Wella A. G. v Hallais Procheme Industries, Miscellaneous Civil Appeal No. 8 of 1992, High Court of Tanzania at Dar Es Salaam
Wella A. G. v Hallais Procheme Industries, Miscellaneous Civil Appeal No. 8 of 1992, High Court of Tanzania at Dar Es Salaam
Bahati, J.
Dated: July 1, 1994
Facts
The appellant was the registered proprietor in Tanzania of the trade mark "Wella" in relation to laundry products, cleaning products, and cosmetics. The appellant unsuccessfully opposed the registration of seven trade marks before the Registrar of Trade. The appellant appealed to the High Court against the decision made by the Principal Assistant Registrar of Trade marks with respect to the registration of six trade marks by the respondent. The appellant raised several grounds of appeal, including the lack of visual distinctiveness between the "Bella" mark and the proprietor and that the word "Wella" conferred the mark distinctiveness. The appellant claimed that the resemblance of the words "Wella" and "Bella" for the same goods was likely to cause confusion.
Each opposed mark was different from each other, both visually and in terms of the class in which it was registered. Also, the goods of the opposing marks were not the same. Another ground of appeal was that since the Registrar concluded that the appellant’s trade mark had a high reputation, he had the duty to protect it pursuant to the provisions of the Paris Convention for the Protection of Industrial Property, 1883, to which Tanzania is a party. The respondent also argued that the opposition proceedings with respect to three trade marks were unfounded because those trade marks had already been registered. The appellant counterclaimed that even if those trade marks had been registered, it would not prevent anyone from applying to have them expunged from the Register by virtue of section 35 of the Ordinance.
Holdings
(i) Section 35 of the Trade Marks Ordinance clearly gives the aggrieved party the right to apply for the expunging or varying of the entry into the register for any trade mark.
(ii) There is no doubt that section 21 (4) of the Trade Marks Ordinance requires the applicant to send to the Registrar, after a notice of opposition, a counterstatement of the grounds on which he relies for his application, or else, the application shall be deemed abandoned.
(iii) A distinctive trade mark must mean some mark that distinguishes the goods to which it is attached from those made by the person who uses the mark. [Approving the dictum of Lindley J. in Word v Butler (1886) 3 RPC 81]
(iv) The onus of proving that there is a reasonable probability of deception is cast on the applicant for registration of a mark.
(v) The Registrar of Trade marks has a duty to protect a well-known mark in accordance with the Paris Convention for the Protection of Industrial Property, 1883.
Decision
(i) The appellant’s name is "Wella AG" and the word "Wella" is instantly distinctive. The word "Wella" provided the necessary visual and phonetic connection between the mark and its proprietor.
(ii) The word "Wella" resembled the word "Bella" enough for the use of the two marks to deceive or cause confusion, since there was only the initial letter difference.
(iii) Each opposed application should have been compared with the appellant's separately in accordance with section 21 of the Trade Marks Ordinance.
(iv) After the Registrar had acknowledged that "Wella" was "world famous," he had a duty to protect it.