Use of a Disclaimed Feature: Can It Constitute Infringement?
The issue in question before the Appellate Division in Slavin’s Packaging (Pty) Ltd v Space Case Products (Pty) Ltd (judgment of Plewman AJA handed down on 30 May 1996) was whether use of the trade mark SPACEY in relation to a child´s pencil box infringed trade mark registration no. B86/1567 SPACE CASE registered for, inter alia, pencil boxes. The trade mark was registered with a disclaimer in the following terms:
"Registration of this trade mark shall give no right to the exclusive use of the word SPACE and CASE separately and apart from the mark."
The evidence established that the SPACE CASE pencil box had been a huge success and it was described as "an example of what enterprise and ingenuity may bring". In dealing with the conduct of the alleged infringer the court stated "when the Appellant’s box (and the manner in which it has marketed them) is considered, the inference that it sought to copy the respondent’s as closely as possible is unavoidable".
The appeal raised a number of issues but the most important one dealt with the effect of a disclaimer. In this regard the following was stated:
"A more substantial argument was addressed to a further aspect of the judgment. The learned judge based his finding on infringement on the premise that the word SPACE was the dominant or essential feature of the registered mark. When so considered he held that the mark SPACEY was deceptively or confusingly similar when regard is had to the sound of the two marks. Counsel’s argument was that a proprietor of a registered trade mark cannot bring an action for infringement in respect of the unauthorised use of a disclaimed feature. See Hollywood Curl & Another (Pty) Ltd v Twins Products (Pty) Ltd 1989 (1) SA 236 A at 246J, Webster & Page South African Law of Trade Marks 3rd ed 185."
Plewman AJA drew a distinction between the aforementioned principle and the case before the Court by stating "I would wish to guard against accepting that this is indeed what is being done in the present case (where the word used is not the disclaimed word SPACE but SPACEY)". This is indeed so although it appears ironic that the Court could rely on such a minor distinction in finding that the use of the word SPACEY infringed the registered trade mark SPACE CASE while (assuming it accepts the aforementioned principle) the Court would have had to find that had the Appellant used the phrase SPACE PENCIL CASE (being the combination of a disclaimed feature and a description of the product) it would not have infringed the registered trade mark SPACE CASE.
The Court a quo had found that the word SPACE was the dominant or essential feature of the registered mark (which suggests that it recognised that the word SPACE was, in fact, distinctive). The Appellate Division disagreed with this conclusion in dealing, in the alternative, with counsel’s argument that the proprietor of a registered trade mark cannot bring an action for infringement in respect of the unauthorised use of a disclaimed feature. Plewman AJA then concluded that as he disagreed with the judge a quo’s finding in this regard the premise for counsel’s argument falls away. With the greatest respect the logic behind this argument is difficult to follow. Whether or not SPACE was the dominant or essential feature of SPACE CASE is irrelevant against the background that the trade mark was registered subject to an admission of exclusive rights in the word SPACE.
It is submitted, with respect, that it is unfortunate that the Court dealt with this issue at all as the alternative cause of action on which the original case was based was passing off and the Appellate Division also found passing off with the result that it was unnecessary for it to address the issue of trade mark infringement.
A further interesting consideration is that it could be argued that exclusive rights in the word SPACE should never have been disclaimed in the original trade mark SPACE CASE, at worst; an admission to the effect that third parties may use the word SPACE in a descriptive sense should have been entered against the trade mark. If this were the case then the clear use of the word SPACEY (or even the word SPACE in the example postulated above) as a trade mark (which was the case) would have fallen outside the scope of the admission.
It is submitted that while this judgment appears to have emasculated the principle that the proprietor of a registered trade mark cannot bring an action for infringement in respect of the unauthorised use of a disclaimed feature, it must be viewed in relation to the particular facts of the case. In the circumstances the principle may nevertheless be applied in the future although traders should be careful to use a disclaimed feature in the precise form in which it is disclaimed. As the "SPACE pencil case" versus "SPACE CASE" example given above illustrates this could, ironically, result in a greater likelihood of confusion or deception although, in such circumstances, the danger of the common law of passing off (which would ignore any disclaimer) must always be borne in mind.
Spoor & Fisher