South Africa: The Male Torso: Is It Distinctive?

Last Updated: 16 May 2019
Article by Gaelyn Scott

Most Read Contributor in South Africa, July 2019

There was a highly unusual trade mark opposition matter in the USA recently. The case of In re Coscentra B.V involved a comparison of two perfume bottles in the shape of a male torso.

A company applied to register a male torso-shaped perfume bottle as a trade mark for perfumery. The application was refused on the basis of an existing trade mark registration for a male torso-shaped perfume bottle covering perfumery. This registration is, of course, for the well-known Jean Paul Gaultier fragrance.

image source

The issue was very simple: were the two male torso trade marks confusingly similar? The company that filed the later application obviously argued that they weren't, pointing to various differences – these arguments are set out below and, for the sake of clarity and brevity, we've paraphrased them somewhat:

"In today's media-dominated world people are accustomed to seeing images of naked men. They know that not all males were created equal. They know that some of these creatures are big and strong, whereas others are small and puny. So there's no doubt that they'll notice that the man in our bottle is big and strong, whereas earlier trade mark man is anything but, he's slender, he's in no way buffed, and he has a disproportionately large buttocks... one can't help thinking he must be an intellectual. People will notice that the arms of our man are cut longer, emphasizing his huge shoulders, whereas the arms of earlier trade mark man are cut short. And what they'll certainly notice is that, unlike earlier trade mark man, our man has private parts - consumers will definitely notice that because private parts are not commonly shown in a consumer product!"

But the US trade mark authority, the USPTO, was not persuaded. It felt that the trade marks were confusingly similar. In coming to this conclusion, it made a number of points. It said that the two trade marks were "highly similar in sight, connotation and commercial impression." It said that a side-by-side comparison was not appropriate: "It is the overall commercial impression of the marks derived from viewing the marks in their entireties that is controlling rather than an analysis of the specific details." It went on to explain this as follows: "Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections ... the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks." 

The USPTO made a number of other points. It said that bottles with human forms are very rare – it had, in fact, been unable to find a single other trade mark comprising a male torso. It said that there was no reason to find that the earlier mark was "either commercially or conceptually weak, rather, it was registered on the Principal Register without any disclaimer or claim of acquired distinctiveness." It suggested that when it comes to aural use, consumers would probably refer to both trade marks as "perfume container in the shape of a male torso."

It's interesting to speculate on whether a similar result would have been reached in South Africa. Confusing similarity is probably the single biggest issue in trade mark law and we frequently discuss it in our articles. Regular readers will know that the South African Supreme Court of Appeal ("SCA") has delivered quite a few judgments on the issue over recent years, such as the one in the Yuppiechef case, Yuppiechef Epson Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd.

The SCA has spoken of the fact that a "value judgement" is required. It has said that this value judgement must be based on the "global appreciation of the two marks." It has said that this involves a "consideration of the marks as a whole and the overall impression created by the marks." It has said that this involves a "consideration of the main or dominant features of the marks in question." It has said that the likelihood of confusion "must be appreciated globally or holistically – the average consumer perceives a mark as a whole and does not analyse its various details." It has said that there "should not be undue peering at the two marks to find similarities or differences." It has said that the nature of the goods or services covered by the two trade marks is also important and that "lesser similarities in marks may be counterbalanced by stronger similarities in the goods."

Based on these authorities it is, we think, quite possible that a similar result would have been reached in South Africa – there is a likelihood of confusion! The goods are the same and the target markets are the same. Trade marks of this type are rare. Each trade mark comprises the same thing: a male torso with no head, no legs, and no arms. There must be no "undue peering." Not at the impressively large shoulders. Not at that wonderfully muscular chest. Not even at the private parts!

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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