ORANGE vs. ORANGEWORKS Judgment
In September 2010, Account Works Software (Pty) Limited t/a ORANGEWORKS, a young South African company selling accounting software, received a favourable judgment from the South African Registrar of Trade Marks, in a “David and Goliath” battle, against Orange Personal Communication Services Limited, a multinational telecommunications company based in the United Kingdom, and proprietor of various ORANGE trade mark registrations.
The subject of the opposition was following trade mark applications which Account Works Software filed on 17 March 2006 on the South African Trade Marks Register, namely:
(a) trade mark application no: 2006/05687 ORANGEWORKS in class 9 which covers “computer software and software programmes relating to accounting” ; and
(b) trade mark application no: 2006/05688 ORANGEWORKS Logo in class 9 which covers “ computer software and software programmes relating to accounting”.
The dispute started in February 2007 when Orange Personal Communication Services sent a letter addressed to ORANGEWORKS demanding that it to cease using the ORANGE element in its business name, as it conflicts with its trade mark entries for various ORANGE marks on the Trade Marks Register in inter alia classes 9 and 38.
As the conflict could not be resolved on correspondence, Orange Personal Communication Services first proceeded to lodge a formal company name objection against Account Works Software, which was recorded, and incorporated in 2006 on the South African Companies Register as “Orangeworks Software”. Account Works Software defended the matter and a full answer was lodged in reply to the company name objection. The Registrar of Companies ruled on 18 October 2007 that the Orangeworks Software company name was undesirable in terms of Section 45(2) of the Companies Act 61 of 1973 and its name was changed to Account Works Software on the Companies Register. Account Works Software proceeded to trade under its ORANGEWORKS trade mark.
The ORANGEWORKS trade marks were examined by the Registrar of Trade Marks in May 2007 and the Registrar requested that the applications be endorsed with disclaimers for the “ORANGE” element. The ORANGEWORKS trade marks then proceeded to advertisement in the Patent Journal for opposition purposes on 28 May 2008 and 28 October 2009.
Orange Personal Communication Services requested extensions of the trade mark opposition terms and proceeded to launch formal trade mark opposition proceedings against the ORANGEWORKS trade marks on 26 November 2008 on the basis that the proposed registration of the ORANGEWORKS marks will offend against Section 10(15) of the Trade Marks Act 194 of 1993. In principle, Section 10(15) bars the registration of a trade mark which so nearly resembles another mark that it is likely to deceive or cause confusion when used in a normal and fair manner in respect of the relevant goods the respective trade mark applications cover. Despite that Orange Personal Communication Services is the proprietor of a substantial trade mark portfolio including various registered entries for its ORANGE mark in relevant classes, it based its opposition only on trade mark application no: 2005/16116 ORANGE in class 9 which inter alia covers “…computer programs, computer software..”.
Regarding the comparison of the marks, ORANGEWORKS vs ORANGE, it was argued by Orange Personal Communication Services that the trade marks are confusingly similar as ORANGE is wholly incorporated in ORANGEWORKS and that ORANGE is the first, dominant and most memorable feature of the ORANGEWORKS mark.
Account Works Software argued that the inclusion of one mark in another mark does not per se or automatically lead to confusion, as marks must be considered as wholes. A lot of trade evidence was represented on examples of other South African businesses in the information technology sector using or registering the element “ORANGE” in their domain names, company or close corporation names or trading styles. This evidence supported the argument that members of the public is not likely to be confused by ORANGEWORKS, as they are likely to be aware of other “ORANGE” businesses in the same sector.
However, it appears that it was the test applied for the comparison of the respective goods covered by the respective marks which made the Registrar rule in favour of Account Works Software. In this regard, evidence presented by Account Works Software inter alia proved that the specific sector of the public who is likely to encounter the ORANGEWORKS trade mark related mostly to business owners or managers and accountants who generally conduct proper research before purchasing the type of goods covered by the ORANGEWORKS trade marks, namely accounting software.
The Registrar further disagreed with the argument that since both specifications refer to “computer software” that the goods are accordingly identical. No evidence was presented to show that use of the ORANGE trade mark in relation to “computer software” and “computer programs” encompasses use in relation to “software relating to accounting”. According to the Registrar, Orange Personal Communication Services succeeded to prove use of its ORANGE trade mark in relation to telecommunication goods, and not in relation to accounting software. Evidence submitted revealed that around 88.6 million customers are using ORANGE telecommunication goods and services in 23 countries around the world.
The Registrar therefore concluded that the ORANGE and ORANGEWORKS trade marks may co-exist on the Trade Marks Register in class 9, as, in view of the different goods covered, confusion or deception is not likely to occur. Even side by side use of the respective marks in the normal and fair manner in the ordinary course of business in relation to accounting software on the on hand, and telecommunication goods and services of the other hand, is unlikely to create a reasonable likelihood of deception or confusion in trade.
Orange Personal Communication Services filed a notice of appeal and the appeal is set down for hearing in the High Court in Pretoria, Gauteng on 29 August 2012.
Gunter Attorneys is a dynamic and innovative boutique IP law firm specialising in various aspects of intellectual property law and commercial matters relating to intellectual property. The firm was established in 2011 by Rina Gunter, a patent attorney and an attorney of the High Court of South Africa. She specializes in the drafting, filing and prosecuting of local and international patent, design and trade-mark applications internationally on behalf of both South African and foreign based applicants. As a consequence of her technical background she has done a significant amount of IP legal work in the organic- and inorganic chemistry, material science, mining, mineral processing, water purification, food processing and agricultural chemistry technologies, to name but a few technical practice areas. In 2010 Rina was elected as one of three finalists in CEO Magazine’s Most Influential Women in Business and Government Awards, Legal Sector. The firm can be contacted at +27 12 997 3098 or by email at firstname.lastname@example.org.