THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case no: 106/2022
In the matter between:
ICOLLEGE (PTY) LTD

APPELLANT
and
XPERTEASE SKILLS DEVELOPMENT
AND MENTORING CC

FIRST RESPONDENT
ZA CENTRAL REGISTRY NPC
SECOND RESPONDENT

Neutral citation: ICollege (Pty) Ltd v Xpertease Skills Development and
Mentoring CC and Another (Case no 106/2022) [2023]
ZASCA 70 (24 May 2023)
Coram:
SCHIPPERS, MABINDLA-BOQWANA and MATOJANE JJA
and OLSEN and UNTERHALTER AJJA
Heard:
17 March 2023
Delivered: 24 May 2023
Summary: Trade mark – interdict to restrain infringement – use of mark closely
resembling registered trade mark – both marks visually and phonetically identical
– likelihood of deception or confusion within meaning of s 34(1)(a) of the Trade
Marks Act 194 of 1993 – requisites for interdict established.

ORDER

On appeal from: Gauteng Division of the High Court, Pretoria (Basson J, sitting
as court of first instance):

The appeal is upheld with costs.
The order of the high court is set aside and replaced with the following
order:

‘1
The first respondent is interdicted and restrained from infringing the

applicant’s registered iCOLLEGE trade marks by using the iCOLLEGE

mark and/or any mark, trading style, trading name, get up and/or dress that

is confusingly and/or deceptively similar to the applicant’s registered

iCOLLEGE trade marks.
The first respondent is ordered within 14 days of the granting of this
order to instruct the second respondent to transfer ownership of the domain
name icollege.co.za to the applicant, failing which the second respondent
is ordered to transfer ownership of the domain name icollege.co.za to the
applicant within 14 days thereafter.

An enquiry into the damages suffered by the applicant as a result of

the first respondent’s unlawful conduct is ordered to be convened.
The first respondent is ordered to pay the applicant’s costs.’

JUDGMENT

Schippers and Matojane JJA (Mabindla-Boqwana JA and Olsen and
Unterhalter AJJA concurring)

[1] The appellant is a private Further Education and Training College
registered with the Department of Higher Education and Training. It provides
skills-based training in international courses, and courses accredited by the
national Sector Education Training Authority. The appellant offers education and
training at its 17 campuses nationwide, and online at its e-learning centre.

[2] The appellant is the proprietor of two trade mark registrations in class 41,
which it utilises in the course of trade. A striking and dominant feature of both
marks is the word ‘iCOLLEGE’. The first trade mark was registered on 27 August
2015 under application number 2013/32192 in respect of, inter alia, education and
training services. The second mark was registered on 24 June 2019 under
application number 2018/02190. These two trade marks, shown in paragraph 9
below, are identical, save that the latter mark is a colour version of the earlier mark
and covers a wider specification of services in class 41. The appellant is also the
registered proprietor of the domain name ‘icollegeint.co.za’.

[3] The first respondent, Xpertease Skills Development and Mentoring CC
(the respondent), was incorrectly cited in the header to the founding papers as
‘Xcellence Skills Development CC’. Nothing however turns on this, as the
respondent did not take issue with the incorrect citation. The respondent also uses
a trade mark, the dominant element of which is the word ‘iCollege’, as is

evidenced by the depiction of its mark in paragraph 9 below. The respondent’s
mark is also accompanied in use with the words ‘ONLINE LEARNING’. The
respondent uses this mark in the course of trading, which is also the provision of
education and training services. The respondent describes itself as an internet-
based business (hence the letter, ‘i’) providing specialised professional education
(represented by the word, ‘College’). It does not offer classroom-based tuition
nor locally accredited qualifications. It provides e-learning courses to consumers
worldwide, and sells e-learning products and courses to prepare customers for
international and vendor-specific information technology certification.

[4] In 2019, the appellant applied to the Gauteng Division of the High Court,
Pretoria (the high court), inter alia, for an order in terms of ss 34(1)(a) and (c) of
the Trade Marks Act 194 of 1993 (the Act), to interdict the first respondent from
infringing the appellant’s rights acquired through the registration of its trade
marks; and from passing off its services as being those of the appellant. The
second respondent did not participate in those proceedings, nor in this appeal. The
high court dismissed the application with costs. The appeal is with the leave of
this Court.

[5] We were informed by counsel for the appellant that it did not persist with
the relief sought on the grounds of s 34(1)(c) of the Act and passing-off. Thus,
the only issue in this appeal is whether the appellant met the requisites of
s 34(1)(a) of the Act, for the grant of an interdict to prevent infringing use of its
trade marks by the respondent. Section 34(1)(a) provides:
‘(1)
The rights acquired by registration of a trade mark shall be infringed by –
(a)
the unauthorized 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; . . .’

[6] The respondent did not dispute that the appellant had not authorised it to
use the appellant’s trade mark. It is common ground that the respondent uses its
iCollege trade mark in the course of trade, and in relation to the identical services
in respect of which the appellant’s iCOLLEGE trade mark is registered, namely
‘education and training services’. So, the only issue for decision by the high court
was whether the respondent’s iCollege trade mark was ‘a mark so nearly
resembling’ the appellant’s iCOLLEGE trade mark ‘as to be likely to deceive or
cause confusion’.

[7] The appellant claimed that the respondent’s use of its iCollege mark is
identical to the appellant’s registered trade mark, with the result that a substantial
number of persons will be deceived or confused into believing that there is a
material link in trade between the respondent’s education and training services
and those offered under the appellant’s iCOLLEGE trade mark. The respondent
contended that the marks in question are inherently different. The answering
affidavit reproduces a passage from PPI Makelaars,1 and states that the services
which the respondent offers ‘are ephemeral; they are often concerned with the
provision of trade-marked products of third parties and they are not offered side
by side enabling customers to make instant comparisons, making quality control
difficult’. The answering affidavit further states that trade marks relating to
resources such as education services are indefinite as opposed to trade marks
covering goods.

[8] In Plascon-Evans,2 Corbett JA said that the determination of the question
whether a mark is identical, or so nearly resembles a registered mark as to be
likely to deceive or cause confusion, involves:

1 PPI Makelaars and Another v Professional Provident Society of South Africa [1997] 4 All SA 444 (SCA); 1998
(1) SA 595 (SCA) at 603E.
2 Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd [1984] 2 All SA 366 (A); 1984 (3) SA 623 (A) at
640I-641D.

‘. . . essentially a comparison between the marks used by the defendant and the registered mark
and, having regard to the similarities and differences in the two marks, an assessment of the
impact which the defendant’s mark would make upon the average type of customer who would
be likely to purchase the kind of goods to which the marks are applied. This notional customer
must be conceived of as a person of average intelligence, having proper eyesight and buying
with ordinary caution. The comparison must be made with reference to the sense, sound and
appearance of the marks. The marks must be viewed as they would be encountered in the
marketplace and against the background of relevant surrounding circumstances. The marks
must not only be considered side by side, but also separately. It must be borne in mind that the
ordinary purchaser may encounter goods, bearing the defendant’s mark, with an imperfect
recollection of the registered mark and due allowance must be made for this. If each of the
marks contains a main or dominant feature or idea the likely impact made by this on the mind
of the customer must be taken into account. As it has been put, marks are remembered rather
by general impressions or by some significant or striking feature than by a photographic
recollection of the whole. And finally consideration must be given to the manner in which the
marks are likely to be employed as, for example, the use of name marks in conjunction with a
generic description of the goods.’

[9] A side-by-side comparison of the respondent’s iCollege mark with that of
the appellant’s iCOLLEGE trade mark reveals that the marks of both parties
contain an identical dominant feature in relation to sound and appearance – the
word ‘iCOLLEGE’:

(the appellant’s registered marks)

(the respondent’s mark)

Whether this word element is clearly pronounced or carelessly spoken, the marks
sound no different from one another. In the marketplace, the notional user of
education and training services will encounter the appearance of a preeminent
identical word element in both marks, namely iCOLLEGE, regardless of whether
or not there is an imperfect recollection of the registered mark.

[10] In Century City Apartments,3 this Court approved the test stated in
Compass Publishing BV,4 for confusing similarity:
‘The likelihood of confusion must be appreciated globally, taking account of all relevant
factors. It must be judged through the eyes of the average consumer of the goods or services in
question. That customer is to be taken to be reasonably well informed and reasonably
circumspect and observant, but he may have to rely upon an imperfect picture or recollection
of the marks. The court should factor in the recognition that the average consumer normally
perceives a mark as a whole and does not analyse its various details. The visual, aural and
conceptual similarities of the marks must be assessed by reference to the overall impressions
created by the marks bearing in mind their distinctive and dominant components. Furthermore,
if the association between the marks causes the public to wrongly believe that the respective
goods come from the same or economically linked undertakings, there is a likelihood of
confusion.’

[11] Applied to the present case, the marks are visually and aurally, confusingly
similar. The fact that save for the letter ‘C’, the remaining letters in the
respondent’s mark are in lowercase, in a different font, or accompanied by the
words ‘ONLINE LEARNING’, does not detract from this. On an overall viewing
of the basic features of the marks, the main idea or general impression conveyed
is the education services offered by iCOLLEGE – the clearly noticeable and
dominant feature of both marks. This impression is buttressed by the logos
accompanying the dominant word element in both marks – a graduation cap. The

3 Century City Apartments Property Services CC and Another v Century City Property Owners’ Association
[2009] ZASCA 157; 2010 (3) SA 1 (SCA); [2010] 2 All SA 409 (SCA) para 13.
4 Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch) paras 24-25.

phrase ‘ONLINE LEARNING’ envisages education, and on the overall
impression conveyed by the mark, is a strong indicator of an association between
the respondent’s education services and those of the appellant. In this regard, the
high court failed to consider the marks as wholes, rather than the exact details of
each.5 It compared only the pictures in the marks.

[12] It follows that the submission on behalf of the respondent that the
difference between the logos used by the parties is what catches the eye first, not
the word component, is unsound. Rather, it is the dominant or central element of
the marks in issue, namely the word iCOLLEGE, that is likely to make an impact
on the mind of the consumer.6 This feature alone, renders the marks phonetically
and conceptually, confusingly similar on at least two levels of comparison: sound
and appearance. And similarity on any one of these levels is sufficient.7 The high
court disregarded this principle: it recognised ‘the obvious similarity between the
two marks with reference to the words, iCollege and iCOLLEGE’, but then
concluded that ‘there is no visual or conceptual similarity between the pictures
accompanying the written words’.

[13] The high court also overlooked the fact that the greater the similarity
between the respective services of the parties, the lesser the degree of
resemblance required before it can be said that there is a likelihood of deception
or confusion in the use of the offending mark.8 The respondent sought to make
something of the proposition that its services are exclusively online and that it
does not offer locally accredited qualifications. However, s 34(1)(a) of the Act
does not require the appellant to show that the nature and scope of the

5 Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd 1976 (1) 530 (T) at 536A.
6 Cowbell AG v ICS Holdings Ltd [2001] 4 All SA 242 (A); 2001 (3) SA 941 (SCA) para 14; Mettenheimer and
Another v Zonquasdrif Vineyards CC and Others [2013] ZASCA 152; [2014] 1 All SA 645 (SCA); 2014 (2) SA
204 (SCA) para 12.
7 Plascon-Evans fn 2 above at 640G-I.
8 Mettenheimer fn 6 above para 11, approving New Media Publishing (Pty) Ltd v Eating Out Web Services CC
2005 (5) SA 388 (C) at 394C-F.

respondent’s services, or its training methods, are identical to the services covered
by the trade mark registration. And the test approved in Century City Apartments,9
which applies equally in relation to both goods and services, provides a complete
answer to the argument that there is no likelihood of deception or confusion
because the services are not offered side by side. As observed by Webster and
Page, there is no reason to suggest a more lenient test for service marks.10

[14] Whilst the marks in issue are not identical, ie ‘the same in all respects’,11
even though they are very similar, as stated in Webster and Page,12 ‘the likelihood
that the court will then find that the marks are indeed likely to cause confusion or
deception is great’. Thus, in Century City Apartments,13 this Court found that the
marks CENTURY CITY and CENTURY CITY APARTMENTS are not identical,
but held that despite the addition of the word ‘apartments’, the name CENTURY
CITY APARTMENTS was confusingly similar to CENTURY CITY. This, a
fortiori, is such a case, when regard is had to the dominant feature of the marks
in issue – the word, ‘iCOLLEGE’, which is not commonly used.

[15] In its judgment the high court did not deal with the fact that the trade marks
in question were phonetically identical. However, in the judgment refusing leave
to appeal, the court said: ‘although the word “iCollege” both in respect of spelling
and phonetics are the same, they are not distinctive in respect of the products to
which they pertain’.14 In the main judgment, the court analysed the education and
training services rendered by both parties. It referred to their target markets;
methods of teaching; the specific courses and academic services offered; and the
fact that the appellant’s courses are accredited in terms of the National

9 Century City Apartments Property Services fn 3 above para 13.
10 Webster and Page South African Law of Trade Marks para 12.8.3.
11 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ETMR 83 (European Trade Marks Reports) par 50, approved
in Century City Apartments Property Services fn 3 above para 12.
12 Webster and Page South African Law of Trade Marks para 12.8.1B.
13 Century City Apartments Property Services fn 3 above para 13.
14 Emphasis added.

Qualification Framework, while the respondent’s qualifications are accredited by
third party vendors such as Microsoft. The court concluded:
‘. . . [W]hilst both the applicant and the respondent use their trade marks in respect of
“education and training services” (in respect of which the applicant registered its trade mark),
the educational/academic products and services presented by the applicant and the respondent
are not identical, nor is the training vehicle by which the different educational services are
offered the same.’

[16] The high court’s further inquiry into the specific nature, ambit and teaching
methods in relation to the services rendered by the appellant and the respondent,
was both impermissible and irrelevant. The court disregarded the notional use
test, which required it to postulate the notional use to which the appellant is
entitled to put its iCOLLEGE trade mark – online education and training services
– included in the full range of permissible fair use in respect of which it is
registered.15

[17] The purpose of a trade mark registration is to protect the mark as a badge
of origin. Section 34(1)(a) of the Act governs primary trade mark infringement
and confers on the proprietor an exclusionary right to prevent others from using
the mark without its consent.16 As stated, the respondent has no such consent and
is using its mark in respect of identical services in the class in which the
appellant’s trade mark has been registered – education and training. The appellant
established that the use of the respondent’s mark was such that it will cause
consumers to wrongly believe that there is a material link in trade between the
respondent’s education services and the appellant.17 This constitutes primary

15 Plascon-Evans fn 2 above at 641G-642A; Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others [2016] ZASCA
77; 2017 (2) SA 588 (SCA) paras 8-9.
16 Verimark (Pty) Ltd v Bayerische Motoren Werke AktienGesellschaft; Bayerische Motoren Werke
AktienGesellschaft v Verimark (Pty) Ltd [2007] ZASCA 53; 2007 (6) SA 263 (SCA) para 5; Federation
Cynologique and R (British American Tobacco UK Ltd) v Secretary of State for Health [2016] EWCA Civ 1182;
[2018] QB 149 paras 46-49.
17 Verimark fn 16 above para 5.

trade mark infringement within the meaning of s 34(1)(a) of the Act, which
entitled the appellant to an interdict.

[18] Finally, the respondent’s argument that the appellant is not entitled to an
interdict for trade mark infringement because the word ‘COLLEGE’ has been
disclaimed, can be dealt with briefly. It was argued that because of the disclaimer,
what remains in the appellant’s mark is the logo and the letter ‘i’, which cannot
form the subject of protection. The argument is unsustainable.

[19] The appellant’s trade mark as a whole had the necessary attributes that
qualified it for registration. If a trade mark as a whole is capable of distinguishing,
it matters not that the prominent part of that mark is an element which is being
disclaimed.18 As is evident from the trade mark information sheet annexed to the
founding affidavit, the appellant was granted rights in the specific representation
of the mark depicted in its application for registration, namely iCOLLEGE. Upon
registration, the appellant was granted a limited monopoly to that mark to ensure
that it fulfils its function as a badge of origin.19 Whilst a trade mark proprietor
cannot bring a claim for infringement in respect of the use of a disclaimed feature,
where that feature forms part of a composite mark, the court is entitled to take the
disclaimed feature into account in deciding whether the infringing mark, as a
whole, so nearly resembles the registered mark, as to be likely to deceive or cause
confusion.20

[20] In the result, the following order is made:
The appeal is upheld with costs.

18 Webster and Page South African Law of Trade Marks para 9.16.
19 Verimark fn 16 above para 6.
20 Webster and Page South African Law of Trade Marks para 9.19.

The order of the high court is set aside and replaced with the following
order:

‘1
The first respondent is interdicted and restrained from infringing the

applicant’s registered iCOLLEGE trade marks by using the iCOLLEGE

mark and/or any mark, trading style, trading name, get up and/or dress that

is confusingly and/or deceptively similar to the applicant’s registered

iCOLLEGE trade marks.
The first respondent is ordered within 14 days of the granting of this
order to instruct the second respondent to transfer ownership of the domain
name icollege.co.za to the applicant, failing which the second respondent
is ordered to transfer ownership of the domain name icollege.co.za to the
applicant within 14 days thereafter.

An enquiry into the damages suffered by the applicant as a result of

the first respondent’s unlawful conduct is ordered to be convened.
The first respondent is ordered to pay the applicant’s costs.’

__________________
A SCHIPPERS
JUDGE OF APPEAL

___________________
K E MATOJANE
JUDGE OF APPEAL

Appearances

For the appellant:
P Cirone
Instructed by:
Kisch Africa Inc, Johannesburg

Phatshoane Henney Attorneys, Bloemfontein

For the first respondent:
D Harms SC
Instructed by:
Nixon & Collins Attorneys, Pretoria

Hill McHardy & Herbst Inc, Bloemfontein
THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
MEDIA SUMMARY OF JUDGMENT DELIVERED IN THE SUPREME COURT OF APPEAL
From:
The Registrar, Supreme Court of Appeal
Date:
24 May 2023
Status:
Immediate
The following summary is for the benefit of the media in the reporting of this case and does not form
part of the judgments of the Supreme Court of Appeal
ICollege (Pty) Ltd v Xpertease Skills Development and Mentoring CC and Another (106/2022) [2023]
ZASCA 70 (24 May 2023)
Today, the Supreme Court of Appeal (SCA) upheld an appeal with costs against the decision of the
Gauteng Division of the High Court, Pretoria, per Basson J (the high court).

The issue before the SCA was whether the appellant met the requisites of s 34(1)(a) of the Trade Marks
Act 194 of 1993 (the Act) for the grant of an interdict to prevent infringing use of its trade marks by the
first respondent.

The appellant, ICollege (Pty) Ltd, is a private Further Education and Training College registered with
the Department of Higher Education and Training. It offers education and training at its 17 campuses
nationwide, and online at its e-learning centre. The appellant is the proprietor of two trade mark
registrations in class 41, which it utilises in the course of trade. A striking and dominant feature of both
marks is the word ‘iCOLLEGE’.

The first respondent, Xpertease Skills Development and Mentoring CC (the respondent) also used a
trade mark, the dominant element of which was the word ‘iCollege’, together with the words ‘ONLINE
LEARNING’. The respondent used this mark in the course of trading, which was also the provision of
education and training services. The respondent described itself as an internet-based business providing
specialised professional education and providing e-learning courses.

The SCA found that a comparison of the respondent’s iCollege mark with that of the appellant’s
iCOLLEGE trade mark reveals that the marks of both parties contain an identical dominant feature in
relation to sound and appearance – the word ‘iCOLLEGE’. Whether this word element is clearly
pronounced or carelessly spoken, the marks sound no different from one another. In the marketplace,
the notional user of education and training services would encounter the appearance of a dominant,
identical word element in both marks, namely iCOLLEGE, regardless of whether or not there is an
imperfect recollection of the registered mark. This dominant element of the marks was likely to make
an impact on the mind of the consumer. This feature alone, rendered the marks phonetically and
conceptually, confusingly similar on at least two levels of comparison: sound and appearance. And
similarity on any one of these levels is sufficient.

It was common ground that the respondent had no consent to use the appellant’s trade mark and that
the respondent was using its mark in respect of identical services in the class in which the appellant’s
trade mark had been registered – education and training. The SCA thus found that the appellant had

established that the use of the respondent’s mark was such that it could cause consumers to wrongly
believe that there was a material link in trade between the respondent’s education services and the
appellant. This, the SCA held, constituted primary trade mark infringement within the meaning of
s 34(1)(a) of the Act, which entitled the appellant to an interdict.

~~~~ends~~~~