REPUBLIC OF SOUTH AFRICA
IN THE SUPREME COURT OF APPEAL
OF SOUTH AFRICA
REPORTABLE
Case number: 206/98
In the matter between:
BATA LIMITED
Appellant
and
FACE FASHIONS CC
1st Respondent
MICHAEL TERRENCE GORMLEY
2nd Respondent
CORAM:
SMALBERGER, VIVIER, NIENABER, HARMS JJA

and MELUNSKY AJA
HEARD:
7 SEPTEMBER 2000
DELIVERED:
29 SEPTEMBER 2000
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Trade marks - alleged infringements - sections 34(1)(a) and (c) of the Trade
Marks Act, 1993
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_____

JUDGMENT
________________________________________________________________________________________________________
______________
MELUNSKY AJA :
[1] On 19 November 1997 Meskin J reserved judgment in an opposed application
brought by the appellant against the respondent in the Durban and Coast Local
Division.  Thereafter he prepared a draft of a judgment in manuscript.  During
December 1997, and before judgment was delivered, the learned judge was regrettably
killed in a motor vehicle accident.  In January 1998 the parties to the application agreed
to be bound by the draft subject to their rights of appeal.  Pursuant to the agreement
Broome DJP handed down the late Meskin J’s draft as a judgment of the Court and
in terms thereof ordered that the application be dismissed with costs.  Some months
later Galgut J granted the appellant leave to appeal to this Court against the judgment
and  order.  In the circumstances the appeal is properly before us.

[2] The appellant is a company incorporated under the laws of Canada.  It is the
proprietor of a number of trade marks which were duly registered in class 25 under the
Trade Marks Act, 62 of 1963.  For the purposes of the appeal six of the trade marks
have relevance, namely:
Trade Mark B71/4510, consisting of the word “Power”, with date of registration 4
October 1971, in respect of “all footwear”;
Trade Marks B76/2864 and B76/2866, each consisting of the word “Power” and
device, with dates of registration 9 June 1976, in respect of “all footwear”;
Trade Mark 83/4033, consisting of the words “Power Points”, with date of registration
23 June 1983, in respect of “articles of clothing including footwear of all kinds”;
Trade Mark 84/2701, consisting of the word “Power”, with date of registration 3 April
1984, in respect of “articles of clothing”;
Trade Mark B84/4186, consisting of the word “Power” and device, with date of

registration 9 May 1984, in respect of “clothing, including boots, shoes and slippers”.
Futura Footwear Limited (“Futura”) is a company incorporated under the company
laws of South Africa with its principal place of business in Pinetown, KwaZulu-Natal.
It is licenced and permitted by the appellant to use approximately 400 trade marks
which the appellant holds, including the six specified above.  Futura uses the Power
and Power and device marks on footwear which it both manufactures and imports for
re-sale in South Africa and Southern Africa.  It also sells items of clothing on which
the said trade marks are displayed.
[3] The second respondent is a member of the first respondent, a close corporation
which carries on business in Kloof, KwaZulu-Natal.  He is also a member of another
close corporation, Power House CC, which carries on business at the same address
as the first respondent.  Power House CC is authorised by the first respondent to
manufacture and sell clothing under the name “Power House” or “Powerhouse”,

usually, but not invariably, accompanied with a distinctive dog device.  The first
respondent and Power House CC have consistently used these trade marks on
clothing since 1987 and on 3 July 1997 the first respondent became the registered
proprietor of the dog device.
[4] The appellant seeks an order restraining the respondents from, inter alia,
making or selling articles of clothing “bearing the trade marks Power or Power House
or Powerhouse”.  In addition it sought an order interdicting the respondents from
passing off the said clothing
“as having an association or being connected with the business or goods of the
[appellant]”.
[5] The issues relied upon on the appellant’s behalf in this Court are considerably
narrower than those raised in the court a quo and in the heads of argument which, I
add, were not prepared by the appellant’s leading counsel on appeal.  In this Court

counsel expressly disavowed placing reliance upon passing off and confined his
argument to the submission that the respondents had infringed the appellant’s trade
mark registrations in terms of ss 34(1)(a) and (c) of the Act.  A submission that the
respondents had infringed the registrations in terms of s 34(1)(b), which was raised in
the court a quo, was not persisted in on appeal.
[6] Before dealing with the essence of the appellant’s argument relating to the
alleged s 34(1)(a) infringement, one matter, which initially seemed to be a point of
contention, may be disposed of.  It concerns a submission raised on the appellant’s
behalf in the court a quo and the heads of argument to the effect that the mere use of
the word “Power” by the respondents, although  not used alone but in conjunction
with another word, constitutes an infringement simply because it is “use ... of an
identical mark”.  This submission, too, was not persisted in on appeal.  Indeed, I
understood counsel to accept, quite correctly in my view, that the argument could not

prevail in view of the judgment of Schutz J in Standard Bank of South Africa Ltd v
United Bank Ltd and Another 1991 (4) SA 780 (T) at 786 et seq.  It is only necessary
to mention that although Standard Bank was decided under the Trade Marks Act of
1963, which made no express reference to an identical mark, this Court held in
Berman Brothers (Pty) Ltd v Sodastream Ltd and Another 1986 (3) SA 209 (A) at
232H-233A, that the reference to the use of a mark “so nearly resembling” a registered
mark in the 1963 Act, impliedly included the use of an identical mark (see Standard
Bank at 786 E-G and 795I).
[7] In the result it was not contended on the appellant’s behalf that the infringement
in terms of s 34(1)(a) consisted in the respondents’ use of an identical mark.  The
contention was that the respondents make use of a mark so nearly resembling trade
marks 83/4033, 84/2701 and B84/4186 (in so far as the latter mark relates to clothing)
as to be likely to deceive or cause confusion.  The respondents do not dispute that the

appellant and Futura make extensive use of the word “Power”, with or without a
device, on footwear and particularly on boots and shoes worn for sporting activities.
They contend, however, that very little use is made of the mark on clothing and,
moreover, that its use on clothing is confined to sportswear such as tracksuits, shorts,
shirts and sweat tops, whereas the first respondent and Power House CC use the
“Power House” name on a different type of clothing, namely leisure wear worn by the
“trendy youth”.  The short answer to the respondents’ contention is that in
infringement proceedings a Court has regard to the notional use to which the plaintiff
may put its mark, that is to
“all possible fair and normal applications of the mark within the ambit of
the monopoly created by the terms of the registration ...”
(Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at
641H-I).  The trade marks relied upon by the appellant in respect of the alleged

infringement under s 34(1)(a) relate to clothing generally.  Consequently the nature of
the clothing on which the mark appears, the market aimed at by the appellant and the
volume of its clothing sales are irrelevant considerations.  It is therefore clear that the
respondents’ use of the word “Power House” is in relation to goods in respect of
which three of the appellant’s trade marks are registered.
[8] The only question that has to be decided in respect of the alleged infringements
under s 34(1)(a) is whether the appellant has established that a substantial number of
persons will probably be deceived into believing or confused as to whether there is a
material connection in the course of trade between the respondents’ clothing and the
appellant’s trade mark (see Plascon-Evans at 640G-I).
[9] In considering this issue it is appropriate to apply the principles summarized by
Corbett JA in Plascon-Evans at 641A-E to the facts of the case.  These principles are
well known and need not be repeated in detail.  It suffices to say that not only should

the marks be compared side by side but consideration must be given to whether the
average customer in the market place would probably be deceived or confused by
their similarity.  Corbett JA made it clear that the main or dominant features of the
marks in question as well as the general impression and any striking features were all
factors to be considered in deciding whether there was a likelihood of confusion or
deception.  A similar approach was adopted by the European Court of Justice in Sabel
BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199.  At 224 it was said that the
likelihood of confusion must “be appreciated globally” and that the
“global appreciation of the visual, aural or conceptual similarity of the marks in
question, must be based on the overall impression given by the marks, bearing
in mind, in particular, their distinctive and dominant components.”
(See also The European Limited v The Economist Newspaper Limited [1998] FSR
283(CA) at 290.)
[10] Counsel for the appellant submitted that the common element in both marks, the

word “Power”, was likely to lead to confusion despite the fact that it is used in
combination with the word “House” on the first respondent’s clothing.  If full effect
is given to this argument it would result in the appellant having a virtual monopoly to
use the word “Power” on clothing.  According to the evidence, however, there are
numerous trade mark registrations in South Africa in respect of clothing which
incorporate or include the word “Power”.    It is an ordinary word in everyday use, as
distinct from an invented or made-up word, and it cannot follow that confusion would
probably arise if it is used in combination with another word.
[11] What has to be considered, therefore, is whether the notional customer of
average intelligence, viewing the marks as a whole or looking at the dominant features
of each mark, is likely to be confused or deceived into believing that clothing bearing
the words “Power House” have a connection in the course of trade with the “Power”
trade mark.  In deciding this issue I have regard only to the respondents’ Power House

mark without the distinctive dog device.  In my view the common element of the
appellant’s and the first respondent’s marks is of minor significance when the marks
are looked at as a whole.  It is not possible to ignore the word “House” in the first
respondent’s mark.  I have considerable difficulty in imagining that the notional
purchaser of the first respondent’s clothing would focus attention only on the word
“Power”.  The word “House” is as significant as the word “Power” and the two
words used together sufficiently distinguish the first respondent’s clothing from that
of the appellant.
[12] The result is the same whether the two marks are viewed side by side or in the
market place where clothing is sold.  The overall impression which is created is that
the marks do not resemble each other closely and the average customer would not be
confused or deceived into believing that clothing bearing the “Power House” mark is
clothing made or sold by the appellant.  Accordingly it has not been established that

the marks resemble each other so closely that deception or confusion is likely to arise.
The appellant’s contentions based on s 34(1)(a) must therefore fail.
[13] The remaining argument relates to the respondents’ alleged infringement of the
appellant’s trade marks registered in respect of footwear on the respondents’ clothing
in terms of s 34(1)(c) of the Act.  The section was introduced for the first time in 1993
to provide protection against the dilution of a registered trade mark by the
unauthorised use of an identical or similar mark in relation to any goods or services,
notwithstanding the absence of confusion or deception.  A plaintiff who relies upon
an infringement in terms of s 34(1)(c) needs to establish:
(a)
the defendant’s use of a mark identical or similar to the plaintiff’s
registered mark;
(b)      that the use -
(i)
is unauthorised; and

(ii)
is in the course of trade;  and
(iii)
would be likely to take unfair advantage of, or be detrimental to,
the distinctive character or the repute of the plaintiff’s registered
mark; and
(c)
that the plaintiff’s registered mark is well known in the Republic.
(The proviso to s 34(1)(c) has no application to this matter.)  For the purposes of the
appeal requirements (b)(i) and (ii) are not in issue.  Furthermore, and despite a
submission to the contrary by the respondents’ counsel, it seems reasonable to hold
that the appellant’s “Power” mark on footwear is well known in South Africa.  The
essential matters in dispute relate to requirements (a) and (b)(iii).
[14] The appellant’s counsel did not contend that the first respondent’s mark on
clothing and the appellant’s mark on footwear were identical.  He submitted, however,
that they were similar and that the similarity consisted in the use of the word “Power”

which is common to both marks.  This submission must be considered without
reference to the likelihood of confusion or deception.  The word “similar” is “almost
always a difficult word to construe” (see Union Government (Minister of Finance)
v Gowar 1915 AD 425 at 443).  As Schreiner ACJ mentioned in R v Revelas 1959 (1)
SA 75 (A) at 80 B-C, there are
“degrees of similarity or likeness, some approaching, and exceptionally perhaps
even reaching, sameness, others amounting to no more than a slight
resemblance.  The similarity may be basic or superficial, general or specific”.
“Similar” must obviously be construed in the context in which it appears and in my
view it should not be given too wide or extensive an interpretation for the purposes of
s 34(1)(c).  The section, while seeking to preserve the reputation of a registered mark,
introduces a new concept into South African law.  If the word “similar” is given too
extensive an interpretation the section might have the effect of creating an unacceptable
monopoly to the proprietor of a trade mark and thus unduly stultify freedom of trade.

I doubt whether the legislature could have intended such a result.  I am inclined to
hold, therefore, that the section does not apply if the two marks are similar merely
because they contain features of the same kind or because there is a slight resemblance
between them.  In OED (vol XV, p 490) one of the meanings given to “similar” is
“having a marked resemblance or likeness”.  This seems to be an appropriate meaning
to be given to the word for the purposes of the section.  The first respondent’s mark
might possibly be regarded as having a slight or superficial resemblance to those of
the appellant but the likeness between the two is not sufficiently close or marked to
enable this Court to hold that they are similar for the purposes of s 34(1)(c).
[15] Although that effectively disposes of the appellant’s argument, I should briefly
deal with the submission, put forward on its behalf, that requirement (b)(iii) above was
satisfied.  The deponent to the founding affidavit stated that the appellant’s trade mark
registrations had been infringed because, inter alia -

“By using the word POWER, the word POWERHOUSE or words POWER
HOUSE, the Respondents are making unauthorised use in the course of trade,
in relation to clothing, of marks which are either identical or similar to the
Appellant’s registered marks which are well known within the Republic; and the
use of such marks is likely to take unfair advantage of and be detrimental to
both the distinctive character and the repute of the Appellant’s registered trade
marks.”
The aforesaid statement is merely a repetition of the section.  It amounts to nothing
more than a conclusion of law.  No particulars were furnished of the respects in which
the use of the mark would be likely to take unfair advantage of or be detrimental to the
distinctive character or repute of the appellant’s trade marks.  In the absence of
evidence to support the contention put forward in the affidavit it is in this case not
possible to hold that requirement (b)(iii) was established.  On this point, too, the
appellant cannot succeed.
[16] The result is that the appeal is dismissed with costs.

.................................................
L S MELUNSKY
ACTING JUDGE OF APPEAL
CONCUR:
SMALBERGER JA)
VIVIER JA)
NIENABER JA)
HARMS JA)