Statutory trade mark infringement and questions about confusion

• Author: Salmon, O.
• Published date: 12 February 2020
• Citation: (2019) IPLJ 163
• Date: 12 February 2020
• Pages: 163-181

STATUTORY TRADE MARK

INFRINGEMENT AND QUESTIONS

ABOUT CONFUSION



One of the Senior Cou nsel for the Republic of South Africa

ABSTRACT

This article considers the principles advanced by South African courts in trade mark

infringement litigation pertaining to confusingly or deceptively similar word marks.

Such consideration entails the discussion of case law from other jurisdictions, where it

has informe d South African case law. It also draw s on recent UK and ECJ case law that



several of the principles applied by South African courts are outdated, inappropriate

and ill-suite d to the task. It contends that t he courts ought to dispose of or mo dify such

principles in v iew of current modern contex ts, including online envi ronments, in which

consumers operate. Accordi ngly, it puts forward recommendat ions for statutory reform

which would be more appro priate for the contempor ary context.

KEYWORDS: trade mark; word mark; confusingly similar; deceptively similar;

principles; refor m; South Africa

 

Over the past few years, several decisions from the Supreme Court of

Appeal (SCA) in intellectual property matters have given cause for concern,



of the SCA in Yuppiechef 1 was no different. In my view, the appeal court’s



YUPPIECHEF — the marks are not confusingly or deceptively similar — is

correct, and for good rea son.

A number of SCA decisions have recently dealt with the question of

confusion in word marks.2 It is not the purpose of this article to examine

the treatment of confusing similarity through all the cases, and examples



One such proposition is that several of the ‘principles’ by which judges

           

inappropriate. Some are out dated, and ought to be relegated to hist ory — which

 

1 Yuppiechef Holdin gs (Pty) Ltd v Yuppie Gadgets Hol dings (Pty) Ltd [2016] ZASCA 118.

2 Cf Yair Shimansk y v Browns the Diamond Store [2014] ZASCA 214 – EVOLYM // EVOLVE;

Lucky Star L td v Lucky Brands (Pt y) Ltd [2016] ZASCA 77 – LUCKY STAR // LUCKY FISH;

Dinnermates (Tvl) CC v Piquante Brands International and Another [2018] ZASCA 43 –

PEPPADEW // PEPPAMATES; PepsiCo v Atlantic Indu stries [2017] ZASCA 109 – TWIST //

PEPSI TWIST; Distell Ltd v KZ N Wines and Spirits C C [2016] ZASCA 18 – BLACK KNIGHT //

KNIGH TS; Orange Brand Ser vices Limited v Accou nt Works Software (Pt y) Ltd [2013] ZASCA

158 – ORANGE // ORANGE WORKS.

163

(2019) IPLJ 163

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is from where they emanate and where they belong. Some are inappropriate,

ill-suited to the ta sk; that this is so, I suggest, is apparent from t he most recent

decision from the SCA, that of Justice Leach in Novartis.3In the case it was

decided that the trad e mark CURIDA is confusingly simila r to the trade mark

CURITAZ, the marks being for use on goods which are only available on



to demonstrate th at principles which the court relied upon have no place in the

modern assessment of in fringement on the ground of confusion or decept ion.

Associated with these propositions is the view that the time has come for

a review of the basis upon which trade mark rights are protected. Indeed, it

               

appropriate, at least in order to give probably warranted protection to the

proprietor, the premise of ‘confusion’ seems to subject the syst em to strain.

One of the reasons motivating this consideration stems from the fact that

trade marks a re, of course, badges used to identify products i n trade so that a

selective purchase can be made. A t rade mark, after all, is the fa ce of the brand

and the brand is what the purchasing public seeks: the promise of quality,

type, source or pr ovenance, fame, and the li ke. Put more theoretically:

According to cognitive psychology, brand equity lies in consumers’ awareness of brand

features and associations, which drive attribute perceptions. According to information

economics, a st rong brand name works as a c redible signal of product qu ality for imperfect ly

informed buye rs and generates pric e premiums as a form of ret urn to brandi ng investments.4

Except for the things which are free — air, sunshine and (sometimes) love,

but perhaps not much more — virt ually every commodity we consume daily

is brand-denominated. However, the processes of us making a selective

purchase of products, and services, have changed within the recent past.

Although Yuppiechef is now opening retail stores, nevertheless, consumer

purchasing is increasingly becoming an online experience, and this mode of

shopping is quite different from that known to the aisles of supermarkets.

More so, it is quite different from the shopping milieu of yesteryear. Yet it is

yesteryear which spawne d the guidelines applied in our courts t oday in order

to determine whe ther an interdict should be granted or not.





they were a generation or two ago; and, surely, consumers are compelled to

be more perceptive and perspicaciou s because there are so many more brands

3 Novartis AG v Cipla Me dpro (Pty) Ltd and Anoth er [2018] ZASCA 64.

4 G Baltas and C Saridakis ‘Measuring Brand Equity in the Car Market: A Hedonic Price

Ana lysis ’ (2010) Jour nal of the Operati onal Research Soci ety 61(2) 284–293. Cited in Wikipedia

‘Brand Equit y’, available at https://en.wikipedia .org/wiki/ Brand_equit y (accessed on 14 October

2019).

164 South African Intellectual Property Law Journal (2019) 7

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