The South African Supreme Court of Appeal (SCA) has handed down its judgment in the trade mark case of Cochrane Steel Products vs Jumalu Fencing, ruling that Jumalu is not liable for trademark infringement or passing off – reported ENSafrica.
Cochrane accused Jumalu Fencing, a direct competitor of Cochrane, of infringing on its trademarked term ‘CLEAR VU’ when advertising its clear view fencing products.
Cochrane argued that Jumalu’s use of the term “clear view” passes off its goods and services as those offered by Cochrane’s CLEAR VU.
This case was first brought forward to the Pretoria High court, which held that there was no trade mark infringement by Jumalu.
Cochrane then appealed this decision, which resulted in the SCA upholding the high court’s judgment in terms of section 34(2)(b) of the Trade Marks Act, 1993 (“the Act”).
Cochrane’s registration of CLEAR VU
Adams and Adams Senior associate Udi Pillay said in 2018, Cochrane applied for the registration of the trade mark “CLEAR VU” in two classes:
- Class 6 – this relates to non-electric cables and wires of common metal; metal fences; metal mesh; pipes and tubes of metal.
- Class 37 – this relates to building, construction, repair and installation services.
This application was opposed by M-Systems Group, which at the time was a competitor of Cochrane in producing and installing fencing products.
M-Systems argued that the mark is not registerable because the term is descriptive and is commonly used in the industry to designate characteristics of the goods or services (Section 10(2)(b) of the Act).
They also argued that the term “CLEAR VU”, when attached to all products, is misleading and cannot distinguish the goods and services for which it is to be used (Section 9(1) and 10(2)(a) of the Act).
Following this dispute, the Pretoria high court ordered the registration of the mark subject to the following disclaimers:
- Registration of this mark shall give no right to the exclusive use of the words ‘clear’ and ‘view’ separately and apart from the mark; and
- Registration of this mark shall not debar others from the bona fide descriptive use in the course of trade of the words ‘clear view’ and ‘view’.
The issues brought forward to the SCA against Jumalu Fencing
Evidence presented to the court showed that Cochrane uses the trade mark CLEAR VU in conjunction with several of its products – including The Invisible Wall, Critical Infrastructure, and Shutter Mesh.
Cochrane then argued that Jumalu uses the term “clear view’” in conjunction with its products that are in direct competition with its fencing products.
Therefore, the issues that the court had to determine were:
- Did Jumalu’s use of the term “clear view” infringe Cochrane’s trade mark registration for CLEAR VU?
- Did Jumalu’s use of the term “clear view” constitute passing off?
Jumalu’s argument against the infringement claim was that it was making bona fide descriptive use of the term “clear view” – which is acceptable under section 34(2)(b) of the Act.
This is evident in Jumalu’s use of the term in conjunction with its brand name CLAMBERPRUFE – which the company’s website refers to as “Clamberprufe clear view fencing products” and describes the products as having a clear view aesthetic.
Jumalu also argued that the term “clear view” is descriptive and used by many in the industry, which is acceptable under disclaimer (b) stipulated in Cochrane’s trade mark registration.
The SCA’s Judgment
The SCA dealt with the claims of trade mark infringement and passing off against Jumalu Fencing separately.
The court found that Jumalu’s use of the term “clear view” was purely descriptive and used appropriately in line with its trade-marked brand CLAMBERPRUFE.
“neither Cochrane nor any other trader, is entitled to appropriate exclusively the ordinary English words ‘clear’ and ‘view’, which, in effect, constitute the composite mark,” said the SCA.
“Furthermore, those words are commonly used descriptively in relation to fencing products. The registration of the mark should not operate to inhibit the use by others of the disclaimed elements”.
Jumalu’s use of the term “clear view” falls within the scope of disclaimer (b) under Cochrane’s trade mark registration and was ultimately protected by section 34(2)(b) of the Act.
Therefore, Jumalu Fencing did not commit any trade mark infringement.
Cochrane argued that even if Jumalu’s use of the term “clear view” was descriptive, it was used to piggyback the popularity of their better-known products, and Jumalu’s products can be confused with theirs.
However, this claim also failed due to a lack of evidence.
“[Cochrane] failed to establish the acquisition of reputation element and the misrepresentation of its passing off claim, as the name or mark used by Jumalu is not such or is not used to likely cause the public to be confused or deceived as to origin or association,” said the SCA.
The SCA, therefore, ruled that Jumalu’s use of the term “clear view” did not constitute passing off.