Pretoria - It was not all smooth sailing for a cigarette manufacturer when it tried to convince some of the country’s top judges that the words Pacific and Atlantic were actually the same thing.
But five justices of the Supreme Court of Appeal were far from convinced by this.
Apart from these two words not looking or sounding the same, they were two vastly different oceans located in two different geographical locations in the world, they said.
This debate was sparked by a battle over the name of cigarettes.
Open Horizon Ltd, the registered proprietor of various “Pacific” trademarks, which include tobacco and cigarettes, turned to the court to interdict a rival company.
It said Carnilinx infringed on its trademarks by using “Atlantic, Atlantic Wave, Atlantic Menthol” and other marks containing Atlantic on its cigarette packages.
Open Horizon contended that the use of the Atlantic marks was likely to cause deception or confusion in terms of the Trade Marks Act and among consumers.
It, among others, reasoned that the words “Pacific” and “Atlantic” all point to the same thing – an ocean.
The Gauteng High Court, Pretoria, earlier dismissed the application relating to the trademark, which Open Horizon claimed is being infringed. Unhappy with the verdict, the company turned to the appeal court.
Open Horizon has been the registered proprietor of various Pacific trademarks since November 2003.
The dispute, in this case, was whether Carnilinx’s Atlantic trademarks resemble that of Open Horizon’s Pacific trade mark and whether it would cause confusion among consumers and whether they would believe it’s the same product.
Open Horizon (the appellant) argued that the dominant element of Carnilinx’s “infringing” marks is the word “Atlantic”, which is conceptually identical to their Pacific trade marks. It was said that both images on the packets depicted the image of an ocean and conveyed the same idea.
It was not the appellant’s case that the Pacific and Atlantic trademarks are phonetically or visually similar.
The appellant accepts that the words Pacific and Atlantic do not look or sound the same. It, however, argued that Carnilinx (the respondent) was not entitled to use the Atlantic trademark, which happens to be the name of an ocean.
This, it was argued, is because it might conjure up the same idea as the appellant’s registered trademark, which also happens to be the name of another ocean, namely the Pacific ocean.
Judge Nathan Ponnan, who delivered the judgment, remarked that the Pacific and Atlantic trade marks evoke the concept of an ocean in an indirect manner.
“The fact of the matter is that the words relate to two different oceans.
“Pacific and Atlantic will not be perceived by the average consumer as depicting two unidentifiable oceans, but rather as two vastly different oceans located in two different geographical locations in the world,” he said.
In turning down the appeal, he said there was not likely to be deception or confusion between the brands.
Pretoria News