinion that a substantial number of such persons, knowing that the product they were seeking was a "texture coating"; would be likely to be confused between "Micatex", the suffix being the first syllable of "texture", and "Mikacote", where the suffix is a phonetic transcription of the first syllable of "coating". At the very least, consider that the resemblance between the marks is sufficient to cause a substantial number of such customers to be confused as to whether or not there was a material connection between the respondent's goods, bearing the mark Mikacote, and the proprietor of the Micatex mark.
Paragraphs (46-47).
FIG. 6: Dominant Impression Mica.
23.
Court a quo Verbal Comparison
The Court a quo, which decided the infringement issue adversely to the appellant, appears to have based its decision mainly on a verbal comparison of the two marks and upon the conclusion (thereby differing from the Judge of first instance) that in practice the two marks would not be used in conjunction with the generic description "texture coating". The Court is inclined to agree with this latter conclusion, but in the Court’s view, a purely verbal comparison is not enough. As the Court has said, in cases such as this the Court must transport itself to the market place and try to visualize how customers of the goods, in relation to which the marks are used, would react.
Paragraph 48.
24.
Case Not an Easy one.
The case is not an easy one. This is shown by the division of judicial opinion which has occurred in this case and in the parallel case in the Orange Free State Provincial Division (see Decro Paint and Hardware (Pty) Ltd v Plascon-Evans Paints (Tvl) Ltd, 1982 (4) SA 213 (0) ), the matter which came before the Court on appeal immediately after the present one. Having carefully considered the matter, however, the Court is of the view, for the reasons stated, that the appellant established an infringement of its registered trade mark Micatex by the use by the respondent of its mark Mikacote.
Paragraph 49.
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