Heublin Inc and Another v Golden Fried Chicken (Pty) Ltd

• Judge: Nestadt J, Le Roux J and IWB De Villiers AJ
• Judgment Date: 22 September 1983
• Citation: 1984 (3) SA 911 (T)
• Hearing Date: 04 May 1983
• Court: Transvaal Provincial Division

Nestadt J:

"Chicken Licken", together with others like "Hen-Len" and "Duck-Luck", is the name of a character in a children's nursery story book. it is also the style under which respondent trades. the nature of its business is similar to that of the second appellant, viz the sale, from outlets, of inter alia fried chicken.

In the Court below the appellants applied for an order restraining the respondent from using the name "Chicken Licken" in its trade. They alleged that this constituted an infringement of first appellant's registered trade marks, "It's F Finger Lickin' Good". Alternatively, they complained that it amounted to a wrongful passing off. The respondent denied this. It furthermore counter-applied for the expungement of first appellant's trade marks, alternatively the entering of certain disclaimers or admissions against the marks and, in the further alternative, for the alteration of one of the marks to a part B G registration. Both the application and the counter-applications were dismissed by McCREATH J, whose judgment is reported in abridged form in 1982 (4) SA 84 (T). The parties have respectively appealed to this Court.

Details of the material facts and the issues which arose for determination are fully set out by the learned Judge a quo and H it is unnecesary to repeat them herein.

The first issue with which I deal (being the subject-matter of the cross-appeal) is whether the counter-application for expungement should have succeeded. If so, the application for an interdict based on trade mark infringement must obviously fail. No argument was addressed to us on behalf of the I respondent in support of the alternative relief counter-applied for. Respondent's case for expungement was based on a twofold contention:

(i)

that appellants' marks were not:

(a)

as regards the one registered in part A (in respect of services), distinctive as required by s 10 (1) of the Trade Marks Act 62 of 1963;

Nestadt J

(b)

as regards the two registered in part B (in A respect of goods), capable of becoming registrable, through use, in part A, as required by s 11 (1).

(ii)

They were reasonably required for use in the trade and, in terms of s 10 (1A), should therefore not have been registered.

I deal firstly with the former. The issue is whether (in the case of the part A mark) it is distinctive, and (in the case of B the part B marks) whether they are, by reason of their inherent character, sufficiently potentially distinctive to enable them ultimately, through user, to become actually distinctive at some time in the future.

The quality of distinctiveness is all important. It is the corner-stone of the whole Act; the very essence and cardinal requirement of a trade mark (Chowles and Webster South African C Law of Trade Marks 2nd ed at 27). Distinctiveness has, by virtue of s 12, a particular meaning. It does not per se suffice that the mark has the effect of distinguishing the goods or services of the holder of the right from those of others. It must be "adapted to distinguish". Chowles and Webster at 27 state the difference between the two concepts as D follows:

"A mark which fulfils the function of distinguishing the goods or services of one person from those of others is distinctive in fact; but it does not necessarily follow that it is adapted to distinguish and thus distinctive within the meaning of the Act. For example, a mark which is reasonably required for use in the trade, such as a common laudatory epithet, could, by dint of an extensive publicity campaign waged through all the modern media which are available to a trader today, acquire E significance in the minds of the public as indicating the goods or services of one person only and distinguishing them from the goods or services of others. Such a mark would be 100 per cent distinctive in fact; but its factual distinctiveness would not render it adapted to distinguish, and, therefore, registrable."

To qualify as such, the mark may, in terms of s 12 (2), either be inherently adapted to distinguish, or, where that degree of F inherent distinctiveness is insufficient to render the mark per se adapted to distinguish, by it being suitably supplemented by use or other circumstances. In other words, the necessary distinctiveness may be either innate or acquired (In re Joseph Crossfield & Sons Ltd [1910] 1 Ch 118 at 147). Where, G however, a mark is inherently totally non-adapted to distinguish, no amount of use or assistance from extraneous circumstances can render it registrable (Chowles and Webster at 28).

The question arises as to what the meaning of the phrase "adapted to distinguish" is. The Afrikaans equivalent is "geskik om te onderskei". The Act does not define it. Nor have the Courts been prepared to do so, save to the following H limited extent. In F Reddaway and Co's Application 1925 Ch 693 at 700, TOMLIN J said that a mark may be adapted to distinguish

"because... it has characteristics calculated to make it noticeable and suitable for calling attention to the goods on which it is to be placed and for identifying the origin of the goods".

I This dictum was referred to by TINDALL J in Joshua Gibson Ltd v Bacon 1927 TPD 207. At 212 the learned Judge gave his own view on the meaning of "adapted to distinguish". He said it may be paraphrased thus: "suitable or fitted for the purpose of distinguishing". In Yorkshire Copper Works Ltd's Application [1954] 71 RPC 150 at 154 Lord SIMONS said:

Nestadt J

A "I do not propose to try and define this expression. But I would say that, paradoxically perhaps, the more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them; for a word that is apt to describe the goods of A, is likely to be apt to describe the similar goods of B."

In York Trailer Holdings Ltd v Registrar of Trade Marks [1982] 1 All ER 257 (HL), in which the rule that geographical names cannot usually be the subject of a registered trade mark was B applied, "inherently capable of distinguishing" was held to mean in effect

"'capable in law of distinguishing', the relevant law being the accepted principle that, in relation to certain words, of which laudatory epithets and some geographical names were established examples, traders could not obtain a monopoly in the use of such words (however distinctive) to the detriment of members of the public who, in the future, and in connection with other C goods, might desire to use them".

(See too Distillers Corporation (SA) Ltd v Stellenbosch Farmers' Winery Ltd 1979 (1) SA 532 (T) at 536 - 7; Chowles and Webster at 28.) Consistent with this approach it has been stated in the context of the British Trade Marks Act that

"(1)ong phrases or sentences describing the goods would be D considered to be advertisements, not falling within the definition of a trade mark in s 68"

(Kerly Law of Trade Marks and Trade Names 10th ed para 2 - 10 at 20, quoted by Chowles and Webster at 44). Similarly, a mere laudatory epithet is not, as has been indicated, as a general rule, registrable as a trade mark, and this regardless of the E extent of use (Distillers Corporation (supra at 537) and cases there cited).

In the light of the aforegoing, Mr Harms, on behalf of the respondent, submitted that "It's Finger Lickin' Good" was inherently not adapted to distinguish and therefore could not be a trade mark; although the phrase may be highly distinctive, it is an advertisement describing the quality of the goods; it F could be used by any other trader; its ingenuity or novelty does not mean that it is adapted to distinguish or otherwise complies with the requirements for registrability.

In essence, the same argument was advanced before the Court a quo. It was rejected for the reasons stated at 24 - 27 of the typed judgment. In brief they were that, though an adjectival G slogan describing the quality of appellant's products and having laudatory attributes, "It's Finger Lickin' Good" was, nevertheless, seen in its entirety, and especially having regard to the abbreviated and apostrophised form of the word "licking", a novel, invented slogan constituting an original descriptive epithet not in ordinary linguistic use; it therefore had an inherent adaptability to distinguish...