BENSON & HEDGES (PTY) LTD v B & H PHOTO & VIDEO CC t/a B & H PHOTO/DIGITAL 1998 BIP 358 (T)
1998 BIP p358

Citation	1998 BIP 358 (T)	
Court	Transvaal Provincial Division	
Judge	Daniels J	
Heard	November 15, 1998	
Judgment	November 15, 1998	
Counsel	D Harms for the applicant
A J Bester for the respondent	

Flynote : Sleutelwoorde 
An application for an interdict and ancillary relief to restrain the infringement of trade mark registration B&H label in respect inter all of photographic equipment and materials - Application  dismissed with costs. 
Trade Marks Act 194 of 1993, ss 34(1)(a) and 34(1)(c). 
Headnote : Kopnota 
In an application for an interdict and ancillary relief to restrain the infringement of the trade mark B&H label registered in classes 9 and 40 in respect inter alia of photographic materials  and equipment, the representation of the applicant's mark as registered was a square within which was represented a fanciful combination of the letters 'B' and 'H' by a '&', thus constituting 'B&H', accompanied by the words 'Special Mild' in fanciful lettering with scrolled underlining and the words 'BENSON & HEDGES' in italicised capital letters. The relief sought by the applicant in its founding affidavits was in terms of s 34(1)(a), and not in terms of s 34(1)(c), of the Trade Marks Act 194 of 1993 but counsel for the applicant, in his heads of  argument, sought to introduce s 34(1)(c) as an alternative cause of action and submitted that the respondent's use of the letters 'B&H' in its trading style constituted an infringement as envisaged by sections 34(1)(a) or 34(1)(c) of the Act. The Court 
Held, that, in comparing the defendant's trading style and the registered mark, there were more  glaring dissimilarities than similarities. Apart from the letters 'B&H', there were no similarities and, even then, the letters were not reproduced in the same fashion. Although the letters were phonetically identical, the appearance of the letters in the respondent's style was remarkably simple and devoid of elaborate scrolling and fanciful lettering. It could hardly be suggested that the impression gained was one of confusing similarity. 
Held, further, that it is not competent, where two composite marks stand to be compared, to  dissect the marks into their respective constituent components and then to compare only common elements in order to find a confusing similarity. This was exactly what the applicant had embarked upon in attempting to show the alleged similarity. 
Held, further, that, although it was not necessary for the applicant to prove actual confusion or deception, the fact that the parties had traded for some time, and that such trade has been conducted without actual confusion, could not be ignored. In casu it was common cause that  in about two years of trade, no confusion had arisen 
Held, further, that the applicant had failed to make out a case for the relief claimed. The application was, accordingly, dismissed with costs. 
Case Information
D Harms for the applicant.
A J Bester for the respondent. 1998 BIP p359
DANIELS J
Judgment
Daniels J: The applicant, Benson & Hedges (Pty) Ltd, seeks an order in the following terms  -
	'1.1	restraining the respondent by itself or through its servants or agents from infringing the rights of the applicant flowing from trade mark registration numbers 81/7537 and 81/ 7567 B&H label in classes 9 and 40 by using, in respect of any goods or services of which the marks are  registered, the mark "B&H" or any other mark so nearly resembling the applicant's mark as to cause deception or confusion;
	1.2
	1.3	ordering the respondent to deliver up to the applicant for destruction all goods, packaging,  labels and singe and documentation of whatever nature bearing the mark "B&H";
	1.4	ordering the respondent to pay the costs of the application.'
[The relief initially claimed in prayer 1.2, based upon unlawful competition and passing-off,  was abandoned. The parties are in agreement that the abandonment as such has no impact upon the proceedings. The arguments were confined to the relief sought in prayer 1.1, the relief claimed in prayers 1.3 and 1.4 following automatically upon prayer 1.1 being granted.]
The applicant is the owner of two trade marks being nos 81/7537 and 81/7567 registered in  relation to various goods and services in classes 9 and 40:
	'(a)	Trade mark 81/7537: B&H label in class 9 in respect of scientific, nautical, surveying and  electrical apparatus and instruments (including wireless); photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), lifesaving and teaching apparatus and instruments, coin or counter-feed apparatus; talking machines; cash registers; calculating machines; fire-extinguishing apparatus. 	(b)	Trade mark 81/7567: B&H label in class 40 in respect of bookbinding; photographic film development; metalworking; electroplating; treatment and tanning of skins; taxidermy; woodworking; ceramic works; tailoring, in turn, registered in respect of various services, and in particular photographic film development services.' The respondent is a close corporation registered as B & H Photo & Video CC, trading at Sandton City in the style of 'B & H Photo/Digital' as a vendor of photographic equipment and material. The respondent's trading name is represented as shown in the annexures to the  applicant's founding affidavit. It is common cause that it has so traded for approximately two years. The incorporation of the letters 'B' and 'H' in its trading style was bona fide and purely fortuitous. This is not disputed. The respondent offers photographic services, and photographs and photography are, amongst others, the business of the respondent. 1998 BIP p360
DANIELS J
Although the applicant is primarily interested in the production and sale of cigarettes it has recently branched out its activities and advertising campaigns specifically to photographs and photography. Examples are given of the 'B & H Summer Campaign', 'B & H Summer' and 'B & H Rag 98'. In all these instances the trade marks as registered were not used, but the  combination lettering B & H only, without any indication of the product being marketed or promoted. It is the applicant's contention that as a result of the sales and extensive advertising referred to in its founding affidavit, the B & H trademark has built up a substantial reputation  and goodwill in South Africa. If it is suggested that the B & H mark used in relation to photographic materials and equipment has built up a substantial reputation and goodwill, such is not supported by facts. It only recently embarked upon this campaign, and there is no  reason to believe upon the facts presented or otherwise that the suggestion made is valid. It is of course also not entirely correct to refer to the 'B & H trade mark' since none such trade mark exists. The representation of the applicant's trade mark is a square within which is represented a fanciful combination of the letters 'B' and 'H' and a '&', thus constituting 'B & H',  accompanied by the words 'Special Mild', in fanciful lettering with scrolled underlining and the words 'BENSON & HEDGES' in italicised capital letters. In applying a visual test or, differently put, in comparing the defendant's trading style and the registered mark, I must confess that I find more glaring dissimilarities than similarities. Apart from the letters 'B & H'  there are no similarities, and then the letters are not reproduced in the same fashion. Graphic representations of alternative use and application of the applicant's marks, are found in annexures 'TLY 3A' and 'TLY 3B' to its founding affidavit. The use of the mark in this fashion combines fat bold capital letters slightly italicized in a combination of 'B' and'H' linked by '&',  to appear as B & H, again accompanied by the words 'Special Mild' prominently displayed in fanciful lettering. Having regard to the product marketed by the applicant, one is inclined to the view that the distinguishing feature is probably to be found in the words or expression 'Special Mild' depicted in an elaborately fanciful way. These words of course do not appear anywhere  in the style employed by the respondent. The lettering otherwise used by the respondent does not even closely resemble that used by the applicant.
It is the applicant's case that the respondent's use of the trade mark is, in relation to those  goods covered by the trade mark registrations of the applicant, namely photographic film development and photographic equipment, unauthorised, and so, it is suggested, amounts to trade mark infringement in terms of s 34(1)(a) of the Trade Marks Act 194 of 1993. The relevant provisions of s 34(1)(a) of the Act for the purposes of the alleged trade mark  infringement are:
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	'(a)	the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is registered of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion.'
It is not suggested that the respondent uses an identical mark, and the applicant must merely  show that the resemblance between the applicant's registered trade marks and the respondent's trading style is so near as to be likely to deceive or cause confusion.
As I understand the applicant's case as set out in its founding affidavit, the relief sought is not  based on an infringement of a so-called well-known trade mark or a dilution of its trade marks, in terms of s 34(1)(c) of the Trade Marks Act. However, counsel for the applicant argued that s 34(1)(c) prevents the use of a mark which is identical or similar to a trade mark registration if such trade mark is well-known in the Republic and the use of the mark would be  likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception. It appears to be correct to say that in order to avoid a duplication of rights, the 1993 Act has stipulated in the proviso to s 34(1)(c) (the dilution section) that the paragraph does not apply  to marks obtained under s 53 of the 1963 Act. It was the essence of defensive registrations under the 1963 Act that the proprietor had no intention of using the trade mark in respect of the goods or services for which the defensive mark was registered, and that has been retained in the 1993 Act, where the Legislature sought a compromise between depriving the proprietor  of a defensive registration of all his rights and perpetuating trade mark rights in circumstances where the registered proprietor does not use and has no intention of using his trade mark by introducing a savings clause in s 70(2). In terms of the savings clause a defensive registration under the 1963 Act shall not be removed from the register for non-use within a period of ten years from the date of commencement of the Act, ie until 1 May 2005. Thus the proprietor of such a converted registration is in the position of a registered proprietor of a trade mark registered in relation to goods on which that  trade mark is used by the proprietor except that the proprietor of a former defensive registration need not use his mark in relation to the goods the defensive mark has been registered for. To the extent that this was not the applicant's case in the founding affidavit, it certainly would appear that the applicant sought to introduce this as an alternative cause of  action by way of counsel's heads of argument. It was argued on behalf of the respondent that even though this new cause of action was so introduced, and to that extent was irregular, no case for relief in terms of s 34(1)(c) had in any event been made out.
The manner in which the respondent is using the letters 'B & H' is 1998 BIP p362
DANIELS J
evident from the annexures to the applicant's founding affidavit: the letters the respondent uses as its trading name are bold capital 'B'and 'H' combined by '&', accompanied by the words 'Photo/Digital'.
As is apparent from the aforementioned annexures the letters 'B' and 'H' are used prominently  in relation to the words 'Photo/Digital'. The applicant suggests that the words 'Auto/Digital' are descriptive, and therefore non-distinctive, and that the essential and striking feature of the applicant's trade marks and the respondent's trading name is the letters 'B' and 'H'. I have already stated my views in this regard, and I reiterate that I am not at all convinced that the  letters 'B & H' as such, constitute the striking feature of the applicant's trade mark. Although the letters are phonetically identical, the appearance of the letters in the respondent's style is remarkably simple and devoid of elaborate scrolling and fanciful lettering. It can hardly be suggested that the general impression gained is one of confusing similarity. In developing his argument counsel pointed out that the incorporation of someone else's mark (or a mark substantially similar to that mark) into another mark (or name) has frequently been held to infringe the owner's mark even if the mark is combined with other distinctive matter. By parity of reason, so it was argued, it is even more so the case if the infringer, such as the respondent, incorporates the mark into a name that otherwise comprises non-distinctive matter.
In this regard I was referred to S Wainstein & Company v Buffalo Salt Works 1966 (3) SA  280 (T); De Cordo v Vick Chemical Company 1951 RPC 103; Standard Bank of South Africa v United Bank Ltd 1991 (4) SA 780 (T), and in particular to the judgment of Colman J in Oudemeester Groep Bpk and Another v S A Breweries Ltd; S A Breweries Ltd and Another v Distillers Corporation SA Ltd 1973 (4) SA 145 (T) at 161 where the test to be  applied was stated as follows:
	'For the sake of simplicity, I shall confine myself to the possible infringement of those marks which include, as prominent features,' "Oudemeester" or "Old Master". . . I am required, notionally, to  transport myself from the court room to the market place, and to stand in the shoes or sit in the chairs of those who buy beer. . . . I must ignore the advantages of looking at the two relevant marks side by side, and I must allow for the imperfect recollection which is characteristic of most human beings (see Aktiebolaget Hjorth & Co v Aktiebolaget Optimus1932 TPD 77 at 187; American Chewing Products Corporation v American Chicle Co 1948 (2) SA 736 (A) at 744). I must remember  that there is a tendency for people (and, I incline to think, ill-educated and uneducated people in particular) to abbreviate the names of things (see Application of Frederick Wilks: The Aqua-Repela case (1912) 29 RPC 21). I must remember that confusion in sound is no less important than confusion in appearance . . . I must bear in mind, as well, that the idea conveyed by a mark may be  remembered, accurately or vaguely, rather than its exact form of characteristics.'
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[For the sake of completeness I quote from the American Chewing Products case, supra, at 744, where it was said that: 'It must also be remembered that in coming to a conclusion on the question in issue, the Court must not only consider the marks when placed side by side but must have regard to the position of a person who might at one time see or hear one of the  marks and later, possibly with an imperfect recollection of that mark, come across the other mark.'
In this regard I was also referred to Plascon Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd, 1984 (3) SA at 623(A) 641, where Corbett JA, as he then was, is reported as having said that 'The comparison must be made with reference to the sense, sound and appearance of  the marks.']
It was submitted with reference to Plascon Evans Paints Ltd, supra at 640, and Triang Pedigree SA (Pty) Ltd v Prima Toys (Pty) Ltd 1985 (1) SA 448 (A) at 467, that having regard to the fact that the striking feature of the respondent's trading name is identical to that of  the applicant's trade mark registration, a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of a connection between the respondent's goods and the applicant's trade mark.
It was accordingly submitted that the respondent's use of the letters 'B' & 'H' in its trading  style, constitutes an infringement as envisaged by ss 34(1)(a) and or (c) of the Act.
The respondent obviously does not use 'B' & 'H' as a trade mark in relation to photographic equipment and materials, and as I understand the applicant it is not its case that it does. Its  complaint is directed exclusively at the respondent's use of the trading style, 'B & H Photo/Digital', which is used in relation to the services of the respondent as a purveyor of photographic equipment, materials and the rendering of related services, such as film processing, etc.
The applicant does not and cannot allege or rely on the use of an identical mark since the  respondent's trading style is not identical to the applicant's trade marks as registered. Apart from the test to be applied to which reference has been made, the nature of the enquiry was also discussed in the Plascon-Evans Paints Ltd case supra, at 640, where it was said that  -
	'The determination of these questions involves essentially a comparison between the mark used by the defendant and the registered mark and, having regard to the similarities and difference in the two  marks, an assessment of the impact which the defendant's mark would make upon the average type of customer who would be likely to purchase the kind of goods to which the marks are applied . . . The comparison must be made with reference to the sense, sound and appearance of the marks. The marks must be viewed as they would be encountered in the market place and against the background of relevant surrounding circumstances. Marks must not only be considered side 1998 BIP p364
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	by side, but also separately. It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant's mark, with an imperfect recollection of the registered mark and due allowance must be made for this. If each of the marks contains a main or dominant feature or idea the likely impact made by this on the mind of the customer must be taken into account. As is has  been put, marks are remembered rather by general impressions or by some significant or striking feature than by a photographic recollection of the whole. And finally consideration must be given to the manner in which the marks are likely to be employed as, for example, the use of name marks in conjuction with a generic description of the goods.'
In considering whether there is an infringement, the Court must firstly direct its attention simply to a comparison between the applicant's registered trade mark and the respondent's mark. (John Craig (Pty) Limited v Dupa Clothing Industries 1977 (3) SA 144 (T) at 149G) It is not competent, where two composite marks stand to be compared, to dissect the marks into their respective constituent components and then to compare only common elements in order to find a confusing similarity. This appears to be exactly what the applicant embarked upon in attempting to show the alleged similarity:
	   (i)	it excised the letters 'B & H' from the trade mark as registered; these letters are but one component of the applicant's trade mark which is composed of various elements, namely the words "Benson & Hedges', 'Special Mild' and the letters 'B & H' within a rectangular border device; in addition, all of these components appear in a stylised, cursive or fanciful script form;
	  (ii)	it then excised the letters 'B & H' from the respondent's trading style of 'B & H Photo/Digital'; and finally
	  (iii)	it elevated the letters 'B & H' to the status of an independent (registered) trade mark in respect of which it seeks exclusive use and monopolistic protection.
In the latter regard the following statements appear in its founding affidavit: the 'B & H' trade mark, in addition to the Benson and Hedges trade mark, has built up a substantial reputation and goodwill; the respondent is using the trade mark 'B & H'; the respondent's use of the trade mark 'B & H' is unauthorized by the applicant, the registered proprietor of the trade mark. All of these statements are factually incorrect since the applicant does not have a 'B & H' trade mark.
However this may be, this comparative exercise by the applicant is not competent and ignores the above quoted dictum in Plascon-Evans (and John Craig) where it was held that the comparative exercise entails, amongst others, due regard to not only the whole of the marks, but also to the similarities and differences in the two marks. The mere fact that marks
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share some common features, the likelihood of confusion does not necessarily follow. Moreover, the public would also distinguish the marks by their non-common features. Even small differences between marks have in the past been held to be sufficient to avoid confusion. See for example Office Cleaning Services v Westminster Window and General Cleaners (1946) RPC 39 (HL) at 42 lines 28-31; [1944] 2 All ER 269 (CA) at 270F-271B;  Horseshoe Caterers Limited v Burnkloof Caterers Limited 1975 (2) SA 198 (C) at 206E, citing the Westminster case with approval. I have previously stated my views in regard to the so-called main or dominant features of the applicant's marks as opposed to the respondent's trading style. Apart from those features, I am of the view that the general impression gained  from the marks is one of almost complete difference, and the letters 'B & H' in the context of the overall picture are insignificant and do not convey any special idea or feature. Isolated, they are almost entirely irrelevant. As I have indicated the words cannot be elevated to 'a significant  or striking feature'.
Although it is not necessary for the applicant to prove actual confusion or deception, the fact that the parties have traded simultaneously for some time, and that such trade has been conducted without actual confusion, cannot be ignored. In Kerley's The Law of Trade Marks  and Trade Names 12th ed 456 par 17-29, it is said that:
	'Proof of actual deception, if the mark is in the opinion of the tribunal likely to deceive or if it has been substantially copied from another, is unnecessary. Nevertheless, if one or more cases of actual confusion are made out to the satisfaction of the court, this will, of course, afford very strong evidence  that the resemblance the marks in question (have) is so close as to be likely to deceive. The absence of evidence of actual deception is a circumstance which varies greatly in weight according to the nature of the case . . . Nevertheless, where the marks have been circulating side by side in the market where deception is alleged to be probable, the fact that no one appears to have been misled  is very material, unless satisfactorily explained.'
(See also Bristol Laboratories Inc v Ciba Ltd 1960 (1) SA 864 (A) at 873B-C.)
It appears to be common cause that in just about two years of trade, no confusion has  arisen.
The applicant has not shown any actual confusion. It is readily apparent that the applicant's registered trade marks and the respondent's trade name are not so near as to be likely to lead to deception or confusion. Apart from the fact that actual confusion has not even been  suggested, it would almost be impossible to arise since the applicant's registered trade mark would normally be encountered in the market place on cigarette packages and appropriate advertising material, and not in relation to photographical services. The only common element or similarity, 'B & H, is distinguished by the clear differences between the marks, and 1998 BIP p366
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visually and sensually the registered trade marks and the respondent's trading style bear no similarity.
It follows from what I have said that, in my view, in applying the test previously referred to, I am satisfied that the applicant has failed to make out a case for the relief claimed. The  application is accordingly dismissed with costs.
Applicant's Attorneys: Adams & Adams.
Respondent's Attorneys: Beder-Friedland Inc.