Johannesburg-based accounting software firm Orangeworks Accounting Software has won a four-year trademark battle against European cellular networking giant Orange Personal Communications Services.
The dispute related to the use of the “Orange” element in the local company's name. According to Orangeworks, the opposition by Orange was based on the argument that Orangeworks trademarks are confusingly similar to its Orange trademark registrations.
The cellular giant also claimed that the use of the Orangeworks trademarks in relation to its accounting software products is likely to deceive or cause confusion.
Orangeworks explains that one level of this legal test related to whether the parties' respective goods and services offered are the same or similar in the mind of the consumer.
What Orange attempted to demonstrate was the extensive use of its trademark in telecommunication goods, the company continues.
However, the Registrar of Trademarks held that the specific goods covered by the Orangeworks trademark, namely software programs relating to accounting, are sufficiently dissimilar to the telecommunications goods and services covered by Orange's trademark registrations.
Due to the nature of the Orangeworks goods, its specific target market and the manner in which these goods are marketed and selected by members of the public, the potential for confusion or deception was found to be unlikely and judgment was awarded in Orangeworks' favour, states the company.
Emmie de Kock, of De Kock Attorneys, represented Orangeworks and agrees that the Registrar of Trademarks is correct in concluding that the Orangeworks and Orange trademarks are not confusingly similar when compared as a whole.
“This was a real David and Goliath battle, and we are very pleased that the correct judgment was made. Registrations of trademarks should not be refused merely on the basis that it incorporates an element like Orange, which is a word commonly used by traders in the IT, software and telecoms sectors,” argues De Kock.
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