SPEAKING IN TONGUES
JURISDICTION REPORT: SOUTH AFRICA
Andrew Papadopoulos
DM Kisch Inc
We all know that a chameleon changes its colour as a form of protection against predatory dangers, but a chameleon changing languages to protect trademark rights is something very new.
Te High Court of South Africa recently had occasion to pronounce on the alleged infringement of a registered trademark by a translation of that mark in another language. Te applicant is the proprietor of the Jordan winery, which is involved in the manufacture, distribution and sale of wines, including a range that uses the registered trademark ‘Chameleon’ and a device depicting an image of a chameleon.
Te respondent operated a winery near the applicant’s, producing and marketing wine under the name ‘Lovane’ used in conjunction with a chameleon device. It was common cause that ulovane is the Xhosa (one of the 11 official languages spoken in South Africa) word for chameleon and the source of the Lovane mark.
In December 2008, the applicant brought trademark infringement and passing-off proceedings against the respondent for an interdict preventing the use of the Lovane trademark and a chameleon device. Shortly before the matter went to hearing, the respondent offered to cease using the chameleon device.
Notwithstanding the respondent’s offer, the court was still required to find whether there was a likelihood of deception or confusion between the respondent’s use of such an image and the applicant’s registered rights. Te court upheld the applicant’s claim and granted an interdict restraining the respondent from using the chameleon device or any other confusingly or deceptively similar trademark. Although the images of the parties’ respective chameleons were different from one another, the applicant had made extensive use over a long period of its chameleon device for wine products and was the only party using such an image for these products.
With regard to the respondent’s use of the Lovane mark, the court held that the mark did not infringe the applicant’s statutory or common law rights to the Chameleon mark, finding that the two marks were not conceptually similar.
In assessing whether deception or confusion would be likely, the court considered the matter through the eyes of the average consumer, bearing in mind that South Africa is a multilingual country. Te applicant failed to furnish evidence as to actual confusion or expert evidence as to the linguistic relationship between the two words. In the absence of such evidence, the court held that Lovane can be pronounced with either an English accent, with open vowels; with a French accent, using closed vowels; or with a Xhosa accent, whereby the accent is placed on the second and third vowels.
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In considering a wine label in English or Afrikaans (two other official languages) stripped of any reference to a chameleon device, and because only a small percentage (17.5 per cent) of the population is Xhosa-speaking and only a derivative of the translated word ulovane had been adopted (wherein Lovane could be considered an invented word), the court held that Lovane would not suggest any linkage to either the applicant’s word or device trademarks.
Tis case assists South African practitioners in that it is not enough to merely present the court with a percentage of the population who could possibly be confused by a potentially infringing trademark; one must also indicate the portion of the segment that relates (either as a consumer, manufacturer or supplier) to the relevant market. In this case, the court noted that the Xhosa-speaking population in South African contains a cross-section of people and some are more discerning than others (just as in any other language segment in South Africa). It is therefore important to indicate the size of the relevant segment actually involved in the wine industry.
Te case also helps to indicate the type of evidence that should be furnished when attempting to extend a proprietor’s trademark rights to translations of that mark. Expert evidence of the linguistic relationship between the two marks and, where possible, evidence of actual confusion, will go a long way in assisting a court to find in favour of a trademark proprietor.
Andrew Papadopoulos is a trademark director at DM Kisch Inc. He can be contacted at:
andrewp@dmkisch.com
World Intellectual Property Review May/June 2010
67
“ IT IS NOT ENOUGH TO MERELY PRESENT THE COURT WITH A PERCENTAGE OF THE POPULATION WHO COULD POSSIBLY BE CONFUSED BY A POTENTIALLY INFRINGING TRADEMARK; ONE MUST ALSO INDICATE THE PORTION OF THE SEGMENT THAT RELATES TO THE RELEVANT MARKET”
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