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IN THE HIGH COURT OF SOUTH AFRICA

(TRANSVAAL PROVINCIAL DIVISION)

DATE: 13/4/07

REPORTABLE CASE NO: 36037/2003 .

CORAM: EBERSOHN AJ

Defendant

In the matter between

LA CHEMISE LACOSTE Plaintiff

and

RONG TAl TRADING CC

DATE JUDGMENT HANDED DOWN: 13th APRIL 2007

JUDGMENT

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EBERSOHN AJ.

[1] The plaintiff is a French company which at all material times was the

manufacturer and distributor in South Africa of a wide range of clothing, footwear, articles made from leather, travelling bags and related accessories like belts and was also the registered proprietor in South Africa of intellectual property rights in the form of several trade mark registrations.

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[2] In class 25 (Schedule 3) to the Trade Mark Act, 1993,("the Act") it had the following registrations:

a)

b)

Registration No.: Mark:

Goods:

Filing date:

Registration No.: Mark:

Goods:

Filing date:

c)

Registration No.: Mark:

Goods:

Filing date:

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84/1030

Crocodile design (LACOSTE solid)

Clothing, including boots, shoes and slippers.

9 February 1984.

72/1627

Crocodile design (LACOSTE solid)

Dresses, skirts, shirts, trousers and sweaters; articles of sportswear and casual wear; but not including protective clothing, work clothing,m

waterproof clothing, rubberised clothing, groundsheets and footwear.

9 February 1984.

B82/4319

LACOSTE

Clothing, including boots, shoes and slippers.

9 June 1982.

[3] In class 18 (Schedule 3) of the same act it had the following registrations:

a)

Registration No.: Mark:

Goods:

Filing date:

b)

Registration No.: Mark:

Goods:

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Filing date:

79/5545

Crocodile design (LACOSTE solid)

Leather and imitations of leather, and articles made from these materials and not included in other classes; skin, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; but excluding crocodile skins and goods made from crocodile skins and imitations thereof.

17 October 1979.

B79/5546 LACOSTE

Leather and imitations of leather, and articles made from these materials and not included in other classes; skin, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

17 October 1979.

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[4] The defendant is a close corporation and is the owner of and/or importer of belts for the purpose of trade in belts.

[5] In paragraph 4 of the particulars of claim the plaintiff alleged that the defendant imported a consignment of belts to which the plaintiff's LACOSTE trademarks, more particularly trademarks numbers 79/5545 and B79/5546 had been applied in the course of trade without the authority of the plaintiff.

[6] The plaintiff relies on the protection afforded by s 34 of the Act to prevent the alleged infringement which infringement allegedly has caused and will cause the plaintiff to suffer damages.

[7] The relevant portions of s 34 read as follows:

"34(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;

(b)

the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion;"

[8] At the commencement of the trial the parties handed up a document with the

heading "ADDENDUM TO RULE 37 MINUTE" which document reads as

follows:

"The Plaintiff and the Defendant agreed to the separation of the

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issues and for the determination of the following:

'whether or not the mark CROCODILE, used by the Defendant on goods imported by the Defendant for sale in South Africa, samples of which are pictured in Annexure A8 to the Plaintiff's particulars of claim, infringes the plaintiff's registered trade marks 79/5545 and/or 72/01627 and/or 84/1030 in terms of Section 34(1)(a) and 34(1)(b) of the Trade Marks Act 194 of 1993.'"

[9] The Court granted the request and ordered the separation.

[10] It is common cause that it is for the plaintiff to allege and prove infringement of its trade mark. In this matter the Court clearly has to deal with an alleged infringement under s 34(1)(a). This provision represents the usual infringement case. It is also the simplest to establish. The plaintiff must allege

and prove:

(a) the unauthorised use;

(Beecham Group plc v Southern Transvaal Pharmaceutical Pricing

Bureau (Pty) Ltd [1992] ZASCA 207; 1993 (1) SA 546 (A));

(b) in the course of trade;

(c) in relation to goods or services of which the trade mark is registered;

(Berman Bros (Pty) Ltd v Sodastream Ltd 1986 (3) SA 209 (A));

(d) of an identical mark or of a mark so nearly resembling it;

(Miele et Cie GmbH & Co v Euro Electrical (Pty) Ltd 1988 (2) SA 583 (A); National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd

2001 (3) SA 563 (SCA));

( e) as to be likely to deceive or cause confusion.

(Plascon-Evans Paints Ltd v

Van Riebeeck Paints (Pty) Ltd 1984

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(3) SA 623 (A); Cointreau et Cie Sa v Pagan International [1991] ZASCA 89; 1991 (4) SA 706 (A); Abbott Laboratories v UAP Crop Care (Pty) Ltd [1999] 1 All SA 502 (C); 1999 (3) SA 624 (C); Cowbell AG v ICS Holdings Ltd [2001] 4 All SA 242 (SCA); 2001 (3) SA 941 (SCA)).

[11] Fault is not an element of the action and the absence of fault is also not a defence to an infringement action.

[12] It is common cause between the parties that the plaintiff's device is in the form of an open-mouthed crocodile with its tail raised very high and to such an extent that the tip of the tail points in the direction the head of the crocodile is pointing.

[13] It is not disputed by the defendant:

a)

b)

that men's belts (and accordingly those imported by the plaintiff generally, and by the defendant in November 2003) fall into class 25 of the prescribed classification under the Act;

that the trade marks referred to above are registered in class 25 and, accordingly, that the appropriate section of the Act which is relevant to this action is 34(1)(a);

c)

that the belts imported by the defendant in November 2003 bear the word mark "Crocodile" .

14. Plaintiff's counsel at the outset submitted that the two principle issue that must be determined by the court were:

a)

whether the plaintiff's device mark is known to and perceived by the

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"interested public" as a "crocodile"; and

b)

if so, whether, accordingly, the use of the word mark CROCODILE by the defendant on the goods it imported into and distributed in South Africa constituted and amounted to an infringement of the plaintiff's device marks.

[15] Defendant's counsel on the other hand submitted at the outset that what this court is called upon to decide is whether or not the use of the word mark "Crocodile" on the belts is likely to deceive or cause confusion in the mind of

the average purchaser who purchases the defendant's belts (s. 34(1)(a)).

[16] To decide the case the court would inter alia therefore have to consider who can and could be classified as members of the interested public/average buyer bearing in mind that the court itself ultimately has to decide the matter.

[17] It would appear that the deception and confusion, if there be any, must emanate from the fact that when looking at the two marks the average purchaser of average intelligence and adequate eyesight will likely be deceived into thinking that the merchandise bearing the word mark "Crocodile" as a Lacoste item or that the average purchaser would be confused as to whether or not the merchandise bearing the word mark "Crocodile" is a Lacoste item.

[18] A bundle of documents was compiled by the parties and was received by

the court as exhibit B. There was no agreement between the parties with regard

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to the evidential value of the contents of exhibit B. Everything in exhibit B

relied upon by a party thus had to be proven by evidence.

[19] The three belts being representative of the belts the defendant imported

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were admitted by both parties and were received by the court as exhibits 1, 2 and 3.

[20] Exhibit 1 is a brown leather belt. On the two bridges of the buckle of the belt the words "crocodile" and "Italy" appear in black on a golden background. On the tip of the belt there is a metal attachment with the word "crocodile" embossed on it. 0n the inside of the belt on the leather portion there appears

the words "DESIGNED IN ITALY". On the outside of the belt the word "Crocodile" appears 13 times along the whole length of the belt being embossed

into the surface thereof.

[21] Exhibit 2 is a brown leather belt on the buckle of which the word "Italy" appears on a black background and the word "Crocodile" is embossed on the bridge of the buckle. On the tip of the belt there is a metal attachment with the words "Jeans Italy" appearing in black on the metal surface. The word

"crocodile" is embossed 10 times on the outer surface of the belt along the

whole length of the belt. On the inside of the belt on the leather portion there appear the following: "DESIGNED IN ITALY NO. 6201".

[22] Exhibit 3 is also a brown leather belt on the bridge of the buckle of which the word "Crocodile" appears in black on the metal background and the word "Crocodile" is embossed on the tip of the buckle. On the tip of the belt itself there is a metal attachment with the word "Italy" appearing in black on the metal surface. Along the whole length of the belt on the outside there are letter

V's on their side. On the inside of the belt on the leather portion there appear

the following: "DESIGNED IN ITALY NO. 89304".

[23] It is convenient to also deal at this stage of the judgment with the other exhibits in the matter.

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EXHIBITS MANUFACTURED BY THE PLAINTIFF:

[24] Exhibit 4 is a blue golf shirt with long sleeves, with the plaintiff's crocodile device about 3 cm long and being of material and green in colour sewn onto the upper left side of the chest. On the inside of the collar there is a white tag with the crocodile device in green printed on it, the device being about 2 cm long and underneath it the word "LACOSTE" appears.

[25] Exhibit 5 is a powder blue sleeveless sport T-shirt with the plaintiff's crocodile device made of rubber about 10 cm long, navy blue in colour, affixed to the middle of the T-shirt. On the inside of the collar there is a white tag with the crocodile device in green printed on it, the device being about 2 cm long and underneath it the word "LACOSTE" appears in black and underneath that the word "SPORT" appears in red.

[26] Exhibit 6 is a brown leather belt with the plaintiff's crocodile device about 5 cm long and 3 1\2 cm wide fitted inside the square formed by the buckle of the belt. Both the buckle and the device are golden in colour and the device would be visible if the belt is worn. Halfway down the belt, on the inside thereof, the crocodile device and the word "LACOSTE" were embossed in an area about 4 cm by 3cm on the leather. This device and the word "LACOSTE"

embossed on the leather will not be visible when the belt is being worn because they are on the inside of the belt.

[27] Exhibit 7 is a blue fibre belt with a leather tip of about 18 cm. long. At

the end of the tip there the plaintiff's crocodile device appears in silver about

14 mm long and 8 mm high. On the inside of the leather portion the device and the word "LACOSTE" were printed in faint blue paint occupying an area about 4 cm by 3 cm. This device and the word "LACOSTE" printed on the leather

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will not be visible when the belt is being worn because they are on the inside of the belt.

[28] Exhibit 8 is a pale white paper carry bag with the plaintiff's device and the word "LACOSTE" printed on one side in a square measuring about 10 cm by 5 cm.

[29] Exhibit 14 is one of a pair of white tackies on the side of which appears the plaintiff's crocodile device with the word LACOSTE appearing a) on the top fastening strap, b) the outside of the tackey just above the heel and c) at back of the tackey high up on the heel and d) also on the sole of the tackey.

[30] Exhibit 15 is a brown handbag with a leather strap which is attached by metal clips to the body of the bag. On the strap the word "LACOSTE" was weaved into the material of which the strap is made. Attached to one end of the handbag there are two thin leather straps each about 8 cm long and attached to one of them is a small sample of the plaintiff's device, the crocodile, in silver.

EXHIBITS MANUFACTURED/SOLD BY KAMP KWENA SUN CITY:

[31] Exhibit 9 is a cream polo neck shirt with short sleeves on the chest of which there are depicted 6 cartoon like crocodiles in different, apparent dancing, positions and one apparently is also beating a drum. The major portions of their bodies are green with each having a large patch of red on its body. Underneath the 6 dancing crocodiles the following appears in print

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- -. u ~

"KAMP KWENA SUN CITY".

[32] Exhibit 10 is a navy cap with a red peak on which there is a green crocodile with a red belly and the following appears in print around the

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crocodile: "KAMP KWENA SUN CITY".

[33] Exhibit 11 is a white polo neck shirt with short sleeves on the chest of which there is depicted a green crocodile with a red belly encircled by numerous red and green triangles and by the words "KAMP KWENA SUN CITY".

EXHIBIT MANUFACTURED BY "CROCS":

[34] Exhibit 16 is a pair of beige shoes made of a rubber compound with the name" CROCS" on the sole of each shoe and also on the strap that surrounds the heel. On the right and left side of each shoe there are clasps where the two straps of each shoe are fastened and on the outside of the clasps a crocodile is depicted in black and white.

EXHIBITS MANUFACTURED BY "AFRO-DIZZY":

[35] Exhibit 12 is a white box about 18 cm x 15 cm x 5 cm with the words "AFRICA'S ORIGINAL LIFESTYLE" printed on it with several figures on the

box including the front sections of black crocodiles with white circular spots on their bodies each with prominent red front claws.

[36] Exhibit 13 is a white polo necked shirt with short sleeves on the chest of which appears a figure resembling the face of a human being about 20 cm wide

and 30 cm high, with thick red lips with two black crocodiles facing each other

for eyebrows, the crocodiles having white circular spots on their bodies. The

figure has on its chest the words "AFRO DIZZY".

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[37] I now turn to the evidence presented.

[38] The plaintiff called as its first witness Charles Anthony Stewart. He is a director of the plaintiff's firm of attorneys and he has 40 years experience in the trade mark field. He testified that belts, and thus also exhibits 1, 2 and 3 al being belts, fell under class 25 of the Nice Classification emanating from the Nice Agreement which was adopted by legislation in South Africa.

[39] Under cross-examination he stated that his firm is one of the bigger firms in Pretoria specialising in trade marks and that his firm already acted for LACOSTE for about 30 years.

[40] He testified that one of the functions of his department in his firm of attorneys was to examine and advise clients whether a particular item or mark registered or about to be registered would infringe a device mark of his clients

and that his firm inter alia did this by checking the relevant Gazettes.

[41] Although not aware thereof before he testified, he conceded that his firm also registered the "KAMP KWENA", "CROCS" and "AFRO DIZZY" trade marks and he stated that he was not aware of any opposition on the part of the applicant to the registration of these trade marks and it follows that the exhibits emanating from them did not infringe upon the device of the applicant.

[42] The second witness was Feizal Surtee. He testified that his father was in the retail business and since his younger days he was exposed to the Lacoste

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brand. He stated that he became the managing director of Nike another well­known trade mark and his company owns the rights to the Lacoste trade marks in South Africa. According to him he spends a lot of time in the stores selling Lacoste goods. He stated that prior to 2000 Lacoste goods were distributed in

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various outlets in South Africa, inter alia John 0rrs, A & D Spitz and Deans. According to him the position changed in 2000 when the witness acquired the Lacoste brand as they felt that the distributors should be much more up class and he involved a firm called Levisons with 10 branches in the country being a mono brand store. He also opened a number of Lacoste boutiques, inter alia

at the V & A Waterfront in Cape Town, Gateway Mall in Durban, Sandton City, Canal Shopping Mall, Cape Town and at the 0liver Tambo Airport.

[43] According to him Levisons sell all sorts of products, including lifestyle clothes, school clothing and that they specialize in men's clothing.

[44] He stated that he has personally been exposed to Lacoste products from his childhood days, i.e. for about 30 years and that he spent a lot of time in the stores and met customers in relation to Lacoste and other products.

[45] With regard to exhibits 1, 2 and 3, he stated that he was familiar with the device appearing on then namely the mere word "crocodile" .

[46] He testified that customers were knowledgeable and that they know the Lacoste brand and generally refer to Lacoste as "crocodile".

[47] According to him Lacoste brand goods were regarded as aspirational goods, in other words, people would save money to buy a Lacoste item which was of exceptional high quality and was limited in availability. He stated that the turnover pattern of Lacoste goods was about R150M to R200M per year

which figure was increasing each year and that a lot of money was spent each

year advertising the brand.

[48] He stated that Lacoste has a great reputation and that more and more

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retailers were asking him to make Lacoste products available to them to sell.

[49] Under cross-examination by Mr. Hoffman he replied that all his life he was in the clothing business, initially through his father's shops which carried the name "Surtees" and thereafter on his own. He stated that in the early days one would get a poor person, for instance an underground miner, who would save money over a long period of time just to he ab1e to eventually buy

expensive clothes which he could wear over weekends and that that was very important for his own image. He stated that sometimes they would even leave the labels on so as to signify the expensive brand worn by them.

[50] He stated that the crocodile device on the Lacoste goods was all important for the people who wanted Lacoste products. He also testified that the prices of the Lacoste products were deliberately pitched at the upper market and were sold not down market or at street corners but at exclusive and expensive retail

outlets. He gave examples of the pricing strategy. The retail price of a Lacoste short sleeve shirt would be between R790 and R995, of the long sleeved shirt about R1 195 and that of a Lacoste belt R495 and that of the Lacoste suede belt about R995.

[51] He testified that especially children from an age just before school up to 10 years old would be drawn to and by the crocodile device and would often throw tantrums in the shops to get their parents to buy them a product with the crocodile device on it.

[52] With regard to the position regarding the Lacoste and Kamp Kwena trade marks he explained that the location where the product is sold, is very important in the matter. Apparently the Kamp Kwena goods were sold only at Sun City shops, the trade mark being owned by Sun International. The witness

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stated that people wanting Lacoste shirts would not buy Kamp Kwena shirts and that they would not be confused by the Kamp Kwena shirts as they would rather regard the crocodiles on the Kamp Kwena shirts as cartoon characters and would not confuse them with the Lacoste device being the crocodile with the upswept tail and open mouth.

[53] He also stated that the bulk of people know what a Lacoste device looks

like and that Lacoste has a long standing association with the particular Lacoste device and that they would be drawn to an item with the Lacoste device on it and not by a device dissimilar to it.

[54] He also stated that the clientele at Levisons and A & D Spitz would be about 60% black and about 20% white and Indian. At Lacoste shops the clientele would consist of about 40% white, 25% black and the rest Indian and coloured.

[55] He conceded that the first language of the black customers generally was not English and that they have different words in their languages for

"crocodile" .

[56] With regard to CROCS shoes he conceded that they were sold at a substantial number of outlets in the country.

[57] The witness also described the AFRO DIZZY character as a cartoon character and that the AFRO DIZZY character and CROCS shoes were so

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different from that of Lacoste that a customer who wanted a Lacoste product would not be confused by the AFRO DIZZY and CROCS poducts.

[58] Under re-examination the witness characterised the Lacoste device as more

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of a proper depiction of a crocodile whereas the others were more animated.

[59] He also stated that they were experiencing counterfeiting which goods were sold on street corners and at flea markets and not much in stores.

[60] With regard to the pricing structure of the Lacoste products he stated that

the kind of person who would be buying a Lacoste product would relate it to

the Lacoste device and if the device would be on a counterfeit product the customer may be misled.

[61] The plaintiff's second witness was one Ponziano Verona. She testified that she had been involved in the clothing and apparel trade for many years and that she became involved with the Lacoste brand about 10 years ago. She described the Lacoste brand as a very fashionable brand and that the customers who would buy Lacoste branded goods would refer to the crocodile device and indicate that they wanted it. In this regard she clearly referred to the Lacoste device namely the crocodile with the open mouth and upswept tail. She stated that sometimes the device would be in green and sometimes in white and that the customers clearly preferred the green device with the red mouth. She also stated that they have massive sales drives based on the crocodile device.

[62] She was very definite that the crocodile device was the important thing that customers wanted and that the crocodile device had to appear on the article otherwise the customers would not buy it.

[63] She stated that she was not acquainted with the Kamp Kwena brand and according to her customers would not regard the Kamp Kwena products as Lacoste products. With regard to the CROCS shoes she stated that nobody would regard them as Lacoste shoes.

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[64] She summed up her evidence thus: An aspirational buyer who wanted to buy a Lacoste product would walk into the store and if the green crocodile with the red mouth was not on the item, he would say "I do not want it" and that it was the particular device they were looking for and they also experienced that even in the case of young customers and even very young children. She stated

that sometimes the name "Lacoste" on the goods would suffice if the crocodile device was not displayed but it was generally experienced that the customers

wanted the crocodile device displayed on the article they wanted, preferably the green crocodile with the red mouth.

[65] She stated that from her own knowledge she was aware thereof that most of the top brands like Gucci, Pringle and Nike would have their own devices displayed on their articles and that these brands generally became associated with their products in the eyes of the customers.

[66] In re-examination by Mr. Morley she stated that the crocodile device was very realistically depicted on the Lacoste products.

[67] The plaintiff's case was then closed.

[68] The first witness for the defendant was one Zhou Ling Hua. He testified that he worked in his shop in Jeppe street in downtown Johannesburg selling also belts. The defendant supplied him with belts and he would get a commission on the sales. The average price of belts similar to exhibit 1 was R6

per belt, to exhibit 2 R8 per belt and to exhibit 3 R10 per belt. The sales of the

belts were to the public, hawkers and to stall keepers at flea markets in the

suburbs and that his customers would predominantly be black people. Some of the clients would straightaway buy a belt and go whilst others may take their time to make a purchase.

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[69] The second witness for the defendant was one Victoria Ganille Galgut. She testified that she purchased the AFRO DIZZY and the Kamp Kwena exhibits from shops at the instructions of the defendant's attorneys.

[70] The defendant's case was then closed.

[71] Mr Morley argued that the word "crocodile" was conceptually similar to

the Lacoste brand and that judgment should be in favour of the plaintiff.

[72] Mr. Hoffman argued the direct opposite.

[73] The court now deals with the evidence of Surtee and Verona. In general terms both of these witnesses suggest that the trade mark device registered in the name of Lacoste can be regarded as synonymous with Lacoste. Both of them stressed that it is the specific Lacoste crocodile device which the people associated with the Lacoste brand. They went so far as to say that without the particular Lacoste device on the article the customer would not purchase it and that the customers required that the particular crocodile device should appear on the article. As stated they produced Lacoste exhibits in the form of shoes, belts and indeed a carrier bag in order to demonstrate the prominence given to the specific crocodile device. The evidence of Surtee and Verona clearly did not assist the plaintiff's case. Their evidence has very limited, if any, value as to whether or not there is a likelihood of deception or confusion. That in any case is for the court to determine and not for the witnesses. (See William

Grant & Sons v Cape Wine & Distillers Ltd. 1990 (3) SA 897(C) at 912;

Reckit & Colman SA (Pty) Ltd. v S C Johnson & Son (Pty) Ltd. 1993 (2)

SA 307 (A)).

[73] A visual comparison of the Lacoste crocodile device with the word

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"Crocodile" shows that there is absolutely no likelihood of deception or confusion on this basis.

[74] The concept of an aural comparison is also problematic for the plaintiff. Whilst the marks have as a common element the fact of a crocodile, and whilst a person looking at the Lacoste brand would refer to it as a representation of a crocodile, it is clear from the evidence of both Surtee and Verona that it is

the particular Lacoste device which is significant. Thus an aural comparison is inappropriate too: one cannot get away from the fact that it is the particular Lacoste crocodile that purchasers of Lacoste products are looking for and not for articles with the word "crocodile" on it.

[75] Even with regard to a conceptual comparison there is a problem for the plaintiff:

a)

firstly, the plaintiff does not have a monopoly on the use of the reptile which is a crocodile;

b)

secondly, there are several other marks which make use of a crocodile device;

c)

thirdly, it is clear from the evidence of Surtee and Verona that conceptually purchasers associate the specific Lacoste crocodile with the plaintiff's products - not just any crocodile and certainly not the mere

word "crocodile" used in isolation from the device.

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[76] Even the reference by Surtee and Verona in re-examination that the items that they were shown namely those of Kamp Kwena, AFFRO DIZZY and Crocs, were caricatures rather than realistic representations did not assist the

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plaintiff as the plaintiff does not have a monopoly on the word crocodile, and it cannot claim as it were because its crocodiles looked more realistic than those which appear on the exhibits handed to court. The evidence of Surtee and Verona is of very limited probative value. It is also notable that there is no survey evidence tendered by the plaintiff. Such evidence, provided that the survey was carried out properly would have been admissible and perhaps useful (See Webber and Page: The South African Law of Trade Marks paragraph

8.39). It would thus appear that this court is being asked to accept the evidence of Surtee and Verona in substitution for evidence as to whether there is an

actual likelihood of deception or confusion. There is also no evidence of actual conclusion in that the offending belts were never sold. That, however, is of no consequence and the fact remains that the plaintiff was not able to prove that there was deception or confusion.

[77] The court must also deal with the judgment of McCall J in the case of Safari Surf Shop CC v Heavywater [1996] 4 All SA 316 (D). He was called upon to consider whether an interim interdict should be granted against the use of a spider device on surfboards - this on the basis that the use of such a device infringed the applicant's word mark "SPIDER" and also on the basis that the respondent was passing of its boards as those of the applicant. The learned judge did not consider the dictum of Goldstone J in the case of Searles

Industries (Pty) Ltd v International Power Marketing (Pty) Ltd 1982 (4) SA 123 (T) where Goldstone J stated it to be axiomatic that the applicant could not claim a monopoly in respect of any horse's head device (at 127). The learned

judge's observations on the fact that a monopoly may not be claimed in regard

to something such as a horse was echoed in a later decision of the Registrar of Trade Marks. There, McCreath J, sitting as an assistant registrar of trade marks in an application by Sun International to register a number of marks, all of which bear a crocodile device in one form or another and some of which bear,

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in addition, the word mark Kamp Kwena (it appears from the judgment that McCreath J, quite correctly, with respect, regarded him as entitled to take judicial notice of the fact that the word Kwena in the Tswana language means crocodile) .

[78] Several passages in the judgment of McCreath J bear repeating:

a)

b)

d)

he observed (page 3 of the judgment) that the crocodile devices as used in the two sets of marks differed;

he referred to the dictum of Goldstone J in the Searle matter to the effect that a monopoly in respect of a horse's head cannot be claimed;

c)

he made it clear that whilst "conceptual deception or confusion can constitute a bar to registration in an appropriate case, caution must be exercised not to create a monopoly in relation to a concept";

he stated that in his judgment "the opponent is not entitled to a monopoly in respect of the concept of any crocodile whatever the representation thereof may be". He found support for this proposition in the case of Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA);

[79] After considering all the circumstances McCreath J ordered that the Kamp Kwena marks be registered.

[80] McCall J concluded that for the purposes of s 34(1)(a) and (b) there was no reason why a word mark should not be compared with a device mark it "so nearly resembles" the applicant's word mark as "to be likely to deceive or cause confusion". McCall J. clearly erred here, with respect, the only

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confusion which could have arisen was a conceptual confusion. The learned judge did not analyze this aspect, however, and his judgment is unsatisfactory as to the basis upon which he came to his conclusion. This court will not follow his judgment. His judgment, in any case, is distinguishable from the present

case: the learned judge was concerned with a very limited tight-knit market in

a specific geographic area; he was also concerned only with the grant of an interim interdict where a right, prima facie, needed to be established and can

thus not be regarded as authoritive.

[81] Exhibits 1, 2 and 3, upon an examination thereof, appeared to be clearly of "downtown", "fleamarket" and low quality also being typically plastickey and shiny, totally unlike the extremely high quality Lacoste articles produced by the plaintiff as exhibits during the case. The exhibits all bore the Lacoste

device which clearly, visually and aurally was of a totally different quality than exhibits 1, 2 and 3.

[82] There seems to be no possibility that a person who wanted a Lacoste product would or could be deceived into thinking that exhibits 1, 2 and 3 were Lacoste products despite the fact that the word "crocodile" appeared on them. The plaintiff's concession that the Kamp Kwena, AFFRO DIZZY and Crocs branded exhibits did not infringe upon the Lacoste brand was fair, despite the clear reference to a crocodile or crocodiles on them. One then fails to

understand the plaintiff's reasoning with regard to exhibits 1, 2 and 3.

[83] This court therefore came to the conclusion that the mark CROCODILE,

used by the defendant on goods imported by the defendant for sale in South Africa, samples of which are pictured in Annexure A8 to the Plaintiff's particulars of claim, does not infringe the plaintiff's registered trade marks

79/5545 and/or 72/01627 and/or 84/1030 in terms of s 34(1)(a) and 34(1)(b)

0in">

22

of the Trade Marks Act, No. 194 of 1993.

[84] The following order is accordingly made:

1.

The plaintiff's claim is dismissed with costs such costs to include the costs of two counsel where two counsel were employed by the defendant.

OF THE HIGH COURT

Plaintiff's counsel

Adv. G.E. MORLEY SC

Plaintiff's attorneys

ADAMS & ADAMS

Defendant's counsel

Adv. G.I. HOFFMAN SC

Defendant's attorneys

GALGUT & GALGUT +c/o COUZYN HERTZOG & HORAK

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