Due South

An interesting SA trade mark judgment was handed down on 18 January 2013.  It involved Foschini, which owns a retail chain called Due South, as well as trade mark registrations for the name Due South in 14 different classes of goods and services. When a man called Coetzee applied to register the name Due South with a logo in four other classes, Foschini filed an opposition.

The marks were clearly the same, but were the goods and services covered by Foschini's registrations and Coetzee's applications similar enough for there to be a likelihood of confusion?  There's some debate as to what test should be applied.  Some say that it's a holistic one which involves comparing the similarities in the marks and the similarities in the goods in tandem, with the result that if the goods are only slightly similar but the marks are very similar there is still a likelihood of confusion. Others say that you must simply decide if the goods are similar - if they're not that's the