Regular readers of ENS’s IP articles will know that trade mark law is very much about deciding whether or not the use or registration of a trade mark is likely to cause confusion. A recent European decision illustrates some of the issues that can arise.
A French company that seems to be in some way associated with FIFA has a Community Trade Mark (CTM) registration for the trade mark Ballon D’Or – for those of you who don’t speak French, Ballon D’Or means ‘ball of gold’, and for those of you who don’t speak trade marks, a CTM registration is an EU-wide registration. Football watchers will know that FIFA Ballon D’Or is the name of the award that goes to the world’s best footballer, who right now is Lionel Messi of Barcelona. A London-based mom-and-pop business, on the other hand, uses the trade mark Golden Balls for various goods, and it also has a CTM registration for the trade mark. The couple use the name for reasons that go something like this – Golden Balls is what wife calls hubby, but no it’s not what you might think, it’s all down to the fact that his name is Gus Bodur, which makes his initials GB.....! Yes, it is all a bit iffy isn’t it, and there is, of course, another far more famous wife who calls hubby Golden Balls, but the Bodurs insist that David and Victoria know all about their use of the trade mark Golden Balls, and that the Beckhams have never raised any objections. Be that as it may, the French company feels very differently, and it applied to cancel the Bodur’s registration for Golden Balls on the basis that it was too close to its registration for Ballon D’Or.
In cases like this it's sometimes necessary to consider the goods or services involved as well as the trade marks. But in this case the goods were the same (paper goods, printed matter), so the issue was simply whether the trade marks would be confused. It’s been long established that in these matters the court or trade mark authority needs to consider the visual, phonetic and conceptual similarities between the trade marks. There was, for example, a famous case in South Africa where the trade marks in issue were Romany Creamsand Romantic Dreams (both for biscuits), and the court held that, even though they were visually and phonetically similar, the conceptual differences were so great that they would not be confused. But the mere fact that two trade marks may be conceptually different does not means that there won’t be confusion – in a more recent decision involving the jewellery marks Evolym and Evolve, the court accepted that there was no conceptual similarity (Evolym is apparently known by many to be ‘My Love’ spelt backwards), but said that it was still necessary to consider the visual and phonetic issues (the court in fact went on to conclude that these differences were such that there would be no confusion).
The court in the Golden Balls case confirmed that a conceptual similarity can be enough for there to be a likelihood of confusion, but it said that the similarity must be clear or obvious: ‘The signs at issue are not identical or extremely similar conceptually, but at most slightly similar... weak, or very weak, conceptual similarity which requires a prior translation cannot suffice to make up for the visual and phonetic dissimilarities which exist.’
It also suggested that conceptual similarity may be sufficient in cases where the first trade mark is highly distinctive: ‘A mere conceptual similarity between two marks can create a likelihood of confusion where the goods are similar, provided, however, that the earlier mark has a high distinctive character... such a specific distinctive character of the mark BALLON D’OR has not been established in the present case.’
But then it went on to say that even if the first trade mark is highly distinctive, the similarity must still be pretty clear too, and it suggested that translations are unlikely to pass this threshold: ‘Even if that mark enjoys a high distinctive character...the very weak conceptual similarity, requiring prior translation, cannot, in the circumstances of the case, be sufficient to create, in itself, a likelihood of confusion on the part of the target public .... Due to the fact that the signs at issue are in different languages, a manifest distinction is created between them so that ... the average consumer will not immediately associate them without undergoing an intellectual process of translation.’
Given that we South Africans speak in many tongues, the issue of meaning and translation is important. Yet it doesn’t come up as often as you might think it does. There was a case in the Western Cape a few years back, where the issue was whether the trade marksChameleon and Lovane were confusingly similar - if you’re scratching your head, note that the Xhosa word for ‘chameleon’ is ‘ulovane’, so you can now swop your confusion for embarrassment! Yet the court in that case held that the trade marks would not be confused. The somewhat controversial reasoning - not many Xhosa-speakers are wine drinkers. In a more recent case, Chicken Licken sued a KZN-based competitor for using its registered trade mark Hot Wings as the name of a menu item. The competitor offered a settlement which would require it to change the name from Hot Wings to Shisa Wings, but Chicken Licken said no way. Why? Because the Zulu word for ‘hot’ is ‘shisa’, so it amounted to the same thing.
Although the Golden Balls decision may suggest that a trade mark registration will seldom be infringed by a translation, we continue to think that in South Africa (where many of the languages spoken are, of course, official languages) companies should always bear translations in mind when making trade mark decisions.