A legal battle between two online colleges turned to the Supreme Court of Appeal (SCA) over the use of the word “iCOLLEGE”.
The appellant said the word was its registered trademark and the usage by the respondent of the word “iCollege”, to promote its services, was an infringement on its trademarks.
The battle first ensued in the Gauteng High Court, Pretoria, where iCollege Pty Ltd lost its bid to interdict the closed corporation Xpertease Skills Development and Mentoring from using the word “iCollege” in promoting its services.
iCollege (appellant) is a private further education and training college and offers education at its 17 campuses nationwide and online at its e-learning centre. It is registered with the Department of Higher Education and Training and provides skills-based training in international courses, and courses accredited by the national Sector Education Training Authority.
It is the proprietor of two trademark registrations where the dominant feature of both marks is the word ‘iCOLLEGE’.
Xpertease (respondent) also uses a trademark, the dominant element of which is the word “iCollege” which is accompanied in use with the words ‘ONLINE LEARNING’. The respondent uses this mark in the course of trading, which is also the provision of education and training services.
The respondent describes itself as an internet-based business (hence the letter ‘i’) providing specialised professional education. It does not offer classroom-based tuition or locally accredited qualifications.
It provides e-learning courses to consumers worldwide, and sells e-learning products and courses to prepare customers for international and vendor-specific information technology certification.
The applicant asked the court to interdict the respondent from infringing on its rights acquired through the registration of its trademarks.
The appellant claimed that the respondent’s use of its iCollege mark was identical to the appellant’s registered trademark. It argued that the result was that a substantial number of persons would be deceived or confused into believing that there was a material link in trade between the respondent’s education and training services and those offered under the appellant’s iCOLLEGE trademark.
The respondent, on the other hand, contended that the marks in question were inherently different, when one looked at the font and logos.
It also argued that that the appellant was not entitled to an interdict for trademark infringement because the word ‘COLLEGE’ had been disclaimed. It was argued that because of the disclaimer, what remained in the appellant’s mark was the logo and the letter ‘i’, which could not form the subject of protection.
But the SCA said a side-by-side comparison of the respondent’s iCollege mark with that of the appellant’s iCOLLEGE trade mark revealed that the marks of both parties contained an identical dominant feature in relation to sound and appearance – the word “iCOLLEGE”.
“Whether this word element is clearly pronounced or carelessly spoken, the marks sound no different from one another. In the marketplace, the notional user of education and training services will encounter the appearance of a pre-eminent identical word element in both marks, namely iCOLLEGE,” Judge Ashton Schippers said.
It was the dominant or central element of the marks in issue, namely the word iCOLLEGE, that was likely to make an impact on the mind of the consumer.
This feature alone rendered the marks phonetically and conceptually confusingly similar on at least two levels of comparison – sound and appearance – the court found.
Judge Schippers said the appellant had established that the use of the respondent’s mark was such that it would cause consumers to wrongly believe that there was a material link in trade between the respondent’s education services and the appellant.
In a concurring judgment, the Supreme Court interdicted the respondent from further using this wording.
The court further ordered that an enquiry into the damages suffered by the applicant as a result of the respondent’s unlawful conduct must be convened.