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South Africa: a clear view on disclaimers

The South African Supreme Court of Appeal (“SCA”) recently handed down its judgment in the trade mark case of Cochrane Steel Products v Jumalu Fencing. This case is related to earlier litigation involving Cochrane’s registration for the trade mark CLEAR VU in classes 6 and 37 for fencing products and services.

The CLEAR VU registration

Cochrane’s CLEAR VU trade mark registration is subject to two disclaimers, which were ordered by the SCA in the earlier litigation.

The first reads: “Registration of this mark shall give no right to the exclusive use of the words ‘clear’ and ‘view’ separately and apart from the mark.”

The other reads that, “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

The evidence showed that Cochrane, a manufacturer of fences, uses the trade mark CLEAR VU in conjunction with additional wording such as The Invisible Wall, Critical Infrastructure, and Shutter Mesh. It further showed that Jumalu, a direct competitor of Cochrane’s, used the term “clear view” in relation to its fencing products. The issues that the court had to determine were:

  • Did Jumalu’s use of the term “clear view” in relation to fencing infringe Cochrane’s trade mark registration for CLEAR VU?
  • Did Jumalu’s use of the term “clear view” constitute passing off?

The defence

Jumalu’s defence to the trade mark infringement claim was that it was making bona fide descriptive use of the term “clear view”, which is a defence in terms of section 34(2)(b) of the Trade Marks Act, 1993 (“the Act”). In support of this, Jumalu pointed out that it had used the term “clear view fencing” in conjunction with its brand name CLAMBERPRUFE. Jumalu’s company website refers to “Clamberprufe clear view fencing products”, and also talks of its products being known for theirclear view aesthetic”.

Jumalu also claimed that the term “clear view” is used by others in the industry. It pointed out that Cochrane’s registration for CLEAR VU is subject to a limitation (admission) with regards to the term clear view, relying on the second disclaimer in Cochrane’s trade mark registration.

The first court’s judgment

The first court held that there was no trade mark infringement because Jumalu had simply made bona fide descriptive use of the term ‘clear view’. The court also rejected the passing off claim. It held that there was no evidence that the term ‘clear view’ was a source indicator, nor that there was any likelihood of confusion.

The SCA’s judgment

The court dealt with the claims of trade mark infringement and passing off separately.

Trade mark infringement

The court looked to the words written by Judge Harms in an earlier case involving chocolate trade marks: A disclaimer is, theoretically never necessary since registration of a trade mark cannot give rise to any rights except those arising from the mark as a whole. It nonetheless has a function. Primarily it is to prevent the registration of a composite mark from operating so as to inhibit the use of the disclaimed element by others.”

The court went on to say that, “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. 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.”

The court found that Jumalu’s use of the term “clear view fencing” was subsidiary to its trade mark CLAMBERPRUFE, much smaller and “clearly used in a descriptive sense”. It was also clear that Jumalu is the company name. Regarding references on Jumalu’s website to “clear view aesthetics”, it also found this use to be descriptive.

While Cochrane attempted to argue that even if Jumalu’s use of “clear view” was descriptive, it was not bona fide (as required for the defence to succeed) as it was intended to ride on Cochrane’s coattails, this argument ultimately failed due to a lack of evidence.

The result? Jumalu’s use of “clear view” was protected by section 34(2)(b) of the Act and fell within the scope of the second disclaimer, there was no likelihood of deception, and therefore no trade mark infringement.

Passing off (misrepresentation)

Cochrane’s passing off claim also failed. After discussing a number of earlier authorities, the court said that Cochrane had “failed to establish the acquisition of reputation element and the misrepresentation of its passing off claim… the name, get-up 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”.

The court concluded with this quote from a very recent South African judgment

“Having determined that the marks are not confusingly similar for the purposes of trade mark infringement, how, it must be asked, can they be confusingly similar for the purposes of the alternative claim based on unlawful competition?”

Both claims failed trade mark infringement and passing off. In our view, the judgment is sound and it provides some clarity on the issue of disclaimers and admissions.

Reviewed by Gaelyn Scott, Head of ENSafrica’s IP department.

Jeremy de Beer

Trainee Associate | IP