CLE written by Elani Vogel and checked by Loyiso Bavuma
19 February 2021
Introduction
- This CLE comprises two cases, both focusing on trademark infringement in terms of s34(1)(a) and (c) of the Trade Marks Act 194 of 1993 (“the Act”). The applicant in both cases is Golden Fried Chicken (Pty) Ltd, trading as the well-known fast-food outlet Chicken Licken (hereinafter “Golden”). Golden seeks to interdict different restaurants for their use of certain trademarks. S34(1) of the Act provides:
“The rights acquired by registration of a trademark shall be infringed by-
(a) the unauthorized use in the course of trade in relation to goods or services in respect of which the trademark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;
(b) the unauthorized use of a mark which is identical or similar to the trademark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trademark is registered, that in such use there exists the likelihood of deception or confusion;
(c) the unauthorized use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trademark registered, if such trademark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trademark, notwithstanding the absence of confusion or deception: Provided that the provisions of this paragraph shall not apply to a trademark referred to in section 70(2).”
Golden Fried Chicken (Pty) Ltd v Oh My Soul (Pty) Ltd t/a Oh My Soul Cafe [2019] ZAKZDHC 30
BACKGROUND
2. Golden sought an urgent interdict against the respondent, Oh My Soul (Pty) Ltd t/a Oh My Soul Café (“Oh My Soul Cafe”), to restrain the latter from infringing its registered trademark in terms of s34(1)(a) and (c)of the Act.
3. With neither the facts nor general principles of law in dispute between the parties, the only issue for determination was whether Oh My Soul Café’s use of its marks was likely to deceive or cause confusion.
4. Golden described its enterprise in great detail, with its business being second only to Kentucky Fried Chicken (KFC) in the fast-food restaurant sector. Golden went on to articulate the history and composition of its “Soul” brand, comprising, inter alia: an African cool; pride in an Afrocentric heritage typified by success against adversity; a rising above racial prejudice; and stereotypes where “blackness” is not a shortcoming but a positive advantage.
5. Oh My Soul Café characterised its business as a lifestyle restaurant supplying goods and services to vegans, describing veganism as a philosophy premised on the belief that animals have souls. Thus, veganism is a deep commitment to protecting animals by not eating meat or other products derived from animals.
6. Additionally, the following relevant facts were common cause:
6.1 Golden was the owner of the trademarks “Bless My Soul”, “Soul”, “Soul Kitchen”, “Soul Food”, “Soul Slaw”, “Licken”, “Soul Food”, “Original Chicken” and “Soul Food” in various classes of registration in the Act; and
6.2 Golden sought removal of the trademarks “Oh My Soul”, “Oh My Soul Café”, “Licken”, “Soul Food”, “Soul Food Sunday”, “Soul Salad” and “Soul Salads” by Oh My Soul Café from all of its websites and materials.
COURT HELD
7. The Court quoted the familiar case of Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd and stated that the test for establishing the likelihood of confusion or deception is as follows:
“In an infringement action, the onus is on the plaintiff to show the probability or likelihood of deception or confusion. The determination of these questions involves essentially a comparison between the mark used by the defendant and the registered mark and, having regard to the similarities and differences in the two marks, an assessment of the impact which the defendant’s mark would make upon the average type of customer who would be likely to purchase the kind of goods to which the marks are applied…. And finally, consideration must be given to the manner in which the marks are likely to be employed, as for example, the use of name marks in conjunction with a generic description of the goods.”
8. The Court held that deception or confusion would exist if the individual is deceived into believing that there is a material connection between the goods bearing Oh My Soul Café’s mark and Golden’s trade mark; or if the individual were to be confused about whether any such connection exists.
9. The Court stated that the test to establish an infringement under s34(1)(c)is objective, with Golden required to demonstrate that Oh My Soul Café’s use of its similar mark in the course of trade will most likely take unfair advantage of, or be detrimental to, the distinctive repute of the Golden’s registered mark, which is well known in the Republic.
10. The Court held that the threshold for an infringing mark depends on whether it is similar to the registered mark. The Court warned that “similar” ought not to be construed with too wide an ambit, as this may result in an unacceptable monopoly to the proprietor of a trade mark.
11. The Court held that the word “soul” has different meanings for both litigants, with its use in either context being diametrically opposite to one another. Golden and its various trademarks are well known in the Republic for chicken products. They are philosophically, ideologically and in reality, the very antithesis of veganism. Vegans are discerning consumers most unlikely to confuse or associate “Oh My Soul” with the Golden’s conception of “Soul” in whatever form its trademarks appear.
12. The Court finally held that if Golden’s “Soul” brand has the remarkable capacity to communicate to its consumers “African cool, a pride in an Afrocentric heritage typified by success against adversity, a rising above racial prejudice and stereotypes where “blackness” is not a shortcoming but a positive advantage” then in the spirit of Ubuntu, Golden should, in the national interest, encourage rather than restrain the use of “soul” to mend our social fractures by allowing small businesses to survive attacks by large corporates like Golden. The application was accordingly dismissed with costs.
Golden Fried Chicken (Pty) Ltd v Vlachos and Another [2020] ZAGPJHC 284
13. Vlachos and Soul Souvlaki (hereinafter jointly referred to as “Souvlaki”) were the respondents to a second interdict sought by Golden. Materially, Souvlaki was in the business of selling souvlaki, a type of Greek street food, under the name “Soul Souvlaki” since November 2012. As such, the central issue again revolved around Golden’s trademark of “Soul” and “Soul food”.
14. Golden argued that it and Souvlaki are competitors, and relying on s34(1)(a) and (c) of the Act, alleged that an ordinary person would be confused or deceived into thinking that there is a connection between Golden and Souvlaki, or alternatively, that Souvlaki’s products have their origin with Golden. Golden alleged further that Souvlaki is exploiting its trademark and damaging its brand, as well as potentially causing loss of sales through the confusion.
15. Golden averred that the word “souvlaki” does not serve to distinguish Souvlaki’s mark as it is simply descriptive of the goods Souvlaki offers. Further, Golden states that “soul” is the dominant element in both “Soul Souvlaki” and “Soul Food” because it is the first word in each mark, and therefore the most memorable.
16. In response, Souvlaki averred that it was not in competition with Golden as the food, look and feel of the restaurants were materially different. Additionally, Souvlaki stated that it was not a fast food offering, and rather in the business of catering to festivals, thus attracting a different clientele. Souvlaki further contends that the word “soul” has many different meanings and that Golden has no right to monopolise the concept.
17. In addition, Souvlaki launched a counter-application, that sought the removal of Golden’s registered “Soul” and “Soul Food” marks from the trade marks register in terms of s24(1), read with s9, s10(2)(a)(b) and (c) of the Act. Souvlaki put forward the following justification to the removal of the marks:
6.3 both “Soul” and “Soul Food” are not marks capable of distinguishing the relevant goods as required by the Act;
6.4 the “Soul Food” mark consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality or other characteristics of goods and services;
6.5 the “Soul Food” mark consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practices of the trade; and
6.6 the registration of the words “Soul Food” is contra bonos mores because the term is associated with a particular type of cuisine, particularly American, and associated with African American culture and tradition.
COURT HELD
18. In assessing whether Souvlaki infringed s34(1)(a) of the Act, the Court held that the fact that both entities provide food or restaurant services does not, in itself, imply that there will be confusion or deceptive similarity between the two.
19. Apart from the allegation that Golden “is second only to KFC in size in the take-away fried chicken market”, it made no attempt to define the market it serves. Golden described itself as associated with African American culture, while Souvlaki clearly denotes a Greek influence. The brands very clearly differ in this regard, and there can be no possible confusion.
20. The Court held that while “soul” is the dominant and distinguishing factor in Golden’s trademark, the same cannot be said for Souvlaki. The word “souvlaki” is clearly dominant in Souvlaki’s trade as it informs the consumer that the food is likely Greek. Golden being in the fast food business selling fried chicken mean that the word “souvlaki” undoubtedly distinguishes Souvlaki from Golden.
21. To determine if the overlapping marks used by Golden and Souvlaki are likely to cause deception and confusion, the Court held that one ought to ascertain whether the public may perceive a connection between Golden and Souvlaki by Souvlaki’s use of the trademark “Soul Souvlaki”, and whether there is likely to be any confusion. The Court found that this was not the case and as such, held that there was no infringement of s34(1)(a) of the Act.
22. In considering whether Souvlaki infringed s34(1)(c) of the Act, the Court held that this section does not require any deception or confusion for an infringement to occur. The Court recognised the well known nature of Golden’s “Soul” and “Soul Food” marks, but held that, having found that there is no similarity in the offerings of the two parties, it would be difficult to find that Souvlaki will take unfair advantage of Golden’s reputation. There can be no advantage to Souvlaki in any association with Golden, considering the differences between them.
23. The Court then turned to Souvlaki’s counter-application for the removal of certain marks belonging to Golden, which were registered in 1982. The Court held that had Golden attempted to register these trade marks in the present day, where information is much more accessible, it likely would have been unsuccessful. Nevertheless, it was held that Golden’s marks have acquired, within a limited market, the ability to distinguish. As such, its removal from the trade register could not be justified.
24. In relation to the contra bonos mores argument, the Court remarked that it was a pity that Golden had not treated this particular allegation more seriously, as the idea that one company should have the monopoly on a term which represents the cuisine of a group of people and their culture is, at the very least, problematic.
25. The Court thus dismissed both Golden’s application as well as the counter-application of Souvlaki.
VALUE
These cases provided clarity on the interpretation of s34(1) of the Trade Marks Act, specifically with regard to the restaurant and fast-food industry.
