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IN THE HIGH COURT OF SOUTH AFRICA

(CAPE OF GOOD HOPE PROVINCIAL DIVISION)

Case Number: 4656/04

In the matter between:

RAMSAY, SON AND PARKER (PTY)

LTD Applicant

and

MEDIA 24 LTD First Respondent

NEW MEDIA PUBLISHING (PTY)

LTD Second Respondent

JUDGMENT DELIVERED: 26 JANUARY 2005

MOTOLA J

1. Applicant is the publisher of Getaway magazine. First respondent is the proprietor of a magazine title Wegbreek. A magazine bearing that name is published by second respondent in terms of an agreement between the two respondents.

2. Applicant alleges that respondents are infringing a registered trade mark and are passing off Wegbreek as emanating from applicant or is associated with Getaway. It asks that they be interdicted from continuing to do so and for ancillary relief.

3. Respondents have instituted a counter-claim in which they have joined the Registrar of Trade Marks.

4. Getaway magazine was first published in April 1989 and has appeared monthly ever since. All of the articles and advertisements are in English but more than 40% of its readers in one year were Afrikaans-speaking. The contents of the magazine relate to outdoor leisure activities, holidays and related matters.

In 1992, applicant launched an annual show called the Getaway show where suppliers of outdoor products display their wares and where travel and tourism facilities are marketed. Subsequently, applicant launched a range of Getaway Gear clothing and Getaway books and commenced publishing material on a website www.Getawaytoafrica.com which can be accessed also from www. Geta way.co.za.

5. On 23 January 1992 applicant applied in terms of the Trade Marks Act of 1963 ("the repealed Act") for the registration of a trade mark Getaway in Class 16. The trade mark was registered on 21 March 1994 under No. 92/0456. That is the registered trade mark relied on in this application. Class 16 includes newspapers and periodicals. Subsequently three other applications for trade marks were made by applicant, in Class 35, 39 and 42 respectively. They were duly registered.

6. On 16 June 2002, respondents launched a magazine similar in content to Getaway under the name Veld Toe. Four quarterly issues followed, the last of which was published in September 2003. In the last issue of Veld Toe it was announced that the magazine would thenceforth be published bi-monthly and its name would change to Wegbreek.

7. During October 2003, applicant was informed by respondents that it intended to publish a magazine for the outdoor leisure market and that it would be entitled Wegbreek. Applicant was assured that Wegbreek would not compete with Getaway, but would be aimed at the cheaper end of the market.

8. The first issue of Wegbreek was published in April 2004. Respondents have applied for Wegbreek to be registered as a trade mark.

TRADE MARK INFRINGEMENT

9. Applicant relies on section 34(1)(a), alternatively on section 34(1)(c) of the Trade Marks Act 194 of 1993 ("the Act"). Section 34(1)(a) of the Act provides as follows:-

"34. Infringement of registered trade mark-

(1) The rights acquired by registration of a trade mark shall be infringed by -

(a) the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;..."

It is common cause that respondents use the name Wegbreek in the course of trade in relation to goods in respect of which applicant's trade mark is registered and that they have not been authorised to do so. What remains to be determined is whether the name Wegbreek so nearly resembles the registered trade mark Getaway as to be likely to deceive or cause confusion.

10. In determining whether or not there is a close resemblance between two marks, the court is confined to making a comparison between them and to ignore extraneous factors. The general get-up and content of the two magazines must not be taken into account.

See Webster and Page South African Law of Trade Marks 4^th ed para 12.8.5.

The names Getaway and Wegbreek do not look or sound alike. However, applicant contends that Wegbreek resembles Getaway as it is a translation of Getaway into Afrikaans and conveys the same idea or concept as Getaway which is of considerable significance in a multilingual country such as South Africa when comparing word marks in different languages, one of which may be the translation, or near translation, of the other.

See Lawsa First Reissue, vol 29, para. 133

11. Mr Kotze who deposed to applicant's founding affidavit has consulted a number of Afrikaans dictionaries and an English-Afrikaans dictionary. He concedes that in none of the dictionaries was he able to find a direct translation of the English noun Getaway. In my view, the question as to whether or not Wegbreek is a direct translation of Getaway must be determined not so much by reference to lexicographers but by attempting to determine how the average South African who understands or uses both Afrikaans and English would answer the question. At least one reader of Wegbreek, in a letter published in its April-May 2004 issue thought that Wegbreek was "stomp en sommer net 'n vertaling van Getaway". The editor of Wegbreek replied that the two magazines would not cause confusion "al beteken dit dieselfde".

In my view, the average South African would regard Wegbreek as a close translation of Getaway.

Applicants contend that not only is Wegbreek a translation of Getaway, but conveys the identical idea - that Wegbreek is, like Getaway, a magazine for those interested in outdoor leisure activities, holidays and related activities. In other words, that Wegbreek, like Getaway, will be of interest to persons who want to get away or Wegbreek from their daily toil or the routine of the suburban resident.

12. I agree with that contention.

Furthermore, in my view to use the words of Corbett JA (as he then was) in the locus classicus on the subject, a substantial number of persons of average intelligence, having proper eyesight and buying with ordinary caution will probably be deceived or confused into believing the Wegbreek is an Afrikaans version of Getaway.

See Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984(3) SA 623 at 640G-641B.

My view is reinforced by the evidence of actual confusion. Although such evidence does not relieve a court of determining the issue itself, it carries considerable weight.

See John Craig (Pty) Ltd v Dupa Clothing Industries Ltd 1977 (3) SA 144 at 151-152.

During April 2004 two representatives of applicant attended the Klein Karoo Nasionale Kunstefees in order to promote Getaway magazine and Getaway books. A number of visitors to the show sought information on what they referred to as the "new Afrikaans Getaway magazine". Applicant's advertising sales staff have received queries as to the costs of advertising in the "new Afrikaans Getaway".

Furthermore, on 11 October 2004, in a broadcast on a local radio station, the announcer referred to Wegbreek as the Afrikaans version of Getaway.

13. Respondents contend that applicant has acquiesced in their use of the name Wegbreek and is estopped from objecting to their continued use of that name.

The facts on which respondents rely are not in dispute. During October 2003, when Mr Eebes, applicant's managing director, was informed of respondents' decision to launch Wegbreek, he raised no objection to the use of that name. Nor did applicant raise any objection to the respondent's intended use of that name in its comments on the matter on its website on 13 October 2003 and on 29 March 2004 or in the editorial in the April 2004 issue of Getaway, or in an interview by Mr Eebes with the media.

14. In Brunkloof (Pty) Ltd v Horseshoe Caterers (Green Point) Pty Ltd 1974 (2) SA 125 (C) at 137 A-F Friedman AJ (as he then was) quoted with approval the following dictum of Watermeyer CJ in Collen v Rietfontein Engineering Work 1948 (1) SA 413 (A) at 422.

"Quiescence is not necessarily acquiescence and that 'conduct to constitute acceptance must be an unequivocal indication to the one party of such acceptance' ".

The learned judge rejected the defence of acquiescence. The evidence before him was that the managing director of the applicants, the owner of a restaurant, over a period of several months had frequently visited the restaurant conducted by the respondent and had raised no objection to the respondent's use of the same name as that used by the applicant. That evidence was far weightier than the evidence relied on by respondents in this matter. In my view, applicant's failure to object the use of the name Wegbreek and to wait until it could examine Wegbreek when it eventually appeared falls far short of an unequivocal indication of acquiescence particularly in the light of the assurance given to applicant that Wegbreek would not compete directly with Getaway and would be aimed at a different market.

The defence of acquiescence cannot be upheld.

15. Nor can the defence of estoppel succeed. It is trite that in order to establish that defence respondents have to prove that as a result of applicants
representations they have acted to their detriment. In September 2003, in the last issue of Veld Toe, respondents announced their intention to use the name Wegbreek. The conduct relied on by respondent to found this defence occurred afterwards.

PASSING OFF

16. The elements to be established in order to prove a passing off have been succinctly described by Harms JA as the "classical trinity of reputation (or
Goodwill), misrepresentation and damage".

See Caterham Car Sales and Coachworks Ltd v Berken Cars (Pty) Ltd [1998] ZASCA 44; 1998 (3) SA 938 (SCA) at 948A.

REPUTATION

17. In support of its claim to a reputation, applicant has stated that it was a pioneer in the field, that Getaway has been published every month for more than 15 years during which its circulation and the number of advertisements it carries have grown steadily, that the Getaway show, first held in Johannesburg is now held in several cities, and that is internet website is accessed by an increased number of people, all of which have led to ever-increasing revenue. Getaway is advertised on television and radio. It has won many awards, including awards for being an outstanding publication in the fields of leisure, entertainment, travel, tourism and wildlife conservation.

Respondents deny that applicant has a substantial reputation, but have not denied any of the evidence summarised above. Their denial cannot be given any weight. I have no doubt that applicant enjoys a substantial reputation.

MISREPRESENTATION

18. The test to be applied in determining this element of passing off in this matter is whether the get-up or name or other features of Wegbreek are such that there is a reasonable likelihood that members of the public would be confused into believing that Wegbreek is associated with Getaway or, more specifically, that it is an Afrikaans version of Getaway, thus leading to a diversion of custom from applicant to respondent.

See Capital Estate & General Agencies (Pty) Ltd v Holiday Inns Inc 1977 (2) SA 916(A); Adcock Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434(W); Reckitt & Colman SA (Pty) Ltd v SC Johnson & Son SA (Pty) Ltd 1993 (2) SA 307(A).

19. In applying that test, the court is not confined to comparing the two names. It may, indeed it must, look at the get-up, the lay-out and the contents of the two magazines. An examination of several issues of the two magazines reveals many similarities between them. As I have found above, Wegbreek is virtually a translation of Getaway. Both are glossy colour publications of comparable size and weight. Both are aimed at the same readership. The contents of each, if translated, would quite appropriately fit into the other. They share many features. Although some of the features such as the letters to the editors page are to be found in most magazines, one feature in Wegbreek, "Moegoe van die Maand" is a blatant copy of Getaway's "Mug of the Month" - and is almost plagiaristic. Furthermore, apart from the title and the language used, there is nothing to distinguish Wegbreek from Getaway.

20. In paragraph 12 above, in dealing with the trade mark infringement, I found that there was a likelihood of customers being deceived or confused. That finding was based on a comparison of the two marks only. Any doubt as to whether that finding was correct dissolves if one take the other similarities between the two magazines referred to above, into account.

DAMAGES

21. The likely confusion in the minds of customers will lead inevitably to a diversion of their business from applicant to respondents and thereby cause
damage to applicant.

THE COUNTER APPLICATION

22. During argument, respondents' counsel moved only for an order that applicant's trade mark registration number 92/00456 be endorsed with a disclaimer in terms of section 15 of Act 194 of 1993 in the following terms:-

"Registration of this mark shall give no right to the exclusive use of the word Getaway in its dictionary meaning separately and apart from the mark."

Counsel did not pursue the further relief respondents initially sought. He also did not move for an amendment to respondents' Notice of Counter-Application, notice of which had been given, or oppose an application by applicant to strike out.

23. Section 15 of the Act empowers the court to endorse a trade mark with a disclaimer if the trade mark is not capable of distinguishing the goods of the proprietor of the trade mark from the goods of another. In view of respondents' abandonment of the relief initially sought, I do not find it necessary to decided whether the trade mark Getaway is or is not so capable but will assume in favour of respondents that it is not.

24. Applicant's trade mark was registered in terms of the repealed Act. Applicant contends that as the trade mark was registered more than 7 years ago, it was immune to attack by virtue of the provisions of section 42 of the repealed Act,

which provides that the original registration of a trade mark shall be taken to be valid in all respects after the expiry of 7 years.

The section protects the validity of the original registration and not is continuing validity and does not disentitle respondents from claiming a disclaimer.

See Mars Incorporated v Cadbury (Swaziland) (Pty) Ltd 2000 (4) SA 1010 (SCA) at para 10; Pleasure Foods (Pty) Ltd v TMI Foods t/a Megaburger 2000 (4) SA 181 (T) at 185B-I.

25. It is established that the entry of a disclaimer is discretionary and should not
be granted without good reason.

See Webster and Page South African Law of Trade Marks 4 ed para 9.11; Heublin Inc v Goldin Fried Chicken 1982 (4) SA 84 (T) at 90B; Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd [2000] ZASCA 2; 2000 (2) SA 771 (SCA) at 780-81.

26. In my view, it is highly improbable that anyone would be inhibited by the trade mark from using the words Getaway or get away. In my view, no one using those words or any one of the many ordinary words used as titles of magazines and newspapers needs the protection of a disclaimer. Otherwise, as was said in a passage quoted by McReath J in Heublin at 90C the result would be the "placing of a vast crop of unnecessary disclaimers".

In my view, respondents have not established a need for the disclaimer.

COSTS

Applicants are entitled to the cost of the application, of the counter-application, of its application to strike out and of its opposition to respondents' notice of amendment.

Applicant is also entitled to the costs of its application under Case No 4772/04 to join second respondent. It was obliged to approach the court because of first respondent's failure to disclose the relationship between the respondents until their replying affidavits were filed.

The following order is granted

1. First and Second Respondents are interdicted from infringing the Applicant's rights acquired by the registration of the Trademark No 92/0456 GETAWAY by -

1.1 Using, in relation to any goods in respect of which the said trade mark is registered, the mark "GETAWAY" or any other mark so nearly resembling the aforesaid registered trade mark as to be like to deceive or cause confusing, including the mark "WEGBREEK".

2. First and Second Respondents are interdicted from passing off their business or products as those of the "GETAWAY" or any mark confusingly or deceptively similar thereto, including the mark "WEGBREEK".

3. First and Second Respondents are interdicted from passing off their business or products as those of the Applicant, by using, adopting or imitating the get-up and format of the Applicant's magazine, "GETAWAY", together with the mark "WEGBREEK" and particularly the use of the following title in relation to the title

of the feature in the First and Second Respondents' magazine: "Moegoe van die maand".

4. The First and Second Respondents are ordered to deliver up to the Applicant for destruction all material bearing the mark "WEGBREEK".

5. The First and Second Respondents are directed to remove all reference to the word "WEGBREEK" from all printed matter and material to which it has been applied whether as signage or otherwise.

6. The First and Second Respondents are directed to deregister the domain name www. Wegbreek.co.za or alternatively to change its name.

7. The respondents counter-application is dismissed.

8. The applicant's application to strike out is granted.

9. First and second respondents are ordered to pay, jointly and severally the one paying the other to be absolved, the costs-

1. of this application;

2. of the application to strike out;

3. of the application in Case No 4772/04;

(d) occasioned by the opposition to respondents' notice of amendment and to respondent's counter-application.

9.1 The costs awarded above are to include the costs of two counsel.

A.M. MOTALA

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