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

• Jurisdiction: South Africa

Heublin Inc and Another v Golden Fried Chicken (Pty) Ltd
1984 (3) SA 911 (T)

1984 (3) SA p911

Citation	1984 (3) SA 911 (T)
Court	Transvaal Provincial Division
Judge	Nestadt J, Le Roux J and IWB De Villiers AJ
Heard	May 4, 1983
Judgment	September 22, 1983

Flynote : Sleutelwoorde B

Trade and trade mark — Trade mark — Expungement — "Distinctiveness" as criterion for registration or remaining on register — As having a particular meaning, namely "adapted to distinguish", by virtue of s 12 of Act 62 of 1963 — Mark C "It's Finger Lickin' Good" inherently "adapted to distinguish" by virtue of its novelty — This, coupled with extensive use in relation to holder's goods, rendering it distinctive — Laudatory and descriptive qualities of words not a bar in the circumstances — "Finger-licking" an old phrase, but can be adapted to distinguish, the combination in D which the words are used being decisive — Such combination of words, as opposed to the constituent words, also decisive in determining whether mark is reasonably required for use in the trade — Dismissal of application for expungement confirmed.

Headnote : Kopnota

The quality of distinctiveness is the corner-stone of the Trade E Marks Act 62 of 1963. 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". To qualify as such, the mark may, in terms of s 12 (2), either be inherently adapted to distinguish, or, where that degree of inherent distinctiveness is insufficient to render the mark per se adapted to distinguish, by it being F suitably supplemented by use or other circumstances. In other words, the necessary distinctiveness may be either innate or acquired. Where, however, a mark is inherently totally nonadapted to distinguish no amount of use or assistance from extraneous circumstances can render it registrable.

In the instant case, it had, in a counter-application, been submitted before the Court a quo that the mark "It's Finger G Lickin' Good" (as applied to chicken products) was inherently not adapted to distinguish and should be expunged from the register on that ground, or, alternatively, on the ground that it was reasonably required for use in the trade. It was contended that, while perhaps highly distinctive, it was an advertisement describing the quality of the goods, that it could be used by any other trader, and that its ingenuity or novelty did not mean that it was adapted to distinguish or H otherwise complied with the requirements for registration. In a cross-appeal to the Full Bench against the rejection of the counter-application for expungement,

Held, that while descriptive and laudatory, the mark, especially having regard to the abbreviated and apostrophised form of the word "licking", was a novel, invented slogan constituting an original invented slogan not in ordinary linguistic use and having an inherent adaptability to distinguish which, coupled with its approved extensive use in I relation to the holder's products, had become distinctive thereof.

Held, further, that while "finger-licking" was an old phrase, it did not follow that it could not be adapted to distinguish: it is the combination of such words that must be looked at in determining whether the mark is distinctive.

Held, accordingly, that the application for expungement on the first ground had to be dismissed.

1984 (3) SA p912

A Held, further, as regards the second ground advanced, that inasmuch as the applicant had not established that the mark as a whole, as opposed to its constituent elements, was reasonably required for use in the trade either presently or in the future, the application on such ground also had to be dismissed: whilst the mark consisted of words which might reasonably be required for use in the trade, the combination used was highly distinctive.

The decision in Heublin Inc and Another v Golden Fried Chicken B (Pty) Ltd 1982 (4) SA 84 (T) confirmed.

Case Information

Appeal and cross-appeal to the Full Bench of the Transvaal Provincial Division from a decision of McCREATH J. The facts appear from the judgment of NESTADT J.

B Galgut SC (with him C E Puckrin) for the appellants C (respondents in the cross-appeal).

L T C Harms SC (with him P Ginsburg) for the respondent (appellant in the cross-appeal).

Cur adv vult.

Postea (September 22). D

Judgment

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;

1984 (3) SA p913

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...