IN THE HIGH COURT OF SOUTH AFRICA

GAUTENG DIVISION, PRETORIA

	Case number:  35038/2013
						 
DELETE WHICHEVER IS NOT APPLICABLE
(1)	REPORTABLE: YES/NO
(2)	OF INTEREST TO OTHER JUDGES: YES/NO
(3)	REVISED

..................................................................
         DATE                           SIGNATURE	

In the matter between:

BALENCIAGA S.A	Applicant
								         (Opponent)
and

THE SHORTY’S FAMILY TRUST	Respondent
                                                                                     (Trade Mark Applicant)

JUDGMENT
______________________________________________________________

A.A.LOUW J

Introduction
[1]	This is an opposed application (“the opposition”) to the registration of trade mark application no. 2009/04236 BALEGA in class 25 of the International classification of goods and services in the name of the Respondent (“the application”).  The application was filed for registration on 11 March 2009 and was advertised for opposition purposes in the Patent Journal dated 28 April 2011.  The goods for which registration is sought in terms of the application for registration are:
		Class 25
“Headgear Footwear and clothing”

[2]	The Registrar of Trade Marks has referred these proceedings to this court in terms of the provisions of Section 59(2) of the Trade Marks Act, No 194 of 1993, (“the Act”).

[3]	The Opponent, (“The Applicant”) is a company incorporated under the laws of France with its principal place of business at 15 rue Cassette, 75006, Paris, France.  The applicant for the trade mark, (“The Respondent”) is the Shorty’s Family Trust, of 60 Prince Edward Street, Durban.

[4]	It is common cause that the Applicant is the registered proprietor of:
Trade mark registration no. 1979/02172 BALENCIAGA in class 25 in respect of “Clothing, namely outerwear and underwear, foundation garments, head coverings, hosiery, footwear”.  This trade mark was filed on 25 April 1979 and registered on 12 December 1980.

[5]	In terms of section 10(14) of the Act the following mark shall not be registered as a trade mark: 
“…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…”

[6]	I therefore has to decide whether there is a likelihood of confusion between the use of the trade mark BALEGA in view of the existence of the trade mark BALENCIAGA, which has been registered in relation to the same goods as those in respect of which the respondent is seeking registration.

The BALENCIAGA brand
[7]	In its own words: 
“1.	The House of Balenciaga was founded almost a century ago by Cristobal Balenciaga, a Spanish designer who would become respected throughout the fashion world for his unrelenting perfectionism, and expert knowledge of technique and construction, ultimately being referred to as “the master of us all” by Christian Dior.
2.	The first boutique opened under the Trade Mark BALENCIAGA opened its doors in San Sabastian, Spain, in the first quarter of the twentieth century, with branches in Madrid and Barcelona following suit.  The first BALENCIAGA collections were greeted with immediate success, with the Spanish royal family and aristocracy wearing BALENCIAGA designs.  Subsequently, the Spanish Civil War forced the closure of Balenciaga’s boutiques.  Cristobal Balenciaga moved his operation to Paris, the acknowledged fashion capital of the world, and in 1937 opened his legendary fashion house at 10 Avenue George V.
3.	In August 1937, Cristobal Balenciaga staged his first runway show at the Avenue George V atelier.  His first collections were a resounding success with buyers and press alike, establishing the trade mark BALENCIAGA as representing a highly sought-after design, and cementing Balenciaga’s place in fashion history.
4.	During 1947 and 1948 the first perfume bearing the trade mark BALENCIAGA was created, and the opening of the shop bearing the trade mark BALENCIAGA coincided with the launch of the second BALENCIAGA perfume.  In 1968, Cristobal Balenciaga was commissioned to design uniforms for Air France air hostesses.
5.	Throughout the mid-century period, Cristobal Balenciaga continued to create original, progressive designs, which would influence the shape of fashion for years to come, and were favoured by high society clientele including the Duchess of Windsor, Pauline de Rothschild, Gloria Guinness and Marlene Dietrich and, famously, Jackie Kennedy.  With his design innovations, Balenciaga radically altered the fashionable silhouette of women, an achievement widely-considered to be his most important contribution to the world of fashion.
6.	Christobal Balenciaga’s reputation as “the couturier of couturiers” is well-earned, with numerous famed designers, including Oscar de la Renta, Andre Courreges and Emanuel Ungaro, apprenticing at his atelier before opening their own succesfull couture houses, as well as Hubert de Givenchy, who considered Cristobal Balenciaga as his mentor.
7.	Following Cristobal Balenciaga’s death in 1972, the BALENCIAGA trade mark changed hands twice and is now owned by the Opponent.
8.	Today, the Opponent has may boutiques bearing the trade mark BALENCIAGA and has many exclusive boutiques in the United States, located in New York City, Lost Angeles, Las Vegas and Costa Mesa (California).  Celebrity devotees to the BALENCIAGA trade mark include actresses Jennifer Connelly, Nicole Kidman, Kylie Minogue, Sienna Miller, Jennifer Garner, Hilary Rhoda, Gwyneth Paltrow, Maria Bello, Maggie Rizer, and many others.  There are many other Balenciaga boutiques in the world, including in Paris, Milan, London, Tokyo, Beijing, Singapore, and many more.”

[8]	The Applicant therefore states that the trade mark BALENCIAGA symbolises a well-established, prestigious brand and couture house, with a considerable international presence favoured by top celebrities and coveted by followers of fashion worldwide.

The BALEGA mark
[9]	A business, now owned and operated by the respondent, started trading as a family-owned business conducted mainly in the informal trade that included street and hawker trades.  In 1999 it opened a retail store called SHORTY’S in Prince Edward Street, Durban.  The deponent states that the clothing is marketed primarily to hawkers and informal traders who very successfully distribute the respondent’s clothing.  

[10]	In 2000 there was a demand in the clothing market for shorts, particularly tight-fitting shorts which could be used for running and cycling.  The respondent commenced manufacturing such shorts locally which it sold in its retail outlets.  As the demand for the shorts in the market grew, the respondent commenced distributing the shorts to other retail outlets.

[11]	It was around this time, i.e. 2000, that the word “balega” was adopted as a mark.  In isiZulu it means “to run”.

[12]	The respondent’s target market is the lower to middle income group consisting primarily of the Black race group, many of whom are illiterate and poorly educated people as well as semi-literate and literate.

[13]	In 2005 the mark gained popularity in the market and the range was extended to the marketing of men golf-shirts, trousers and lounge shirts. 

[14]	The respondent’s deponent states that its business activities in relation to BALEGA remain mainly the hawker trade throughout South Africa, more particularly in Durban, KwaZulu-Natal.      

The law relating to confusion 
[15]	In Plascon Evans Paint (Pty) Ltd vs Van Riebeeck Paints (Pty) Ltd  the following guidelines were provided:
“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 differences 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. This notional customer must be conceived of as a person of average intelligence, having proper eyesight and buying with ordinary caution. The comparison must be made with reference to the sense, sound and appearance of the marks.”

[15]	In British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 at 296 – 7 the following is stated:
“I think the following factors must be relevant in considering whether there is or is not similarity:
(a)	The respective uses of the respective goods or services;
(b)	The respective users of the respective goods or services;
(c)	The physical nature of the goods or acts of service;
(d)	The respective trade channels through which the goods or services reach the market;
(e)	In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
(f)	The extent to which the respective goods or services are competitive.  This inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.”
The Law applied
[16]	Firstly, are the marks so similar?  The applicant points out that both words start with the syllable “BA” and end in “GA”.  It is also pointed out that both marks incorporate the syllable “LE”.  This contention is not correct as the respondent’s mark will probably be pronounced in five syllables namely, “BA”, “LEN”, “CI”, “A” and “GA”.  There was no expert evidence as to its pronunciation but it is, to my mind, clear that the word BALENCIAGA has a certain rhythm to it which cannot be confused with the pronunciation of BALEGA which is a shorter and sharper word.  Visually the words cannot be compared as BALEGA consists of six letters whilst BALENCIAGA consists of ten.

[17]	As to this similarity of goods it ends at the point where both brands relate to clothing.  The facts I have outlined above, however, make it abundantly clear that the class and quality of the clothing of BALEGA cannot be confused with the products of BALENCIAGA.  I need not elaborate on that any further. 

[18] The dicta I have referred to above make it clear that one does not stop at merely comparing the marks and the goods but that important factors are also the respective uses, trade-channels and whether the goods are competitive.  Applying these three factors it is abundantly clear that there is no likelihood of deception or confusion.  There is no talk of the goods being competitive or marketed through the same trade-channels.  On the one hand you have the exclusive boutiques (not one of which is in South-Africa) catering to the rich and famous whilst on the other hand BALEGA goods are sold mainly by hawkers to the middle to low income groups in South Africa.  The buyer of a BALENCIAGA product is so unlikely to confuse that with a BALEGA product, and vice versa, that this notion can be safely discarded.

[19] 	I therefore find that there is no likelihood of confusion should both marks be registered in regard to clothing and so used.  It follows that the applicant’s opposition to the registration of the trade mark fails.

[20]	I make the following order:
The opposition is dismissed with costs, including the costs of two counsel and the trade mark BALEGA number 2009/04236 is to proceed to registration.

	

______________________
A.A. LOUW
Judge of the High Court

Case number			: 	35038/2013	
Heard on				:	28 October 2013
For the Applicant			:	D Harms
Instructed by				:	Spoor & Fisher
For the Respondent 	: 	A.W.M. HARCOURT SC AND I.J.  
PATEL
Instructed by				:	Imraan Shah & Associates
Date of Judgment			:  	21 March 2014