One of the features of intellectual property law in South Africa is that a considerable number of cases make their way to the Supreme Court of Appeal for trade mark infringement. A recent lower court decision by an acting judge suggests why this might be.

In SA trade marks are regulated by the Trade Marks Act 194 of 1993. In the case of Accounting Made Easy CC v School Accounting Made Easy (Pty) Ltd, Gauteng Division, 25 June 2019, the main issue was this: had a registered trade mark for the Accounting Made Easy in class 41 for accounting tuition services been infringed by the use of the trade mark School Accounting Made Easy for the same services. A further issue was whether the registration for Accounting Made Easy should be cancelled on the grounds that it was generic and descriptive.

What the Court Needs to Consider

法官首先引用了一些著名的南非和欧洲关于混淆可能性的裁决。这些权威告诉我们：

  • The owner of the earlier trade mark registration must establish that a substantial number of people will probably be confused as to the origin of the goods or the existence or non-existence of a connection in the course of trade;
  • 法院不能简单地并排考虑商标，它还必须考虑它们可能在市场上看到的情况； 
  • 在比较分数时，法院必须考虑声音、外观和含义；
  • 法院必须考虑商标的主要特征和总体印象；
  • 必须对商标进行全球评估。
  • 法院需要考虑普通客户；
  • 法院需要考虑普通购买者的回忆不全。

The Judge Findings on Trade Mark Infringement

法官承认双方在同一领域运作：“申请人和被申请人都向各种学习机构提供会计课程，并以不同方式提供学习材料。”

The judge found that the term ‘Made Easy’ is common and non-distinctive in the field of tuition services, and therefore not associated solely with the mark Accounting Made Easy. But then the judge went on to hold that both Accounting Made Easy and School Accounting Made Easy are ‘unique’ marks that ‘can be distinguished from other similar marks.’ So there was no possibility of confusion between the trade marks and therefore no statutory trade mark infringement in trade mark law.

至于取消注册的反诉，这也失败了。法官这样说：“发现申请人的商标可以与其他商标区分开来，因此反申请必须失败。”

不是一个容易遵循的判断！