A recent High Court decision, involving Soft Coffee and Nonnas Pasta, is a reminder that the scope of trade mark protection depends not only on the mark registered, but also on the goods and services in respect of which it is registered. It also raises questions about how the identical-goods and similar-goods infringement provisions in sections 34(1)(a) and 34(1)(b) of the Trade Marks Act apply where a proprietor holds registrations in more than one class.

The distinction between these two provisions is central to understanding the decision in Soft Coffee (Pty) Ltd v Nonnas Pasta (Pty) Ltd and Others ((088838/2025) [2026] ZAGPPHC 771)). Section 34(1)(a) is confined to unauthorised use in the course of trade of an identical or confusingly similar mark in relation to the goods or services in respect of which the mark is registered. Where the defendant’s goods or services fall outside the specification, the proprietor must rely on section 34(1)(b), which requires the goods or services to be so similar to those covered by the registration that there is a likelihood of deception or confusion.

在里面 Soft Coffee case, the court declared, expressly in terms of section 34(1)(a), that Nonnas Pasta had infringed all four of Soft Coffee’s registrations, three of which are in class 43. It interdicted Nonnas Pasta from infringing those registrations “by using ‘Nonnas’ as a mark … in the course of a trade or otherwise” and directed an enquiry into damages or a reasonable royalty. The judgment raises the question whether a finding of identical-goods infringement under section 34(1)(a) can be carried across to registrations covering a different specification (for services), in this case restaurant services.

By way of background, Soft Coffee trades as “Nonnas Italian Kitchen”, a restaurant business with a national footprint, and owns four registrations: for NONNA’S ITALIAN KITCHEN in class 30, covering pasta, and in class 43, covering restaurant services; and for WE ALL HAVE A NONNA IN OUR LIVES and NONNAS in class 43. It is notable that only one of the four registrations covers pasta.

Nonnas Pasta sells dry, packaged pasta under the mark “NONNAS PASTA” to retailers, who sell it on to consumers. It denied any involvement in restaurant services and argued that the parties serve different markets: freshly cooked pasta sold in restaurants to middle- and higher-income customers, as opposed to low-priced packaged pasta with an 18-month shelf life. While the litigation was pending, Nonnas Pasta applied to register NONNA’S PASTA in classes 30 and 35, covering goods (pasta) and distribution and retail services respectively, rather than restaurant services.

Notional use, correctly applied

The court tested infringement against the notional, rather than the actual, use of the registered marks, taking account of “the full range of permissible fair use” of the registered mark “in relation to any of the goods in respect of which it is registered” (which is a principle set out in Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others [2016] ZASCA 77). In the Soft Coffee matter, the court does not deal with Nonnas Pasta’s evidence about price points, packaging and shelf-life point by point, but its approach makes that evidence beside the point: the enquiry is confined to the marks, without regard to get-up.  The court identified “NONNAS” as the dominant element of the registered marks. It found “NONNAS PASTA” phonetically, conceptually and visually the same as the registered marks and likely to cause deception or confusion, with Nonnas Pasta having admitted the phonetic similarity.

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Where the reasoning thins out

In deciding on Soft Coffee’s claim under section 34(1)(a), the court referred to the test set out in Bata Ltd v Face Fashions CC and Another ([2000] ZASCA 192): whether the notional customer of average intelligence, viewing the marks as a whole or looking at the dominant features of each mark, is likely to be confused or deceived into believing that [pasta] bearing the words [‘NONNAS PASTA’] have a connection in the course of trade with the [applicant’s registered] trade mark.

Applied to the class 30 registration, the test fits the facts: Nonnas Pasta used “NONNAS PASTA” on pasta, and Soft Coffee’s registration covers pasta.  However, the position is different for the three class 43 registrations, which cover restaurant services. Nonnas Pasta does not run a restaurant, and nothing in the papers suggests that it does. The notional-use principle does not close that gap either, since it measures fair use of a mark in relation to the goods or services for which it is registered, which for those three registrations means restaurant services.

The judgment describes Nonnas Pasta as admitting use of the mark “in relation to class 30 and class 43” but does not explain how the conduct of a packaged-pasta business falls within the scope of a restaurant-services registration. In fact, Nonnas Pasta’s case was that it “is not involved in restaurant services” at all and accordingly could not infringe the class 43 registrations. A decision on that claim would require an enquiry into whether Nonnas Pasta’s activities are so similar to restaurant services that their use of the mark gives rise to a likelihood of deception or confusion.  Instead, the court failed to conduct that enquiry, stating simply that the section 34(1)(b) claim “was made in the alternative” and that it therefore did “not address this claim”.

No section 36 defence, and no shortcut around one

Nonnas Pasta devoted much of its argument to section 36(1), which protects continuous and bona fide use of a mark from a date before the proprietor’s own use or registration, whichever is earlier, and contended that it was a complete answer to the claim. Counsel submitted that Nonnas Pasta’s director, Mr Savides, had sold pasta as a sole proprietor before Soft Coffee obtained its registrations, and later incorporated Nonnas Pasta (in 2021) to carry on that business. Soft Coffee disputed that Nonnas Pasta had been trading since 2018. In its papers, Nonnas Pasta had raised its trading history only to resist the harm requirement for an interdict, and did not plead a section 36 defence. A prior-use defence can be decisive, but simply pointing to facts that suggest earlier use is not enough.

The court held that this defence must be properly pleaded, and its requirements of continuous, bona fide prior use proved, rather than established at the hearing from material contained in the respondent’s papers. The court declined to do so here, describing the defence, in its own words, as “readily available to be pleaded, but was not pleaded”. The judgment underscores the importance of properly pleading and proving a prior-use defence.

An order that outgrew its reasoning

The consequence of resolving the class 43 registrations under section 34(1)(a) rather than section 34(1)(b) shows up in the order. The court addresses only whether Soft Coffee met the general requirements for an interdict, without explaining why the relief should extend as far as it does. The order restrains Nonnas Pasta from using “Nonnas” as a mark “in the course of a trade or otherwise” and directs the removal of the mark from products and the destruction of infringing material, with no apparent limitation to pasta products or to the class 30 registration that the reasoning supports. Relief under section 34(3) follows from an established infringement and, since the class 43 finding was never tested under section 34(1)(b), the order appears broader than the reasoning set out in the judgment.

In summary

The finding in relation to the pasta itself is clear. Nonnas Pasta used “NONNAS PASTA” on packaged pasta, and Soft Coffee’s class 30 registration covers exactly that: a straightforward infringement, correctly found. The judgment does not, however, explain why a producer of packaged pasta should be restrained from using its own trading name in the course of trade generally, a form of use the court never analysed under the only provision built to test it, namely section 34(1)(b).

The outcome casts some uncertainty regarding whether the specification remains the boundary of section 34(1)(a) protection. Soft Coffee’s single class 30 registration was enough to win on the pasta, but whether the same result should follow in respect of the class 43 registrations required the separate enquiry contemplated by section 34(1)(b), an enquiry the court did not undertake.