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REPUBLIC OF SOUTH AFRICA

OFFICE OF THE CHIEF JUSTICE

IN THE HIGH COURT OF SOUTH AFRICA

(GAUTENG DIVISION, PRETORIA)

Date: 23/09/2015

Case No. 52287/2013

Reportable

Of interest to toher judges

In the matter between:

GROOT CONSTANTIA TRUST                                                              Opponent/ Applicant

and

DGB (PROPRIETORY)  LIMITED                                   Trade Mark Applicant (Respondent)

Headnote:

Trade mark registration - whether "inherently deceptive or confusing" or "likely to deceive or confuse" - Trade mark applicant bears onus that registration not offensive - when trade mark registrable within purview of section 9 of the Act - value judgment lo be made by court. Evidence - opponent to set out special circumstances on credible evidential survey to establish reasonable probability of deception or confusion - such evidential burden lo be discharged on a balance of probabilities lo evince lack of bona !ides of using the mark as a trade mark -lo be registrable a trade mark required to be capable of distinguishing goods or services registered from the goods or services of another - In casu - held that opponent having failed lo discharge evidential burden - application dismissed with costs.

JUDGMENT

PHATUDI AJ:

[1] INTRODUCTION:

The dispute in this matter relates to registration of a Trade Mark application No: 2008/24795, A CAPE ICON SINCE 1685 in Class 33 in the name of DGB(Pty) Ltd, the Trade Mark Applicant herein. The entity Groot Constantia Trust, opposes the intended application on various grounds. The matter was subsequently referred to this Court by the Registrar of Trade Marks("the Registrar") in terms of the provisions of Section 59( 2) of the Trade Marks Act 1993¹, ( "The Act") for determination.

[2]   THE PARTIES:

The Opponent/ Applicant, Groot Constantia Trust. ("the Opponent") a company incorporated in terms of the provisions of the old Companies Act 1973², is the owner of Groot Constantia Estate, Western Cape Province.

The Trade Mark Applicant ("the Respondent") , DGB(Pty) Ltd, is a private company and a proprietor of the trade mark Boschendal which is allegedly used in respect of wine emanating from Boschendal wine farm  situated  in  Franschoek,  Western  Cape  Province. I shall  for avoidance of doubt, refer to  the parties as the  Opponent and Respondent, respectively herein.

[3]       TR ADE MARK APPLICATION:

On 20 October 2008 the Trade Mark Applicant, the Respondent, applied for registration of trade mark application No: 2008/24795 A CAPE ICON SINCE 1685 in Class 33 in respect of "alcoholic beverages (except beers) " which it appears, was published in the May 20 l0 edition of the Patent Journal.

[4] The  Applicant, opposes registration of the trade mark sought to be registered by the Respondent on various grounds as set out in its Founding Affidavit ("FA") .

[5]        ISSUE FOR DETERMINATION:

The crisp question that calls for determination is whether, on the facts presented, the statement "A CAPE ICON SINCE 1685" in Class 33 and in respect of use and intended use for the Boschendal wines, would if allowed registration as a trade mark, be inherently deceptive or likely to deceive or cause confusion to the general public or those involved in the wine trade within the parameters of Section l0( 12), l0( 13) and l0(4) of the Act.

[6] It was contended on behalf of the Opponent, Groot Constantia Trust, on the one hand, that if the mark sought to be registered is to be used for the Respondent ' s Boschendal wine in a way that suggests to the general wine consumers that wine has been produced by Boschendal since 1685, then the use of the mark would be calculated to deceive or cause confusion and therefore ought to be refused. In essence, so the submission went, the underlying issue is whether or not the mark "A CAPE ICON SINCE 1685" when used for wine, conveys to the general public the impression that Boschendal has been wine producers or trading in winemaking since 1685. If it does so, it is deceptive or confusing and is likely to deceive or confuse the general public and, therefore, liable to be refused registration in terms of applicable legislative precepts. The primary consideration, when stretched to its logical conclusion, revolves simply around the inquiry whether the mark sought to be registered is false or deceptive, in particular, to the goods for which registration of the mark has been applied.

[7] It was submitted on behalf of the Respondent, on the other hand, that where a mark is alleged to be inherently deceptive or confusing or its use or intended use is likely to deceive or cause confusion, such deception or confusion must be such as to mislead the interested consumer or member of the public  into a false apprehension that a certain state of affairs exists when in fact it does not, in casu, that wine making commenced on the farm Boschendal in 1685, when it did not. Consequently, the intended mark was not likely to cause a false impression or deception nor confusion calculated to adversely affect the consumer' s economic behaviour.

[8] I need to remark, though in passing, that the report containing  the history of Groot Constantia as allegedly researched by Dr De Wet attached as Annexure JNl to the Opponent 's  founding  affidavit(of Jean Naude) has already been expunged by the Registrar during the initial opposition proceedings on 14th September 201 1 . That part of the evidence by the Opponent on the history of Groot Constantia shall, for the purposes of this judgment, be considered pro  non scri pto.

[9] GROUNDS OF OPPOSITION:

The grounds upon which the Opponent resists application for registration by the Respondent of the mark can be summarised as follows:

9.1             The Respondent's website Trade Mark extract www.boschendalwines.com reveals that it is the owner of Boschendal and it is using A CAPE ICON SINCE 1685 in relation to its wines as indicated by Annexures JN2 and JN3 attached to the Opponent's  founding  affidavit³( "FA") .

9.2              It was submitted on behalf of the Opponent that the mark, if allowed to proceed to registration, would render it unregistrable in terms of certain provisions of Section 10 of the Act.

The Opponent contended that in the event the  intended  trade mark proceeds to registration, it would offend against  the provisions of Sections 10( 12) ; 10( 13) and 10(4) of the Act. I now proceed to consider each sub-section seriatim  as follows:

9.3       Section  I0 of the Act provides:

"The following marks shall not be registered as trademarks or, if registered, shall, subject to the provisions of sections 3 and 70, be liable to be removed from the register".

Section 10(12):

"a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons".

Section  10(131:

"a mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion".

Section  10(4):

"a mark in relation to which the applicant for registration has no bona fide intention of using it as a trade mark, either himself or through any person permitted or to be permitted by him to use the mark as contemplated by Section 38".

9.4              At the heart of the contentions advanced on behalf of the Opponent, is the submission that the use of the mark as is, may be construed as claiming that winemaking  activities commenced on the farm Boschendal estate in 1685, and would accordingly be inherently deceptive or likely deceive or cause confusion to an average reasonable member of the public.

Furthermore, it was submitted that a culpable impression may be left in the mind of the consumer that the wines under Boschendal mark in relation to which the mark will be used have been made since 1685 and that it is an iconic wine since 1685, and yet that alone, could be deceptive or confusing.

9.5              Fortifying its submission on this aspect, the Opponent submitted further that the Respondent acknowledged that winemaking activities did not commence on Boschendal since 1685, and furthermore, the respondent had undertaken during one of their meetings not to use the date 1685 to create falsehood that the wine was made at Boschendal from 1685. Because the said mark is not true in relation to Class 33 goods, in particular wine, it should therefore be refused as it might be thought to have an elevated status of an iconic wine since 1685. The same argument was said to be equally applicable in relation to the manner in which it has been used, that it would likely cause deception or confusion, even the use thereof after registration.

9.6              In addition, the Opponent contended that what Annexure "JN2" intended to convey was that A CAPE ICON SINCE 1685 is Boschendal wines, and the use thereof which depics that phrase was to be used with intention of using the mark as a badge of origin for Boschendal wines.

9.7              It was ultimately argued that because the Respondent has allegedly acknowledged that winemaking activities on the farm did not commence in 1685, and in the light of the undertaking given, there can be no use of the mark in good faith within the purview of section 10(4) of the Act.

It was against the backdrop of these factors that the Opponent submitted that the Respondent failed to demonstrate that the mark under consideration  qualifies for registration and accordingly, the registration ought to be refused.

[10] Counsel for the Respondent had a different approach. He, from the onset, contented that the evidence  sought  to be led was  because of its inadmissible character already been expunged,  and  that  the present proceedings be determined on the record as it  currently stands, particularly after the same had been struck out by the Registrar on 14 September 201 1 . Be that as it may, it was submitted that although the burden to prove that its mark is registrable rests on the Respondent, that fact alone does not relieve the evidential yoke thrust on the Opponent from adducing at least a  thread  of  evidence  that prima  facie proves that the Respondent ' s mark offends against either the provisions of Section 10(4) , Sections 10(12) or 10(3) of the Act, as the  case  may be.

[11] It was submitted further that the test in relation to the question whether a particular mark is deceptive or confusing or its prospective use is likely to deceive or cause confusion, is whether the mark or its use, as the case might be, was or is in fact likely to mislead reasonably well­ informed and circumspect consumers and consequently, affect their economic conduct.

[12] It was submitted further that Annexures  "JN2"  and  "JN3"  are considered irrelevant as they were used in relation to the old advertising campaign which, by agreement, had  since  been abandoned by the Respondent. To that extent, so the argument unfolded, the Opponent failed to present facts or evidence to support the assertion that the mark, if allowed to proceed to registration, will create the erroneous and deceptive impression that:

(a)           the wine has had elevated status from 1685, and

(b)           will induce consumers into believing that Boschendal wines under the offensive mark's use, have been made since 1685 and, therefore that it has been an icononic wine since 1685.

In the circumstances, the Respondent submitted in the ultimate analysis that, the Opponent ' s assertions while parroting the legal principles, go no further than proving primary facts from which  the  requisite inferences can be drawn that the mark itself evokes the false impression in the consumer ' s mind which could be said to be deceptive or confusing.

[13] In addition to the foregoing  contentions,  the  Respondent  submitted that while the phrase is used in relation to wines produced by Boschendal, it does not in itself describe these wines, nor does it indicate when any of its wine was produced, but clearly refers to the date on which Boschendal was established.

It was further submitted that the use of this mark or statement was consistent with other trademarks associated with the Respondent, for an example,

13. l             2005/24857 ANNON 1685 in Class 33; (alcoholic beverages except beers)

13.2             2007/00408 Boschendal 1685 label in Class 33;

13.3             96/06430 Icon in Class 33

Accordingly, the Respondent ' s contention is that the evidential burden to be discharged by the Opponent was that  it  had  to  adduce evidence, sourced from the public as to how they perceived the mark before it could be characterized as deceptive,  misleading  or confusing. This is particularly so in that trademarks are all about public perception.

[14] The Respondent contended further that the mark in question was filed in good faith and with the intention of using the mark as a badge of origin for Boschendal wines which invariably will identify the estate from which the wines originate. Accordingly, neither the use of 1685 nor indeed the mark itself, if allowed, would suggest that 1 685 is the year wine making commenced at Boschendal. It merely signifies the year in which the Boschendal farm was founded, which renders the statement factually correct. The assertion by the Opponent that the use of the mark by Respondent signifies the year in which wine making commenced is unfounded. The opponent has not proved  even  at prima facie level the mark as signifying that wine making began on the farm in the year 1685.

There is, therefore, nothing inherently  misleading  in  the  mark  in question, submitted  the  Respondent ' s counsel.

[15] Having had regard to counsel's submissions, the following factors are found to be common cause:

15.1            The Trade Mark Applicant (DGB(Pty) Ltd)  had applied to the  Registrar for registration of  the mark A CAPE ICON SINCE 1685 on 20 October 2008;

15.2            That, during February 2010, a meeting took place between Dr Ernest Messina the Chairman of Groot Constantia Trust and Mr Timothy Randoph Hutchninson, Executive Chairman and Managing Director of DGB  ( Pty  Ltd  at  Groot  Constantia,  Western  Cape⁴ .     It was  at  this meeting  it appears,  that  the  parties had orally agreed, among other things to the following⁵:

15.2.1 "We will not run our "heritage campaign again",

15.2.2 We have never and will never claim that we have been ' making wine at Boschendal since 1685.

15.2.3 Regarding 1685 as per the title deed we will refer to the fact that this farm was founded/ Anno on this date;

15.2.4  --------------------------;

15.2.5 Also, "Icon" is a registered trademark of ours"

15.3            The Respondent DGB( Pty) Ltd is the owner of or proprietor of Boschendal trade mark, and it is using the contested mark⁶.

15.4            In order to determine whether or not a mark is inherently deceptive or confusing, it must not be viewed in isolation or in abstract, but must be viewed against the goods applied for  and in the general  context  of the trade mark concerned. This principle is accepted as the correct legal position by the parties.

15.5           There is also no dispute that the trade mark A CAPE ICON SINCE 1685 is intended to be registered in  class  33  in  respect  of  "alcoholic beverages ( except beers) " by the Respondent in respect of its Boschendal wines⁷ •

[16] The balance of the issues are, however, in contestation and require a closer scrutiny. In certain instances, it seems to me, it is accepted that the denial by respondent, in casu, ("DGB") of a fact alleged by the applicant ( Groot Constantia) may not be such as to raise "a real, genuine or bona fide dispute of fact⁸.

[17] It is trite principle, but also common cause that the onus is thrust upon an applicant for the registration of a trade mark to establish that the proposed trade mark qualifies for registration in terms of the Act.

[18] In Bristol Laboratories Inc v Ciba Ltd⁹ , the question of onus was dealt with in the context of the then applicable provisions of Sections lOS and 140 of the Patents, Designs, Trade Marks and Copyright Act 9 of 1916. It was held there that the applicant must show "that there is no reasonable possibility of confusion arising from his choice of a word or words" (ibid at 870E) .

The conclusion, it appears, was based upon the wording of Section lOS(the precursor of Section 17(1 ) ) which prohibited the registration of a trade mark which so nearly resembles the other trade mark as to be "calculated to deceive", as well as on the wording of Section l40( the precursor to Section 16( l ) ) would be "likely to deceive".

[19] Section 10(12) of the present Act 194 of 1993, however, do not make reference to the phrase "calculated to deceive", but employ the test "inherently deceptive" or the use of which would "likely to deceive or cause confusion".

[20] In the case of The  Up john   Company  v  Merck   and  Another ¹⁰  the  Full Court per Harms J( as he then was) stated that:

"In spite of the reasoning in Bristol Laboraties Inc v Ciba Ltd , supra , I am of the view that, in terms of the provisions of the Act, the word "likely" must  be taken to  refer to  a "reasonable   probability"(own  underlining) .

[21] Turning to the facts at issue in the present application, the real issue indeed is whether the registration of the mark A CAPE ICON SINCE 1685 in Class 33 would create a "reasonable probability" of deception  or confusion or the use of which would likely to deceive or cause confusion, within the purview of Section 10( 12) and l0( 13) of the Act.

[22] The interpretation of the provisions of Section 10(4) of the Act stands, in my view, on a different platform. As to whether a mark in relation to which the applicant for registration has no bona fide intention of using it as a trademark either by himself or through a third party, is a matter which requires, to my mind, some special set of circumstances of which the Opponent carries evidential burden to disprove lack of bona fides on the part of the respondent. It cannot in my view, therefore, reasonably be expected of the respondent to carry the evidential yoke in this instance to demonstrate its bona fide intention of using the mark, once it has discharged the onus that its registration would not be offensive. To do so, would be raising too high the bar in this regard, so to speak.

[23]     APPLICABLE LEGAL FRAMEWORK:

The position governing registrability of trademarks  is  regulated  under part Ill, in particular, Section 9( 1 ) and 9(2) of the Act.

Section  9(1) of the Act provides:-

"In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a person in respect of which it registered or proposed to be registered from the goods or services of another person either generally or where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations".

Section 9(2) of the Act provides:

"A mark shall be considered to be capable of distinguishing within the meaning of subsection( l) if, at the date of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by reason of prior use thereof ".

[24] The Opponent on the grounds set out in paragraphs 9(9.1 to 9.7) supra, opposes the application having placed considerable reliance on the provisions of section 10( 12), 10(13) and 10(4) of the Act.

[25] In the present instance, the Opponent contended in the main that the mark A CAPE ICON SINCE 1685 in Class 33 will, if permitted to be registered, inherently deceive or confuse the consumer and therefore, adversely affect their economic behaviour. The Respondent, on the contrary, submitted that the real test to establish whether or not a particular mark is deceptive or confusing or it is likely to deceive or confuse when  used, is in fact to establish whether it is likely to mislead a notional customer of average intelligence, having proper eyesight and buying with ordinary caution.

[26] In the unreported case of Orange  Brand  SeNices  Ltd  v Account   Works Software (Pfv )  Ltd1¹¹ Nugent JA, stated in para: 10 that:

"The authors of Kerly's Law of Trade Marks and Trade Names¹² pointed out that whether there is a likelihood of deception or confusion, is a question of fact and for that reason, decided cases in relation to other facts are of little assistance, except so far as they lay down any general principle. While I found various cases referred to by counsel for Account Works Software informative, each was decided on its own facts, without laying down any new principles, and I do not think it is helpful to refer to them".

The learned Judge stated further in Para 14 that:

"But ultimately a case of this kind, as pointed out in Cowbell, comes down to a value judgment to be made by the Court, dictated by the overall impression created by the marks, given their respective characteristics and the circumstances in which they are likely to be encountered, instead of being drawn into excessive analysis".

[27] On a closer scrutiny of the statement of the mark A CAPE ICON SINCE 1685, I am of the view that an average consumer or purchaser of Boschendal wine, who exercises reasonable care and circumspect, having proper eyesight, would probably construe or interpret the mark on a variety of ways for instance:

27.1          That, the estate Boschendal has been in existence since 1685, or

27.2          That, the farm Boschendal has been founded in 1685 in the Cape, or

27.3          That, because of the date 1685, Boschendal estate is icononic in the  Cape. 

[28] To that extent. for it to be said to be reasonably probably deceiving or confusing or likely to deceive or confuse, some evidential burden would be required to be discharged by the Opponent, by setting out substantial facts or evidence that reveal that the consumer out there is deceived or confused by the mark if used in that class. No such facts or evidence are apparent in this instance.

[29] Because the said mark does not specifically state that, for instance, A CAPE WINE ICON SINCE 1685, I find it hard to agree with the Opponent ' s submission that Boschendal would be construed to be the only wine-making producer on the farm or in the Cape since 1685.

[30] In the  Orange   Brand   Services   Ltd's  case  supra, the  Court  cited  with approval a  passage  from  the  decision  in Plascon-Evans  Paints  Ltd v Van   Riebeek   Paints{Ptv )    Ltd¹³    which    although    it    concerned infringement only, it is not a material distinction to this case.  Corbett  JA expressed  the following:¹⁴

"It is not incumbent upon the plaintiff to show that every person interested or concerned(usually as 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----as to the origin of the goods or existence or non-existence of such a connection."

[31] Following the aforegoing dictum, it follows that parroting the provisions of Section 10( 12) of the Act per se would not avail the Opponent. In my view, special circumstances based on credible evidential survey of how the general consumer would be deceived or confused, would be required. In the present instance, no such facts or evidence were advanced on behalf of the opponent in opposing registration. Such evidence, needless to say, would have been discharged on a balance of probabilities. I must remark further that, nowhere in its opposing papers or argument did the Opponent produce at least for once a comparable mark likely to be offended by registration of the intended mark sought by Respondent.

[32] The other contention was that the Respondent had no bona  fide intention to use the mark as a trade mark either itself or through a third party permitted by it. This submission relates to Section 10(4) of the Act.

I must remark that, save for the decisions that already gave guidance on the onus been cast on a trademark applicant to prove that registration would not be offensive, (The Upjohn Company, supra) I was unable to come across any authority that has already settled the issue of evidential burden resting on a party that allege that a trade mark applicant has no bona fide intention of using it as a trade mark within the meaning of Section 10(4) of the Act. If, however, there is,(of which I am unaware of its existence) counsel for the Opponent who relied on Section 10(4) as one of its arsenals, did not draw it to my attention.

In that regard, I may as well formulate a proposition that where an opponent of a trademark registration relies on the provisions of Section 10(4) of the Act to oppose registration, the evidential burden ought to shift and rest on that opponent. In the present instance, no  such evidential burden was discharged by the  Opponent¹⁵.  The Respondent, on the contrary, emphatically averred that it has applied to the Registrar to register the trade mark under consideration in relation to goods in class 33 and "intends to use it as a trademark in relation to goods that fall into the class in order to indicate the origin of the wines, particularly when used with the mark BOSCHENDAL". To that extent, so the submission went, the "opponent can have no personal knowledge of the intentions of DGB"¹⁶.

[33] In the light of the foregoing submissions, it follows that  in  order  to negative respondent 's bona tides, the  Opponent  must  have  evinced facts or substantial evidence to establish some elements of mala tides if any, on the part of the  Respondent. The Opponent ' s suggestion, therefore, that the Respondent had "agreed" not to  use  the  intended mark, is with respect, factually incorrect and  misplaced.  What the parties, it appears, agreed  upon, with reference to  the  Boschendal estate,  was  merely  to  "indicate   the   origin"  of  the  farm  of  its  current wine activities as being from Boschendal¹⁷.

[34] The evidence conversely in support of the  origin  of  the  farm Boschendal as being 1 685, emanates from the following sources as pointed out by the Respondent:

34. 1  The research as contained in Prof. Dirk Van Zyl' s Confirmatory Affidavit¹⁸, a consulting researcher, author and an expert in agricultural economic development  and  history  of  Western Cape, (30 years ' experience) , concluded by stating that "my research supported by credible documents,  has  indicated beyond reasonable doubt that  the  farm  Bossendaal  was granted to Jean de Long in 1685" .(P56 thereof) . The learned author  also provided to the Court  a very intriguing and wealthy knowledge of history of the Western Cape wine lands¹⁹.

34.2   A copy of the farm' s old Title Deed dated 24 January 1713 couched in original Dutch language (SG No: 10/1713) is prima facie evidence in support of Prof. Van Zyl' s findings and conclusions about the origin of the farm Boschendal as it is now called which dates back to 1685, even though formal endorsement occurred many years later in favour of Jean  de Long in January 1713.

The submissions made by the opponent about the delay of roughly 28 years between the date of acquisition and registration of transfer is, to my mind, neither here nor there.

The same farm was subsequently acquired by Cecil John Rhodes as "The Rhodes Fruit Farms Ltd" trading as Rhodes' fruit farms²⁰ in years that followed.

34.3   In recognition of the farm' s history of its existence, the South African Heritage Resource Council ("SAHRA") proclaimed Boschendal Founders Estate as a National Heritage site²¹.

[35] Based on these factors, the  Respondent  submitted  furthermore  that there is nothing in the contentions advanced by the Opponent to suggest that it will use the said trade mark to illustrate that it has been making wine  at  Boschendal  since  1685  in contravention  of  Section 10( 13) of the Act.

[36] It was not disputed by evidence to the contrary that the Respondent is the owner of the trademark registrations referred to in paragraph 13, above. Apart from that, the  Opponent  has not elected to object  to the use of any of those trademarks incorporating 1685 and Boschendal, nor to the registration of the mark ICON when registered in July 1999. Consequently, the Opponent would have no sound reason to allege or show that the use of the mark when registered will be unlawful, contra bonos mores or be likely offensive to any class of persons. I find that there is considerable force in this submission.

[37] On the caption "ICON", which it seems to me is really a thorny issue in the Opponent ' s flesh, I thought assigning to it an ordinary dictionary meaning to the word would unravel the true intention of the applicant seeking registration of the mark. The word, originating from the mid-l71h Centuary from Latin iconicus , freely translated in English means "relating to or of the nature of any icon", which is a noun.  The definition according to Collins English Dictionary ( l Qth Edition) being a "person or thing regarded as a symbol of a belief, nation, community or cultural  movement".

[38] Given the ordinary  dictionary  meaning  assigned  to  the word  "icon" and applied as a canon of construction in interpreting its true ordinary meaning within the context of the mark of Boschendal, and the fact that SAHRA had proclaimed the farm as a National Heritage site, it seems to  me plain, therefore, that Boschendal has a reputation associated with its historical existence 1685 of which is the date of its origin. It being an icon in itself, I am inclined to hold that it has become iconic in South African history, in particular, that of The Cape winelands cultural landscape as proclaimed by SAHRA. Its declaration in itself as an historic landmark suggests, in my view, that Boschendal is seen as an "icon" in relation to its foundation since 1685. I reiterate that on a semblance of the contentions made by the Opponent, there is nothing demonstrated to gainsay that registration of the mark if or when used for the goods in Class 33, would be indicative to the consumer as to when winemaking began at Boschendal. This is particularly so when regard is had to the definitive  undertaking  the  Respondent  made to the Opponent that the mark will only be used in relation to the origin of the estate and not to the year when wine making began there.

[39] Accordingly, the primary consideration in a dispute such as the present one, is to determine whether there are adequate grounds established by an opponent of a trademark registration that if  permitted  to proceed to registration, the mark would be repugnant to the provisions of Section l0 of the Act the Opponent relied upon.

[40] For the purposes of this opposition, the grounds on which the Opponent contests registration of the mark are limited, by and large, to the provisions of Section 10( 12) , 10(13) and 10(4) only of the Act. Nothing else has been projected as an apparent comparable mark owned by it which if registered, would be inherently identical to its registered trade mark or so similar thereto that the use thereof in relation to goods or services  would be likely to deceive  or cause confusion. The crux of the Opponent's objections is in relation to the alleged deceit or confusion or the manner of use would be likely to cause deception or confusion.

As to whether the Opponent 's contention in relation to  the Respondent ' s bona fide use of it as a trademark, is as I have already indicated, a matter that requires a strong evidential burden of proof to discharge.  Such evidential burden clearly rests on the Opponent.

I find it hard, therefore, to find that the mark sought to be registered would if permitted, be offensive against the provisions referred to. The objections on the grounds of Sections  l0( 12), l0( 13) and l0( 4) of the Act   accordingly   falls   to  be  rejected.    See,  in  this  regard  New   Media Publishing(Pty )  v  Eating  Out  Web  Services   cc²² on   likelihood   of deception or confusion as a requirement for an infringement.

[41]  Section l0(12) and l0( 13) import the elements of deceit or confusion as a yard stick  to determine  non-registrability  or otherwise  of a trademark. In order to be registrable, however, a trade mark is required to  be capable of distinguishing the goods or  services  of  a  person  (persona iuris ) in respect of which it is registered from the goods or services of another.  Such a mark is considered to be capable of  distinguishing if it is distinguishable  by reason of prior use thereof.

In this particular instance, no amount of evidence was presented to deny the respondent ' s prior use of its wine since the date of registration of the trademarks referred to in paragraph 13, above, that is, prior registered marks, the existence of which the Opponent does not dispute. Consequently, I take the view that there  is no reason why registration of the mark sought to be registered should not proceed. The Respondent has, in my opinion, managed to satisfy the onus thrust on it that there is no likelihood of deception or confusion ensuing.

[42] On a conspectus of the facts in this matter and bearing in mind the peculiar circumstances of these proceedings, I hold that, in the absence of a credible and reliable evidence, I  am  constrained  to come to the conclusion that the Opponent has succeeded  in discharging the evidential burden to establish prima facie that the use of the mark A CAPE ICON SINCE 1685  if permitted  to proceed to registration, would likely deceive or  cause confusion particularly with regard to the history of Boschendal viewed in relation to the origin of their wine.

In the result the Opponent 's application, as matters stand, falls to be dismissed.

I accordingly make the following order:

ORDER:

1. .  The   Opponent's   application,   opposing   the   Trade   Mark   Applicant ' s registration A CAPE ICON SINCE 1685, is dismissed with costs.

2. The Trade Mark 2008/24795: A CAPE ICON SINCE 1685, be registered.

________________

M.G PHATUDI

ACTING  JUDGE OF THE HIGH

COURT, PR ETORIA

REPRESENTATIONS:

Counsel for Opponent                          :           Adv. B.J Vaughan

Instructed by                                         :           Werksmans Attorneys

                                                                                   Stellentia Street, Stellenbosch

 

Counsel for Respondent                       :          Adv. G.E Morley SC

Instructed by                                        :           Adams & Adams Attorneys

                                                                                   Lynnwood Bridge

                                                                                   Pretoria

Date  heard                                            :              13 August 2015

Date of Judgment                                   :              23 September 2015

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