In South Africa, the Supreme Court of Appeal (SCA) recently handed down an important trade mark judgment, Dinnermates (Tvl) CC v Piquante Brands International & another (401/17) 2018 ZASCA (28 March 2018). This was a trade mark opposition and the issue was whether the trade mark Peppamates is confusingly similar to the trade mark Peppadew for the same goods in classes 29, 30, and 31 (each trade mark also has a pepper stalk device). Two courts upheld the opposition, with one of them finding that the fact the devices were similar was very relevant. But the SCA disagreed with the lower courts.
The SCA’s reasoning can be summed up as follows: Peppa is derived from ‘pepper’ and it conjures up images of pepper; the devices (which are not similar) simply highlight the descriptive nature of ‘peppa’; the distinctive features of the marks are the suffixes ‘dew’ and ‘mates’ and these are distinguishable. The judge who handed down the judgment, Judge Mathopo, said this: ‘If a monopoly is granted in respect of Peppa it is hard to see how it would not extend to the use of pepper as a prefix, as in pepperoni…. one cannot monopolise the commons of the English language in that way.’
The judge referred to a number of previous SCA judgments that deal with likelihood of confusion. Judgments that are authority for an array of principles:
- Likelihood of deception is a question of fact, there is little assistance to be derived from prior decisions. Orange Brand Services Limited v Account Works Software (Pty) Ltd 2013 ZASCA 158.
- The decision of whether or not there is a reasonable likelihood of confusion as to origin is a value judgment. Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA).
- The value judgment is largely a matter of first impression. There ‘should not be undue peering at the two marks to find similarities or differences.’ Yuppiechef Holdings (Pty) Ltd v Yuppie Gadget Holdings (Pty) Ltd 2016 ZASCA 118.
- Likelihood of confusion must be appreciated globally; you need to take account of all relevant factors; you must judge it through the eyes of the average consumer who is reasonably informed, circumspect and observant but has imperfect recollection; the average consumer perceives a mark as a whole without considering individual elements; visual, aural and conceptual similarities must be assessed with reference to overall impressions. Century City Apartment Property Services CC & Another v Century City Property Owners’ Association 2010 (3) SA (1) in which the court approved the UK judgment of Compass Publishing BV v Compass Logistics Ltd (2004) EWHC 520 (Ch).
- It is necessary to consider the dominant and striking features of the marks. Plascon Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1983 (3) SA 623 (A), Lucky Star Ltd v Lucky Brands (Pty) Ltd 2017 (2) 588 (SCA).
The lesson from this judgment is probably this: you cannot avoid the consequences of adopting a descriptive word through the use of a misspelling or phonetic equivalent. It would be unfortunate if the judgment were to be remembered rather for this somewhat random line: ‘I can see no reason why the respondent’s trade mark cannot co-exist with the appellant’s trade mark. Coca Cola and Pepsi Cola have existed side by side for a considerable period of time without any difficulty.’ (with reference to a 1942 Canadian case).