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Adele Elliott
5 years ago
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1 IN THE HIGH COURT OF SOUTH AFRICA (GAUTENG DIVISION, PRETORIA) DELETE WHICHEVER IS NOT APPLICABLE (1) REPORTABLE: NO. ij) OF INTEREST TO OTHER JUDGES: NO. ~> ~l~t~<?_i_~.. DATE In the matter between: TEQUILA CUERVO S.A de C.V APPELLANT and FABRICATION AND LIGHT ENGINEERING CC RESPONDENT Coram: POTTERILL J, HUGHES J et MPHAHLELE J JUDGMENT HUGHES J

2 1 [1] The appellant, Tequila Cuervo S.A de C.V, is the proprietor of the registered mark JOSE CUERVO, which mark is used in South Africa in the production of tequila products. The respondent, Fabrication and Light Engineering CC, sought to register the trade mark IL CORVO in class 33. The appellant unsuccessfully opposed the aforesaid registration and with the leave of the court a quo appeals the order. [2] The appellant's opposition to the registration of the IL CORVO trade mark is premised on sections 10(12), 10(14) and 10(17) of the Trade Marks Act 194 of 1993 (the Trade Marks Act). It contends that its trade marks CUERVO for "Spirits" and JOSE CUERVO for "Alcoholic liqueurs, including Tequila " are registered in class 33. [3] The court a quo found that "it was extremely unlikely that the notional consumer would know that "corvo" and "cuervo" both mean raven in different languages. This reduces the risk of confusion about origin. It was further found that the trade mark IL CORVO does not visually and conceptually resemble the trade marks JOSE CUERVO or CUERVO. The contesting marks were held to have clear distinctive dominant components, which differed glaringly from the proposed mark. The court a quo further held that the average customer seeking to purchase wine would exercise reasonable circumspection and observation that wine (IL CORVO) and spirits (CUERVO) or alcoholic liqueur (JOSE CUERVO) were different in nature and in their manufacturing process. Lastly, that the consumer is well aware that wine and spirits are sold in different parts of retail establishment. [4] For ease of reference I set out the relevant sections upon which the appellant placed reliance: "[1 OJ Unregistered trade mark The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of section 3 and 70, be liable to be removed from the register: ( 1 )... (12 ) a mark wh ich is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons;

3 2 (14) subject to the provisions of section 14, a mark which is identical to a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark; (17) a mark which is identical or similar to a trade mark which is already registered and which is wellknown in the Republic, if the use of the mark sought to be registered 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 deception or confusion, unless the proprietor of such trade mark consents to the registration of such mark:" [5] The case made out by the appellant, in the court a quo, is that in terms of section 10(12) the proposed use of the mark IL CORVO is likely to deceive or cause confusion as it is similar to the mark CUERVO. Further, in terms of section 10(14) the respondent's mark, IL CORVO, is so similar to the appellant's mark CUERVO and JOSE CUERVO. Thus, the use of the respondent's mark on wine, wine being similar to spirit or tequila, is likely to deceive and cause confusion. Lastly, in terms of section 10(17) the two marks of the appellant are well-known in South Africa and the use of the respondent's mark is likely to take advantage of or be detrimental to the distinctive repute and character of the appellant's marks. [6] The appellant contends that the court a quo erred in that the respondent had conceded that the marks were conceptually similar and it was shown to be so, thus the court was incorrect to hold that they were conceptually distinct. Further, that the court a quo erred in not finding that if spoken about and not visually viewed the marks were likely to cause confusion. Hence, so the appellant argues, the expert evidence adduced demonstrated that pronouncement of the marks were similar and was likely to cause aural confusion. In addition, insufficient weight was given, by the court a quo, to the fact that consumers are aware that wine and spirit sometimes share a common manufacturer of origin. [7] The thrust of the appellant's argument before this court was that the marks are phonetically or aurally similar to each other in speech. Thus, in the marketplace where wines and spirits are ordered, confusion between the two marks, CORVO and CUERVO, is likely. Especially so in South Africa, a multi-cultural society, which lends

4 3 itself to the possibility of imperfect pronunciation by the South African public. It was argued that aural confusion, especially so in South Africa, must be taken into account when one visualises conversation between people who do not articulate carefully and clearly, having a natural tendency to pronounce words differently. [8] The appellant in asserting this argument places reliance on the expert testimony in the form of a report of Mr Albertus Jacobus van Rooy a research professor of the School of Languages at Vaal Triangle Campus North West. Professor van Rooy conducted an analysis on behalf of the appellant and compiled a report. The following conclusion is reached by the professor after he conducted his analysis of the words CUERVO and CORVO: "Risk of Confusion: 1. Meanings are very similar in the language of origin, thus very likely to be regarded as similar by the people who understand the original languages 2. Pronunciation : the risk of confusion, or of the words sounding the same is similar to the risk that the words "poor" and "pour" will be confused in English on purely phonetic grounds, but since both are nouns and may be used in the same context, the combined risk of confusion is bigger. In native-speaker South African English, there is a trend towards the vowels in poor and pour sounding similar (Sou rce: Bowerman, 2008), a risk that is even bigger in the pronunciation of Black South Africans (Sou rce : Van Rooy 2008) Assessment: There is a high likelihood of confusion in the pronunciation of the two forms, wh ich is amplified by their similarity in meaning in the source language." [9] The respondent argued that for the appellant to succeed in term of section 10(12) and 10(17) they would have to establish a reputation in the marks CUERVO and JOSE CUERVO. The respondent contends that no reputation has been established by the appellant for either CUERVO or JOSE CUERVO. This is so, as the evidence advanced. by the appellant, in the form of pamphlets, publication, songs, website and twitter use and the like, are not related to their use in South Africa. Moreover, that evidence by the appellant primarily relates to the JOSE CUERVO and not to the CUERVO mark, as also reflected on the invoices used. The respondent further argues that a mark is well known if it is well known to persons interested in the goods or services to which the mark relates. Due regard is given to the knowledge of the public, including knowledge obtained as a result of the promotion of the mark and in this instance the respondent contends that the

5 4 appellant has failed to establish reputation of the marks as they have not shown that sufficient people in South Africa know the marks well enough to attain protection against deception or confusion. [10] In respect of the application of section 10(14), in the context of this case, the respondent argues that the appellant has not made out a case to support the existence of deception or confusion. The respondent states that there cannot be confusion as the average consumer of alcoholic beverages is discerning and not likely to be easily confused or deceived. This is trite, they add, as it has been held as such in Distel! Ltd v KZN Wines and Spirits CC 2016 JDR 0488 (SCA). Further, wines and spirits are different products and the manufacturing of same materially differs. No single case of concussion and deception has been recorded since the start of the sale of the wine IL CORVA in Not forgetting that the sale of wine and spirit in a retail establishment are set out in different areas of the said establishment. [11] I agree with the respondent's contention that the appellant made concessions that wine and spirit were different products, that the chemical process in their production differs and that they are sold in different areas of a retail establishment. Hence, in my view, the appellant accepts that the average consumer will not be deceived or confused into thinking CUERVO tequila or spirit is in fact IL CORVO wine, or the other way round. This in turn leaves the appellant with a restricted argument in advancing its deception or confusion argument, being that there is a connection between the appellant and the wine of the respondent, as well as a connection between the wine produced and the spirit produced. Put differently that the wine, just like the tequila and the spirit, is a trade mark of the appellant. [12] Turning to the core of the appellant's case, that being the phonetic similarity, the respondent takes issue with the appellant's reliance on Professor van Rooy's opinion, as they contend that the said opinion does not comply with the rule 36(9)(b) of the Uniform Rules of Court to qualify as an expert report. The respondent avers that no reasons are advanced in the opinion for the conclusions reached. They further argue that the conclusions reached by Professor van Rooy amount to conclusion without facts to support these conclusions. Lastly, the respondent contends that the appellant, as good as, concedes that because of the prefix IL a

6 5 phonetic difference results and that CUERVO and CORVO are spelt differently. Therefore there are phonetic differences when pronounced. [13] The nature of expert's evidence and how it should be assessed was affirmed rn Coopers (South Africa) (Pty) Ltd v Deutsche Gesellschaft Fur Schadlingsbekampfung MBH 1976 (3) SA 352 (A.D) at 371 G-372A: "(See Klue and Another v Provincial Administration, Cape (2) S.A. 561 (E) at p.563). ' As I see it, an expert's opinion represent his reasoned conclusion based on certain facts and data which are either common cause, or established by his own evidence or that of other competent witness. Except possibly where it is not controverted, an expert's bald statement of his opinion is not of any real assistance. Proper evaluation of the opinion can only be undertaken if the process of reasoning which led to the conclusion, including the premises from which the reasoning proceeds, are disclosed by the expert. Even bearing in mind that the addressee of the summary is properly also an expert, I am of the opinion that the addressee may not be able to evaluate the opinion, so as to enable him to advise the party consulting thereon, if he is not informed in the summary of "the reasons" for the opinion. Having regard to the above meaning of the word "reasons" in the context of the sub-rule as a whole and the purpose thereof, I am of the opinion that the summary must at least state the sum and substance of the facts and data which lead to the reasoned conclusion (i.e., the opinion). Where the process of reasoning is not simply a matter of ordinary logic, but involves, for example, the application of scientific principles, it will ordinarily also be necessary to set out the reasoning process in summarized form. The addressee should then be in a position to evaluate the opinion, and be in a position to advise the party consulting him whether the opinion can be controverted and, if so, what evidence is required to do so." Coopers at 371A-C, further states that the facts or data for the opinion reached by the expert witness must appear in the reasons for his or her opinion or conclusions. These facts or data would include experiments, investigations and information obtained. More recently in Commissioner, South African Revenue Service v Stepney Investments (Pty) Ltd 2016 (2) SA 608 (SCA) at 616F- H Majiedt JA stated : "More importantly, as Addleson J said in Menday v Protea Assurance: 'It is not the mere opinion of the witness which is decisive but his ability to satisfy the Court that, because of his special skill, training or experience, the reasons for the opinion which he expresses are acceptable. -:-. the Court, while exercising due caution, must be guided by the views of an expert when it is satisfied of his qualification to speak with authority and with the reasons given for his opinion.' [My emphasis.]" [14] Bearing the aforesaid in mind the following rings true in this instances:

7 6 "Proper evaluation of the opinion can only be undertaken if the process of reasoning which led to the conclusion, including the premises from which the reasoning proceeds, are disclosed by the expert." [Extracted from above] In this matter I find that there is no premise from which Professor van Rooy commences neither do I find any reasoning for the opinion he expresses. At the least Professor van Rooy ought to have summarized his reasoning in order for me to conduct a proper evaluation of the opinion he expresses. At best, the appellant merely submitted an affidavit by Professor van Rooy, which does not comply with the requirements for an expert's opinion in terms of Rule 36(9)(b) of the Uniform Rules of Court. [15] As regards the marks creating confusion for the consumers, I am of the view that the court a quo was correct when it concluded that the two marks overall impression was distinctly different. On an examination of the marks one cannot dismiss the prefix of IL in the respondent's mark. This in my view causes a difference in the spelling, appearance and pronunciation of the two marks. In addition, the products are different, the one being spirit and tequila and the other being wine, and they are sold in totally different section a retail establishment. [16] To top it off I am mindful that the consumer who buys wine or spirits is a discerning consumer and they know the difference in respect of the products themselves. Thus, there is no likelihood of confusion, knowing full well that the products are sold in different section of a retail establishment. The products are clearly distinct and surely not similar. [17] I agree with the respondent that the appellant in paragraph 11 of its replying affidavit, in my view, practically capitulates, when it states: "11. It is correct that there are visual and, amongst certain consumers, phonetic differences between the JOSE CUERVO mark, on the one hand, and the IL CORVO mark on the other. I admit that the element "IL" in the Applicant's mark creates a potential phonetic difference between JOSE CUERVO and IL CORVO. I also admit that CORVO is spelled differently to CUERVO. I also admit that when correctly pronounced, there are phonetic differences between the Applicant's and the Opponent's mark." [18] The aforesaid, as argued by the respondent, negates Professor van Rooy's so called expert opinion, which the appellant seek this court to take cognisance of.

8 7 Nothing worth pursuing was advanced in the argument of the appellant consequently the appeal must fail. [19] In the circumstances the order I make is as follow: [1] The appeal is dismissed with costs. ourt Gauteng, Pretoria I concur I concur It is so ordered urt Gauteng, Pretoria

CASE NO: 554/90 AND A B BRICKWORKS (PTY) LTD VAN COLLER, AJA :

CASE NO: 554/90 AND A B BRICKWORKS (PTY) LTD VAN COLLER, AJA : CASE NO: 554/90 JACOBUS ALENSON APPELLANT AND A B BRICKWORKS (PTY) LTD RESPONDENT VAN COLLER, AJA : CASE NO: 554/90 IN THE SUPREME COURT OF SOUTH AFRICA (APPELLATE DIVISION) In the matter between: JACOBUS