Getaway / Wegbreek. Translation of a Trade Mark Constitutes Infringement

The Afrikaans language travel and outdoor leisure magazine, WEGBREEK, first published in April of 2004 by New Media Publishing, has been held to be a "virtual translation" of its English counterpart, GETAWAY magazine.

Cape Town publishing group, Ramsay Son and Parker, the publishers of GETAWAY, a monthly magazine in circulation since 1989, applied for an interdict to stop New Media Publishing from infringing its trade mark "GETAWAY" or passing off the WEGBREEK magazine as being associated with the GETAWAY magazine. Judge Motala granted the interdict preventing the publishers from passing off their business or goods as those of the publisher of GETAWAY magazine or using any mark confusingly or deceptively similar to the mark "GETAWAY", including the mark WEGBREEK and thereby infringing the registered trade mark "GETAWAY". The judge found that apart from the title and the language used, there was nothing to distinguish the WEGBREEK magazine from GETAWAY magazine.

In establishing passing-off, various issues of the two publications were compared. Judge Motala concluded that there were many similarities between the magazines – both were glossy colour publications of similar size and weight and aimed at the same readership. The court also described WEGBREEK magazine’s feature "Moegoe van die Maand" as a blatant and almost plagiaristic copy of GETAWAY magazine’s "Mug of the Month".

In South African law, trade mark infringement occurs when the defendant’s mark is so similar to that of the plaintiff that it is likely to deceive or cause confusion in the mind of the public. This judgment confirms that in a multilingual country like South Africa, in making the necessary comparison between marks in different languages, regard must be had to the concept or idea conveyed by a mark.

Although the respective marks in this case are different, the Afrikaans word WEGBREEK is a very close translation of the English word GETAWAY. As approximately 40% of GETAWAY magazine’s readership is Afrikaans-speaking, the judge found that a substantial number of GETAWAY magazine’s readers would recognise that the Afrikaans word WEGBREEK is the translation of the already well-known trade mark "GETAWAY". This, in turn, was likely to create confusion and/or deception in the minds of the public, taking into account that there was very little else to distinguish the two magazines besides their names.

The effect of the interdict is that all material bearing the mark WEGBREEK has to be delivered to the publishers of GETAWAY magazine for destruction. In addition, the domain name has to be deregistered. The publishers of WEGBREEK magazine also have to pay the legal costs of the matter.

The publishers of WEGBREEK magazine intend taking this judgment on appeal. We will keep you updated of further developments.

Shamin Raghunandan

Spoor & Fisher

Date published: 2005/02/01
Author: Shamin Raghunandan

Tags: getaway wegbreek trade mark infringement