In this article, we look at two recent trade mark opposition decisions. These remind us of the many issues that need to be considered when comparing trade marks. They also highlight the growing importance of Chinese brands.
The first involves a case that was before the European Union IP Office (“EUIPO”). In this case, the Taiwanese company Wawei filed an EU trade mark application for Wawei for food and drink in classes 29, 30 and 32. Huawei, the Chinese telecommunications giant, has the trade mark Huawei registered in every one of the 45 classes, and opposed the application for Wawei on the basis that it was likely to cause confusion.
Huawei conceded that the fact that the two trade marks have different first letters is relevant, as the first letter of a trade mark is generally very important. However, it argued that it was relevant that both trade marks contain the string “awei”. It also argued that it was very relevant that the pronunciation of the two trade marks is practically identical.
Huawei led evidence as to how the trade marks would be pronounced in different European languages. This evidence showed that, whereas in German and Polish, the first letter “H” would generally be pronounced, in Spanish and French, the letter “H” at the beginning of a word is generally silent. So, while the trade marks might not be very similar in German and Polish, they would be very similar in French and Spanish. On the basis of this evidence, EUIPO found that the trade marks would be confused and that the application for the trade mark Wawei should be refused. Evidence of varying pronunciation is definitely a consideration that could be used in trade mark oppositions in South Africa, where there are 11 official languages.
The second decision was of the UK IP office involving the high-profile craft brewer Brewdog and the late singer and film star Elvis Presley. Brewdog filed applications to register the trade marks Elvis Juice and Brewdog Elvis Juice in class 32 for beers and, not too surprisingly, these applications were opposed by the company that manages the rights for the estate of Elvis Presley. The basis of the opposition was EU trade mark registrations for Elvis and Elvis Presley covering class 32.
The opposition was upheld, with the hearing officer taking account of, inter alia, the weak nature of the word “juice” in the context of beers, the enduring fame of Elvis Presley, and the fact that most people would make a “conceptual connection” to the singer when seeing the trade mark Elvis Juice, and therefore assume that Elvis Juice had some economic connection with Elvis Presley.
The hearing officer had this to say: “On the basis that Elvis is a relatively uncommon name, and given that Mr Presley is the most famous of the Elvises, I consider that most average consumers, on seeing the name Elvis alone, are likely to conceptualize that on the basis of Elvis Presley.”
Describing Elvis Presley as an “iconic figure”, the hearing officer made it clear that there are different levels of fame: “Whilst I accept that Brewdog may have something of a reputation, there would still be a significant number of average consumers who will not have heard of it and, consequently, the claimed lessening of the confusion would not be applicable to them.”
One UK publication announced the result as follows: “Brewdog all shook up over Elvis Juice trademark”. Perhaps it was referring to the fact that the two founding partners of the company had (presumably as a publicity stunt) done something quite extreme when the dispute with the Elvis Presley estate kicked off – they both officially changed their names to Elvis!
In South Africa, the Supreme Court of Appeal (“SCA”) has of late handed down a number of judgments on the issue of confusing similarity. In the 2014 case of Roodezandt Ko-operatiewe Wynmakery v Robertson Winery (Pty) Ltd and the Registrar of Trade Marks, Judge Brand reminded us of some of the many factors that need to be considered when trade marks are compared. Total confusion is not necessary. Confusion among a substantial number of people is enough. By confusion, we simply mean that people are confused about the origin of the goods, not that they necessarily believe there is a connection between the goods. The issue must be considered through the eyes of the average consumer. The trade marks must be considered both side-by-side and separately. Imperfect recollection must be taken into account. The dominant feature of the trade marks must be considered, because people remember striking features.
That same year, the SCA handed down its judgment in the case of Yair Shimansky v Browns the Diamond Store. In that case, the court reminded us that the issue must be considered through the eyes of consumers, who “will be people of many races and degrees of education, having varied gifts, interests and talents.” The court went on to say that “we are not to postulate the consumer of ‘phenomenal ignorance or extraordinarily defective intelligence’ … we are to consider a person of average intelligence and proper eyesight, buying with ordinary caution.” It really can be quite confusing.