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[2016] ZASCA 77
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Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others (164/2015) [2016] ZASCA 77; 2017 (2) SA 588 (SCA); 2016 BIP 180 (SCA) (27 May 2016)
Links to summary
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case
No: 164/2015
In
the matter between:
LUCKY
STAR LIMITED
(Formerly
Oceana Brands
Limited)
APPELLANT
and
LUCKY
BRANDS (PTY)
LTD
FIRST RESPONDENT
MICHAEL
RUSSELL TOWNSEND NO
(In
his capacity as a trustee for the time being
of
the MRT TRUST – IT
2004/2006)
SECOND
RESPONDENT
MARIE
HOCKLY NO
(In
her capacity as a trustee for the time being
of
the MRT TRUST – IT
2004/2006)
THIRD
RESPONDENT
MERINDA
MEINTJIES NO
(In
her capacity as a trustee for the time being
of
the MRT TRUST – IT
2004/2006)
FOURTH
RESPONDENT
MICHAEL
RUSSELL
TOWNSEND
FIFTH RESPONDENT
HARBOUR
HOUSE HOLDINGS (PTY) LTD
SIXTH RESPONDENT
HARBOUR
HOUSE RESTAURANT (PTY) LTD
SEVENTH RESPONDENT
LUCKY
FISH AND CHIPS –
MUIZENBERG
EIGHTH RESPONDENT
LUCKY
FISH MUIZENBERG
CC
NINTH RESPONDENT
LUCKY
FISH AND CHIPS – BREE
STREET
TENTH RESPONDENT
LUCKY
FISH BREE STREET (PTY) LTD
ELEVENTH RESPONDENT
LUCKY
FISH AND CHIPS – SEA
POINT
TWELFTH RESPONDENT
LUCKY
FISH REGENT STREET (PTY) LTD
THIRTEENTH RESPONDENT
LUCKY
FISH AND CHIPS – LONG STREET
FOURTEENTH RESPONDENT
LUCKY
FISH LONG STREET (PTY) LTD
FIFTEENTH RESPONDENT
LUCKY
FISH 5 (PTY)
LTD
SIXTEENTH RESPONDENT
THE
COMMISSIONER OF THE COMPANIES
AND
INTELLECTUAL PROPERTY
COMMISSION
SEVENTEENTH RESPONDENT
Neutral
citation
:
Lucky
Star Ltd v Lucky Brands (Pty) Ltd
(164/2015)
[2016] ZASCA 77
(27
May 2016)
Coram
:
Ponnan, Petse, Swain and Dambuza JJA and Kathree-Setiloane AJA
Heard
:
10 May 2016
Delivered:
27
May 2016
Summary:
Trade
Marks Act 194 of 1993
–
ss 34(1)
(a)(b)
and
(c)
– infringement – trade mark sufficiently dissimilar to
registered trade mark – likelihood of deception or confusion
not established –
Companies Act 71 of 2008
–
s 11(2)
–
company name not confusingly similar to appellants company names and
registered trade marks.
ORDER
On
appeal from:
Western
Cape Division of the High Court, Cape Town
(Rogers
J sitting as court of first instance).
The
appeal is dismissed with costs.
JUDGMENT
Swain
JA
(Ponnan,
Petse and Dambuza JJA and Kathree-Setiloane AJA concurring):
[1]
This
appeal concerns the sale and marketing of fish. In the case of the
appellant, Lucky Star (Ltd), this is in the form of canned
fish sold
under the registered trade mark Lucky Star. In the case of the
respondents, this is in the form of cooked fish and chips
sold from
several restaurants operated in Cape Town, under the trade marks
Lucky Fish, Lucky Fish and Chips and Lucky Fish &
Chips.
[1]
The issues appear to me to be considerably narrower than those raised
in the court a quo and by counsel before us.
[2]
Relying
upon the provisions of
s 34(1)
(a)(b)
and
(c)
of the Trade Marks Act 194 of 1993 (the Act), the appellant
unsuccessfully brought an application before the Western Cape
Division
of the High Court, Cape Town (Rogers J). An interdict,
together with ancillary relief, was sought against the respondents
restraining
them from infringing the Lucky Star trade mark. The
appellant also sought relief in terms of s 11(2)
(b)
(i)
and (iii) and 11(2)
(c)
(i)
of the Companies Act 71 of 2008 (the
Companies Act) declaring
that
the company name of the first respondent, Lucky Brands (Pty) Ltd, was
confusingly similar to the appellant’s registered
trade marks,
Lucky Star and Oceana Brands and company names, Lucky Star Ltd and
Lucky Star Foods. An order was accordingly sought
directing the first
respondent to change its name and trading name. Similar relief was
also sought on the same grounds against
the 9
th
,
11
th
,
13
th
,
15
th
and 16
th
respondents.
[3]
Section
34 of the Act provides as follows:
‘
(1)
The rights acquired by
registration of a trade mark shall be infringed by –
(a)
the
unauthorized use in the course of trade in relation to goods or
services in respect of which the trade mark 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 trade mark which is identical or similar to the
trade mark 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 trade mark 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 trade
mark
registered, if such a trade mark 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 trade mark, notwithstanding the absence
of confusion or
deception: Provided that the provisions of this paragraph shall not
apply to a trade mark referred to in section
70(2).’
[4]
I shall commence with s 34(a) of the Act.
For
the purposes of s 34(1)(a) the appellant had to establish (i) its
trade mark registrations; (ii) unauthorised use in the course
of
trade by the respondent of an identical mark or a mark so nearly
resembling its registered trade mark as to be likely to deceive
or
cause confusion; and (iii) in relation to the goods in respect of
which the mark is registered.
[2]
[5]
The
appellant relies upon the following registered trade marks:
(a)
Trade mark
registration 1959/01636 Lucky Star in class 29 for ‘fish and
fish products’
(b)
Trade mark
registration 1993/00074 Lucky Star in class 42 for ‘retail
. .
. services . . . concerned with or relating to the provision and
supply of foodstuffs’; and
(c)
Trade mark
registration 1993/00071 Lucky Star in class 29 for ‘all goods
included in this class excluding fish and fish products’
(d)
Trade mark
registration 1989/07326 Lucky Star label in class 29 for ‘fish
and fish products’ depicted as follows:
PLEASE
CONSULT THE PDF FOR THE IMAGE
[6]
It was not contended on the appellant’s behalf that the
infringement in terms of s 34(1)(a) consisted in the respondents’
use of an identical mark. The contention was that the respondents
make use of a mark so nearly resembling its trade marks as to
be
likely to deceive or cause confusion. For purposes of the alleged
infringements under s 34(1)(a), I shall restrict myself to
a
consideration of whether the appellant has established that a
substantial number of persons will probably be deceived into
believing
or confused as to whether there is a material connection in
the course of trade between the respondents’ goods and services
and the appellant’s trade mark (see
Plascon-Evans
at
640G-I). In considering this issue it is appropriate to apply the
principles summarized by Corbett JA in
Plascon-Evans
at
641A-E to the facts of the case. These principles are well known and
need not be repeated in detail. It suffices to say that
not only
should the marks be compared side by side but consideration must be
given to whether the average customer in the market
place would
probably be deceived or confused by their similarity. Corbett JA made
it clear that the main or dominant features of
the marks in question
as well as the general impression and any striking features were all
factors to be considered in deciding
whether there was a likelihood
of confusion or deception.
[7]
It is clear that in a trade mark infringement case what is required
is ‘an objective comparison between the registration
and the
[respondents’] actual use’.
[3]
The ‘enquiry is confined to the marks themselves and that no
regard should be had to other features of the get-up or other
indications of origin of the goods as actually marketed by the
[appellant] and the [respondents] respectively’.
[4]
The alleged infringer cannot ‘rely upon matter extraneous to
the mark itself, which he may have used in conjunction with
the mark,
in order to negate the likelihood of deception or confusion’.
[5]
Consequently, to the extent that the court a quo may have considered,
or been influenced by a comparison of the get-up of the appellant’s
canned pilchards product with the respondents’ trade mark, it
erred. What is required is a comparison of the appellant’s
registered trade mark ‘Lucky Star’ with the trade mark of
the respondents ‘Lucky Fish’ or ‘Lucky
Fish and
Chips’.
[8]
It is clear that this comparison should not take place in isolation.
It must take into account the inter-relationship between
the
similarity of the marks and the similarity of the goods and services
as registered for the appellant, including the ‘notional
use’
to which the mark may be put by the appellant, and the use to which
the marks have actually been put by the respondents.
A court in
infringement proceedings ‘has regard to the natural use to
which the appellant may put its mark, that is to “all
possible
fair and normal applications of the mark within the ambit of the
monopoly created by the terms of the registration. .
. .”’
[6]
[9]
Notional use of the registered mark requires that notice must be
taken ‘of the full range of permissible fair use’
of the
registered mark,
[7]
‘in
relation to any of the goods in respect of which it is registered’
and ‘must embrace all ways in which the
marks are likely to be
employed in fair and normal use, eg use of the marks in conjunction
with a generic description of the goods’.
[8]
In
Adidas
[9]
the following comments were made concerning the case of
Lever
Bros, Port Sunlight Ltd v Sunniwite Products Ltd
,
(1949) 66 R.P.C. 84:
‘
.
. . what was required to be postulated for the purposes of the
comparison was a notional use of each of the marks “in a
normal
way as a trade mark”. That this was indeed the approach of the
Court in the
Sunniwite
case, in relation to the use of the registered mark of the plaintiff
there, appears from an analysis of the facts of the case and
the
basis upon which the infringement issue was actually decided. The
plaintiff had used its mark, “Sunlight”, in respect
of
soap in tablet form and in respect of soap flakes. The defendant used
its mark, “Sunniwite”, in respect of a soapless
detergent
powder, which fell within the class of goods in respect of which the
plaintiff’s mark had been registered. In deciding
that there
had been an infringement, the Court found it unnecessary to pronounce
finally on the question of confusion on the basis
of the plaintiff’s
actual use of its mark being restricted to soap; the decision was
based on the finding that there would
have been confusion if the
plaintiff, as it was entitled to do, had applied its mark to a
soapless detergent as marketed by the
defendant. . . . Thus, for the
purposes of the comparison the actual use of the plaintiff’s
mark in respect of a specific
category of goods was disregarded and a
notional use, which would have been legitimate and reasonable, was
postulated in respect
of goods on which the plaintiff had never used
the mark. . .
The
principle underlying the aforementioned approach seems to me to be
clear: the Act confers upon the registered proprietor of
a trade mark
the absolute right, subject to the provisions of the Act, to prevent
the use of the trade mark or a mark so nearly
resembling it as to be
likely to deceive or cause confusion. . .[T]he fact that the owner of
the registered mark has not used it
in respect of the goods in
question is irrelevant in infringement proceedings, and if the
circumstances are such that non-use would
be irrelevant, as is the
position here, it must follow, in my view, that use in any particular
manner is equally irrelevant. As
far as protection against
infringement is concerned, the owner of a mark who has used it in a
particular fashion cannot be in a
worse position, I consider, than
the owner of a mark who has not used it at all’. (References
omitted).
[10]
The
court a quo accordingly erred in considering the appellant’s
historical and current business operations in order to determine
whether the proposed use of the registered mark by the appellant,
would constitute fair and normal notional use. What has to be
assumed
is such notional use by the appellant of the registered mark, within
the ambit of the monopoly created by the terms of
the
registration.
[11]
[10]
The common element of the appellant’s and the respondents’
marks is the word ‘Lucky’. As stated in
Bata
:
‘
It
is an ordinary word in everyday use, as distinct from an invented or
made-up word, and it cannot follow that confusion would
probably
arise if it is used in combination with another word.’
[12]
In
my view, the common elements of the appellant’s and the
respondents’ marks being the word ‘Lucky’ is
of
minor significance when the marks are looked at as a whole. The word
‘Fish’ as opposed to the word ‘Star’
is
distinctive and cannot be ignored. When the marks are compared side
by side, and the main or dominant features of the marks
are
considered, namely the words ‘Star’ and ‘Fish’,
there is no likelihood of deception or confusion. In
this regard the
appellant submits that the distinctiveness of the word ‘Fish’
is diminished because it is used in the
context of the sale of fish.
As I understood the argument, the word ‘Fish’ was
descriptive of the product sold and
not distinctive, because the
product sold by both parties was fish, in whatever form. I disagree,
the distinctiveness of this word
is not diminished simply because it
also serves to describe the product sold. As in
Bata
,
[13]
I have considerable difficulty in imagining that the notional
purchaser of the respondents’ fish and chips, would focus
attention only on the word ‘Lucky’ as the words ‘Star’
and ‘Fish’ are at least equally significant
as the word
‘Lucky’.
The
overall impression which is created is that the marks do not resemble
each other closely and the average customer would not
be confused or
deceived into believing that respondents’ restaurants bearing
the Lucky Fish mark is in any way associated
with the appellant.
Accordingly it has not been established that the marks resemble each
other so closely that deception or confusion
is likely to arise. The
appellant’s contentions based on s 34(1)(a) must therefore
fail.
[11]
Turning to s 34(1)(
b
).
Unlike s 34(1)(a), the provisions of s 34(1)(b) do not require that
the offending mark be used in relation to goods in the class
for
which the trademark has been registered.
[14]
It contemplates two elements:
‘
(a)
a mark identical or similar to the
trade mark used in relation (b) to goods which are so similar
to
those for which it had been registered that it gives rise to a
likelihood of deception or confusion.’
[15]
The
relationship between these two elements has been described in the
following terms:
‘
There
is, it seems to me, an interdependence between the two legs of the
inquiry: the less the similarity between the respective
goods or
services of the parties, the greater will be the degree of
resemblance required between their respective marks before
it can be
said that there is a likelihood of deception or confusion in the use
of the allegedly offending mark, and
vice
versa.
Of course, if the respective goods or services of the parties are so
dissimilar to each other that there is no likelihood of deception
or
confusion, the use by the respondent even of a mark which is
identical to the applicant’s registered mark will not
constitute
an infringement; also, if the two marks are sufficiently
dissimilar to each other no amount of similarity between the
respective
goods or services of the parties will suffice to bring
about an infringement.’
[16]
[12]
As ‘the two marks are sufficiently dissimilar to each other’
that ‘no amount of similarity between the respective
goods or
services of the parties will suffice to bring about an
infringement,’
[17]
it
follows that the claim based on s 34(1)(b) must also fail.
[13]
That leaves s 34(1)
(c)
of the Act. Section 34(1)
(c)
,
which requires that the marks be ‘similar’ to each other,
is intended ‘to provide protection against the dilution
of a
registered trade mark by the unauthorized use of an identical or
similar mark in relation to any goods or services, notwithstanding
the absence of confusion or deception’.
[18]
In
Bata
,
[19]
it was held that the word ‘similar’ must not be given too
wide or extensive an interpretation for the purposes of the
section.
To do so might have the effect of creating an unacceptable monopoly,
and would thus stultify freedom of trade. The appropriate
meaning to
be given to the word was ‘having a marked resemblance or
likeness’, which is not satisfied in this case.
Because
of the distinct lack of similarity between the registered trade mark
of the appellant and the trade mark of the respondents,
the issue of
whether the goods and/or services of the respondent are, or will be
the same as, or similar to those proposed by the
appellant, does not
have to be considered.
[14]
I turn to the relief sought by the appellant in terms of
s 11(2)
of
the
Companies Act. The
relevant portions of the section read as
follows:
‘
(2)
The name of a company must
–
(a)
not
be the same as -
.
. .
(iii)
a registered trade mark belonging to a person other than the company.
. . , unless the registered owner of that mark has consented
in
writing to the use of the mark as the name of the company; or
.
. .
(b)
not
be confusingly similar to a name, trade mark, mark, word or
expression contemplated in paragraph
(a)
. . . ;
(c)
not
falsely imply or suggest, or be such as would reasonably mislead a
person to believe incorrectly, that the company –
(i)
is part of, or associated with, any other person or entity;
.
. .’
[15]
The appellant has to show in terms of
s 11(2)
(b)
of the
Companies Act that
the company name of the first respondent, Lucky
Brands (Pty) Ltd, is confusingly similar to the appellant’s
registered trade
marks Lucky Star and Oceana Brands, or company names
Lucky Star Ltd and Lucky Star Foods, or that in terms of
s 11(2)
(c)
,
the first respondent’s name falsely implies or suggests, or is
such as would reasonably mislead a person to believe incorrectly
that
the first respondent is part of, or associated with, the appellant.
The same test is applicable to the use of the trade mark
Lucky Fish
in the names of the 9
th
, 11
th
, 13
th
,
15
th
and 16
th
respondents with regard to the
appellant’s registered Lucky Star and Lucky Star label trade
marks and company names, Lucky
Star Ltd and Lucky Star Foods.
[16]
For the reasons already given there is no basis to conclude that any
person would be led to believe that the 9
th
, 11
th
,
13
th
, 15
th
and 16
th
respondents are
part of, or associated with the appellant, or that their names which
include the words Lucky Fish are confusingly
similar to the name
Lucky Star. In addition, the name Lucky Brands when compared to the
appellant’s registered trade mark
Oceana Brands and company
names Lucky Star Ltd and Lucky Star Foods, does not contravene the
provisions of
s 11(2)
of the
Companies Act.
[17
]
The appellant accordingly failed to satisfy the requirements of
s
34(1)
(a)(b)
and
(c)
of the Act as well as
s 11(2)
of
the
Companies Act. The
appeal must therefore fail.
[18]
It is ordered that:
The
appeal is dismissed with costs.
K G
B Swain
Judge
of Appeal
Appearances:
For
the Appellant:
A R Sholto-Douglas SC (with G D Marriott)
Instructed
by:
Adams
& Adams, Cape Town
Honey
Attorneys, Bloemfontein
For the
Respondents:
M Seale
Instructed
by:
Brian
Bacon Inc, Cape Town
Webbers
Attorneys, Bloemfontein
[1]
The 1
st
to the 16
th
respondents comprise corporations, a close corporation, a natural
person, a trust as well as firms or partnerships. It appears
that
the 8
th
and 9
th
respondents, the 10
th
and 11
th
respondents, the 12
th
and 13
th
respondents and the 14
th
and 15
th
respondents, are in each case the same entities. The correct
entities are cited as the 9
th
,
11
th
,
13
th
and 15
th
respondents, whereas the 8
th
,
10
th
,
12
th
and 14
th
respondents are neither juristic nor natural persons. Nothing
however turns upon the incorrect citation of these entities and
it
is not necessary for the purposes of this appeal to set out the
individual details of each of the respondents. The citation
of the
parties before the court a quo will be retained to avoid confusion
save that the 7
th
respondent is now correctly cited as Harbour House Restaurant (Pty)
Ltd. The 17
th
respondent is the Commissioner of the Companies and Intellectual
Property Commission against whom no relief is sought.
[2]
Commercial Auto Glass
(Pty) Ltd v BMW AG
2007
(6) SA 637
SCA para 3.
[3]
Puma AG Rudolf
Dassler Sport v Global Warming (Pty) Ltd
[2010] ZASCA 140
;
2010 (2) SA 600
(SCA) para 10.
[4]
Adidas
Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd
1976 (1) SA 530
(C) at 535H in fine.
[5]
A C Webster, N S
Page, C E Webster and G E Morley
South
African Law of Trade Marks
(Service 19, 2015) para 12.8.5.
[6]
Bata Ltd v Face
Fashions
CC
& another
2001 (1) SA 844
(SCA) para 7, quoting
Plascon-Evans
Paints Ltd v Van Riebeeck Paints
supra at 641H-I.
[7]
Decro Paint and
Hardware (Pty) Ltd v Plascon-Evans Paints (Tvl) Ltd
1982 (4) SA 213
(O) at 217B.
[8]
Hudson &
Knight (Pty) Ltd v D H Brothers Industries (Pty) Ltd t/a Willowtown
Oil and Cake Mills & another
1979 (4) SA 221
(N) at 224F-G and 225A-B.
[9]
Adidas
Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd
1976 (1) SA 530 (C).
[10]
Adidas
above at 534G – 535E.
[11]
In
Century
City Apartments Property Services CC & another v Century City
Property Owner’s Association
[2009]
ZASCA 157
;
2010 (3) SA 1
(SCA) para 14 the postulated notional use
was described as ‘reasonable’.
[12]
Bata
above para 10.
[13]
Bata
above para 11.
[14]
Mettenheimer &
another v Zonquasdrif Vineyards CC & others
[2013] ZASCA 152
;
2014 (2) SA 204
(SCA) para 11.
[15]
Mettenheimer
above
para 11.
[16]
New Media
Publishing (Pty) Ltd v Eating Out Web Services CC
[2005] ZAWCHC 20
;
2005 (5) SA 388
(C) at 394C-F.
[17]
New Media
above at 394E-F.
[18]
Bata Ltd v Face
Fashions CC & another
2001 (1) SA 844
(SCA) para 13.
[19]
Bata
above para 14.