Facts
Legal status of shape marks (3D in nature. In the past can
only register 2D marks, now can 3D with new TMA). The item in question was a pipe
fitting.
Whether or not the
actions of both defendants in the present proceedings constitute trade mark infringementunder s 27(1) and/or s 27(2)
of the TMA.
The law
Whether
the marks in question are identical [75]
Not
identical. A lot of evidence on the difference in ribs
and surface features.
Whether
the marks in question are confusingly similar [89]
Were they, then, “similar”? If they were, then
this would satisfy the threshold requirement under s 27(2)(b) of the TMA.
The court can consider so-called extraneous
factors when deciding whether there is a likelihood of confusion. Section
27(2)(b) TMA also does not forbid the court taking into account various factors
in deciding the degree of similarity required in order to find that there
exists a likelihood of confusion.[94]
There must exist “a likelihood of confusion on
the part of the public”
Does the public refer to the general public or
a specific portion of them?
The case law appears to suggest that the
“average consumer” need not, depending on the specific facts, necessarily mean
the general public. More specialised products might only be purchased
(if at all) by a more specific cross-section of the public. Vice versa. [97]
Further case law supporting the notion that
courts will attempt to identify the specific portion of the public at [101],
[102]
Some factors to consider when answering the
confusion question: oft cited Pianotist case: “You must judge of them, both by
their look and by their sound. You must consider the goods to which they are to
be applied. You must consider the nature and kind of customer who would be likely
to buy those goods. In fact, you must consider all the surrounding
circumstances; and you must further consider what is likely to happen if each
of those trade marks is used in a normal way as a trade mark for the goods of
the respective owners of the marks.” [98]
Applied
to facts [103]
Consideration 1:whether that specific portion
of the public will be confused
The public in this case is
1)
Plumbers and contractors (99%
of pipe were sold to them)
2)
Do-it-yourself customers (1% of
random people who buy to fix themselves)
Category 2 would not be considered “average
consumers” Even then, even DIY customers would not
likely be confused, as they in fact be relatively familiar with the various
brands as well as specifications and attributes of the pipe fittings generally
on offer in the market. (seems like his own assumption but nvm). Even if some
of these DIY customers were misled, they would be the exception, isolated
events which would not have sufficed. [103]
For category 1, if the average consumer =
plumber and contractors who have the industry knowledge, would be fully
aware of the brands of pipe fittings available for sale but would also purchase
pipe fittings based on the particular specifications and attributes of the
products needed to perform their trade. [105]
Therefore for the issue on specific portion of
the public, it seems like no one will be confused.
Consideration 2: price of the pipe fittings of
D lower than those of P [106]
The judge considered this factor virtually
decisive in the context of the present proceedings. It would serve to dispel
any likelihood of confusion even if the public constituted both categories 1
& 2. Price being a relevant factor supported by a number of case
authorities. [107] This factor is not
conclusive though, but should be considered.
Consideration 2: Packaging and name [108]
The packing and names used for the pipes were
different. duh.
Conclusion:
A degree of similarity is tolerable;
the question is whether there is a confusing similarity.
