Golden Fried Chicken (Pty) Ltd v Oh My Soul (Pty) Ltd

• Jurisdiction: South Africa
• Judge: D Pillay J
• Judgment Date: 25 March 2019
• Citation: 2019 JDR 1384 (KZD)
• Hearing Date: 11 March 2019
• Court: KwaZulu-Natal Division, Durban
• Docket Number: D1739/2019

Pillay J:

[1]

The applicant, Golden Fried Chicken (Pty) Ltd sought an urgent interdict against the respondent, Oh My Soul (Pty) Ltd t/a Oh My Soul Cafe, to restrain the latter from infringing its registered trade mark in terms of section 34(1)(a) and (c) of the Trade Marks Act 194 of 1993 ('the Act'). The application was brought urgently. Kruger J certified it as urgent and directed the parties to argue the merits of the matter on the adjourned date. After I became aware of the directive, it was not open to me to revisit the question of urgency. Consequently, I approach the matter on its merits. Facts material to the dispute were uncontested. Neither were the general principles of law. What was in issue was the application of the law to the facts. More specifically, was the respondent's use of its marks likely to deceive or cause confusion?

[2]

It was common cause that:

(a)

the applicant owns the trade marks 'Bless My Soul', 'Soul', 'Soul Kitchen', 'Soul Food', 'Soul Slaw', 'Licken', 'Soul Food', 'Original Chicken' and 'Soul Food' Various classes of registration in the Act. The applicant wants the respondent to remove the trade marks 'Oh My Soul', 'Oh My Soul Cafe', 'Licken', 'Soul Food', 'Soul Food Sunday', 'Soul Salad' and 'Soul Salads from all of its websites and materials.

(b)

the respondent used 'Oh my Soul (sf) without the authority of the applicant, but with a cow device mark.

(c)

the respondent changed 'Licken' to 'Vicken' and 'soul salad' to 'sacred salad' after receiving the applicant's demand.

[3]

Section 34(1)(a) of the Trade Marks Act 194 of 1993 provides:

'The rights acquired by registration of a trade mark shall be infringed by-

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the unauthorized use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion; . . .' [1]

[4]

Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd [2] set the test for establishing the likelihood of confusion or deception as follows:

'In an infringement action the onus is on the plaintiff to show the probability or likelihood of deception or confusion. It is not incumbent upon the plaintiff to show that every person interested or concerned (usually as customer) in the class of goods for which his trade mark has been registered would probably be deceived or confused. It is sufficient if the probabilities establish that a substantial number of such persons will be deceived or confused. The concept of deception or confusion is not limited to inducing in the minds of interested persons the erroneous belief or impression that the goods in relation to which the defendant's mark is used are the goods of the proprietor of the registered mark, ie the plaintiff, or that there is a material connection between the defendant's goods and the proprietor of the registered mark; it is enough for the plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of such a connection. The determination of these questions involves essentially a comparison between the mark used by the defendant and the registered mark and, having regard to the similarities and differences in the two marks, an assessment of the impact which the defendant's mark would make upon the average type of customer who would be likely to purchase the kind of goods to which the marks are applied. This notional customer must be conceived of as a person of average intelligence, having proper eyesight and buying with ordinary caution. The comparison must be made with reference to the sense, sound and appearance of the marks. The marks must be viewed as they would be encountered in the market place and against the background of relevant surrounding circumstances. The marks must not only be considered side by side, but also separately. It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant's mark, with an imperfect recollection of the registered mark and due allowance must be made for this. If each of the marks contains a main or dominant feature or idea the likely impact made by this on the mind of the customer must be taken into account. As it has been put, marks are remembered rather by general impressions or by some

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significant or striking feature than by a photographic recollection of the whole. And finally, consideration must be given to the manner in which the marks are likely to be employed, as for example, the use of name marks in conjunction with a generic description of the goods.' (my underlining)

[5]

Deception or confusion would exist if the person is deceived into believing that there is a material connection between the goods or services bearing the respondent's mark and the applicant's trade mark or when a person is confused about whether any such connection exists. [3] The test is objective. [4] The nature of the market for the goods is an important consideration to enable the court to 'notionally transport itself into the shoes of the potential customer.' [5] Determining objectively how the marks would be perceived by the consumer is a major consideration for the court. [6] Importantly, the offending mark must be considered in context, not in isolation. [7] The manner...