Befuddlement in the bakehouse – The Yuppie trade mark
26 Oct 2015
Is there such a thing as a yuppie egg whisk, a yuppie toaster or knife set? I would have thought not. While “yuppie” may describe a young middle class consumer base that gravitates towards garagiste wines, hand woven textiles and the made-over Mini Cooper, I would have thought that “yuppie” would not be a description applicable to goods themselves.
This question has just been grappled with by the High Court in Cape Town, which had to decide whether use of YUPPIE GADGETS and YUPPIE STUFF infringed and passed off in relation to the reputable trade mark YUPPIE CHEF. The Applicant, Yuppie Chef Holdings runs its online retail business via the domain yuppiechef.com, while the Respondent, Yuppie Stuff Online uses yuppiegadgets.co.za.
The court found against Yuppie Chef on all counts, with its overriding concern being the granting of a monopoly in the word “yuppie”.
On the trade mark side, Yuppie Chef relied on its YUPPIECHEF registrations for various kitchen and household goods. It claimed that the Respondent was using a confusingly similar mark for both the identical goods for which it had registrations, as well as similar goods (sections 34(1)(a) and (b) of the Trade Marks Act).
It was not seriously disputed that Yuppie Stuff was using its marks on both identical and similar goods to those covered by Yuppie Chef’s registrations, and the crux of the dispute was therefore whether the marks YUPPIE GADGETS (and YUPPIE STUFF) are confusingly similar to YUPPIECHEF.
The Respondent’s explanation for their chosen marks and domain was that their product range consists of nice-to-have luxury items that are quirky and trendy and would be purchased by a “yuppie” target market. They accordingly reworked their previous name URBAN GADGETS, which they felt did not do their image justice, to YUPPIE GADGETS. The underlying suggestion in this explanation, of course, alludes to the descriptiveness of “yuppie”.
What this case turned on was the “confusing similarity” between the trademarks. The law in this regard is well established, and concerns whether a substantial number of people interested in the relevant goods would be either confused or deceived when encountering the Respondent’s marks, as to whether there is a connection between such goods, and the owner of the Registered trade mark. Trade marks have been said to be a “source indicator”, and the test can be simplified into the question, “Will use of this mark cause confusion or deception regarding the source of these products?” Confusion need not persist, and even fleeting “initial interest” confusion has been found to suffice.
The court considered the nature of the Applicant’s and Respondent’s target market, which it found to be a young, affluent, educated group, as well as the circumstances in which sales would take place – both parties traded exclusively online. It was postulated by the Applicant that confusion may arise when typing the word “yuppie” into a search engine, and encountering both the YUPPIECHEF and YUPPIE GADGETS websites.
The court confirmed the existing position that the names of both websites must be considered as wholes, and compared with reference to sense, sound and appearance, and that confusion on any of these bases would lead to infringement.
There followed a comparison of the marks, which took a surprising turn. Although the YUPPIECHEF marks are registered as word marks, which give protection for that mark and confusingly similar marks in any stylized font or logo form, the court restricted its comparison to the actual form of the logo used by Yuppie Chef and the Respondent.
The application of this test appears to depart from the court’s stated objective that “it is the names of the websites that primary regard must be had in assessing the likelihood of confusion”. However, a close comparison of the marks as used, was carried out, with remarks on the colour used in the YUPPIECHEF mark (cerise pink) and the form of the lettering (the “Y” is encapsulated in an “octagonal prism”). This was juxtaposed to the Respondent’s mark which is written in black letters, and accompanied by a green geometric device with antennae.
The contents of the respective websites were also taken note of – the YUPPIECHEF website opens with the Applicant’s mark, and a range of kitchen items and cooking utensils, while the YUPPIE GADGETS website bears various tools and gadgets on its opening page.
It seems to me, with respect, that this application of the test muddies the waters rather. The Applicant relied on registered word marks, rather than logos, and the look of the Applicant’s logo should not factor into the assessment. In addition, the Applicant’s registrations are for goods themselves, rather than retail services (which are offered via the website). Moreover, there was no real dispute that the Respondent’s goods included both some items that were identical, and some that were similar to those for which the Applicant’s marks were registered. It is therefore unclear why the items being sold on the respective websites were examined.
As to the likelihood of confusion, based on the online assessment as described, a consumer having searched for “yuppie”and having mistakenly accessed the Respondent’s website would already have experienced confusion. Granted, the potential for deception may indeed be remedied by a review of the respective website contents, but at the very least, initial and fleeting confusion (sufficient for infringement) would have occurred.
But I digress. The court then turned to consider the marks in isolation. It was found that YUPPIE is the dominant feature of both. However, the court found that the word “yuppie” is an ordinary English word, and does not “tell the public who the goods and services are from, but who they are directed at”. It was thereafter found that combined with the word “chef” or “gadgets”, these marks are sufficiently distinguished. The underlying theme here seems to be that the Respondent convinced the court that the word “yuppie” was descriptive and could not distinguish the parties’ offerings. Indeed, the court found that should the marks be held to be confusingly similar, a “virtual monopoly” would have been awarded to the Applicant in the word “yuppie”.
Is this really the case though? The function of a trade mark has oft been held to indicate the source of the goods. The message of goods bearing the mark YUPPIECHEF is that they come from Yuppie Chef Holdings, and one can expect the quality, accessibility via their website, speed of delivery and after sales service that are associated with a YUPPIECHEF purchase.
Sure, their chosen trade mark is a rather tongue in cheek, self-deprecating play on their target market, but that doesn’t make for descriptiveness. They aren’t after all selling figurines of middle class chefs, or offering catering services to the cash-flush. They trade in household and kitchen goods.
The court’s final finding was a dismissal of all grounds of trade mark infringement, as well as passing off. This case raises interesting (and concerning) questions for brand owners. While it has been thought in the past that cleverly suggestive terms that do not describe the goods themselves, may be registered and defended, the scope for protection of such marks appears to be getting narrower.
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