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

ABST RAC T

This art icle considers the pr inciples adva nced by South Af rican cour ts in tra de mark

infri ngement litigatio n pertai ning to conf usingly or dece ptively simila r word marks.

Such considerat ion entails the d iscussion of case law f rom other jur isdictions, wh ere it

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

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

several of the pri nciples applied by Sout h African co urts are ou tdated, i nappropriat e

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 op erate. Accordi ngly, it puts forward r ecommendat ions for statutory reform

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

KEYWORDS: tra de mark; word mar k; confusi ngly similar ; deceptively sim ilar;

principles; refor m; South Africa

  

Over the past few years, several decisions f rom the Supreme Cour t of

Appeal (SCA) in intellectual propert y matters have given cause for concer n,

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

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

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

YUPPIECHEF — the ma rks are not confusi ngly 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 pu rpose of this ar ticle to examine

the treatment of conf using similar ity through al l the cases, and examples

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

One such proposition is that several of the ‘pri nciples’ 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;

Dinnermat es (Tvl) CC v Piquante Bra nds Interna tional and Ano ther [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

© Juta and Company (Pty) Ltd

is from where they emanat e and where they belong. Some are inappropr iate,

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 No vartis.3 In the ca se it was

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

CURITAZ, the m arks being for use on goods which a re 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 prop ositions is the view that the ti me has come for

a review of the basis upon which trade ma rk rights are protect ed. Indeed, it

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

appropriate, at least in order t o give probably warranted prote ction to the

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

One of the reasons motivating th is consideration stems f rom the fact that

trade marks a re, of course, badges use d 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 pu rchasing public seeks: the promise of qualit y,

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

According to cog nitive psychology, brand e quity lies in c onsumers’ aware ness of brand

features an d associations , which drive at tribute per ceptions. Accor ding to infor mation

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 f ree — air, sunshine a nd (sometimes) love,

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

is brand-denomi nated. However, the processes of us making a select ive

purchase of products, and ser vices, have changed withi n the recent past.

Although Yuppiechef is now opening retail stores, never theless, consumer

purchasing is increa singly becoming an on line experience, and t his mode of

shopping is quite different f rom that known to the a isles of supermarkets.

More so, it is quite different from the shoppi ng 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, consumer s 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 Sar idakis ‘Mea suring Br and Equity i n 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

© Juta and Company (Pty) Ltd