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

• Judge: McCreath J
• Judgment Date: 16 June 1982
• Citation: 1982 (4) SA 84 (T)
• Hearing Date: 09 March 1982
• Court: Transvaal Provincial Division

McCreath J:

The first applicant is the registered proprietor in the F Republic of South Africa of trade marks numbers 76/5830, B66/2182 and B66/2183 respectively. In each case the trade mark comprises the phrase 'It's Finger Lickin' Good'.

The mark registered under nember 76/5830 is in part A of the trade marks register and is in respect of services, including inter alia cafes and G similar establishments for the supply of meals and foodstuffs for consumption on the premises and/or to be taken away. The marks registered under numbers B66/2182 and B66/2183 are in both instances under part B of the register and are in respect of various goods, including poultry and products made therefrom, salads, gravy and spices.

The second applicant is a wholly owned subsidiary of the first applicant H and is the registered user of the aforesaid trade marks and also of a further trade mark of which the first applicant is the registered owner, namely 'Kentucky Fried Chicken'. The applicants allege that the first applicant has since 1970, through the activities of the second applicant and other parties franchised to use the first applicant's said trade marks, built up very substantial sales of fried chicken dishes, prepared according to a special technique and recipe, from various outlets operating throughout the Republic of South Africa. These outlets consist of roadhouses and similar establishments from which the said dishes, as

McCreath J

well as other products such as potato chips and mash, salads and 'beef-burgers' are sold. The respondent is unable to challenge the correctness of these allegations, although not all of the said A allegations are admitted.

One Sombonos is the sole director and shareholder of the respondent and also of a company Burger King (Pty) Ltd. The latter company trades under the style of 'Chicken Licken' from outlets of a similar nature to that B of the second applicant. Its business is also principally fried chicken dishes, and in addition it trades in other products akin to those of the second applicant. The said company is prepared to abide by any relief which the applicants may obtain against the respondent.

Moreover, the respondent itself has applied for the registration in part C A of the register of the trade mark 'Chicken Licken' in respect of roadhouses and similar outlets, and of the mark 'Chicken Licken' in part B of the register in respect of inter alia poultry dishes, sauces and salads. These applications are pending. The respondent also intends to apply for the registration of the company Burger King (Pty) Ltd as a D registered user of the said marks. For the sake of convenience I shall therefore refer to the activities of the latter company as those of the respondent.

In the present application the applicants claim:

(1)

An interdict restraining the respondent from infringing the rights of the first applicant in its registered trade marks 'Its E Finger Lickin' Good' by using in relation to any of the services or goods for which the first applicant's trade marks are registered, the trade mark 'Chicken Licken'; alternatively,

(2)

an interdict restraining the respondent from passing-off its goods and/or services for those of the first applicant or as being goods and services connected in the course of trade with F the first applicant by using in relation to such goods or services the trade mark 'Chicken Licken' or any other mark so nearly resembling the trade marks 'It's Finger Lickin' Good' as to be likely to deceive or cause confusion;

(3)

an interdict restraining the respondent from unlawfully G competing with the second applicant by infringing the rights of the first applicant in its registered trade marks or by passing-off its goods and services as and for those of the first applicant;

(4)

for certain ancillary relief concomitant with the aforementioned orders.

H In the alternative the applicants seek a temporary interdict in terms of (1), (2) and (3) above pending the determination of an action by the applicants for...