THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case nos: 309/2022 and 567/2022
In the matter between:
NATIONAL BRANDS LIMITED APPELLANT
and
CAPE COOKIES CC FIRST RESPONDENT
THE REGISTRAR OF
TRADE MARKS SECOND RESPONDENT
Neutral citation: National Brands Limited v Cape Cookies CC and Another (Case
nos: 309/2022 and 567/2022) [2023] ZASCA 93 (12June 2023)
Coram: PONNAN, GORVEN, HUGHES and GOOSEN JJA and
SIWENDU AJA
Heard: 17 May 2023
Delivered: This judgment was handed down electronically by circulation to the
parties’ legal representatives via e-mail, publication on the Supreme Court of Appeal
website and released to SAFLII. The date and time for hand-down are deemed to be
12 June 2023 at 11h00.
2
Summary: Trade Marks – opposition to registration – section 10(17) of the Trade
Marks Act 194 of 1993 – test – applies to similar goods – proof of actual detriment
or advantage not required – opposition well-founded – registration refused.
__________________________________________________________________
ORDER
______________________________________________________________________________
On appeal from: Gauteng Division of the High Court, Pretoria (Le Roux AJ, sitting
as court of first instance):
1 The appeal is upheld with costs , including those consequent on the
employment of two counsel.
2 Cape Cookies CC is directed to pay the costs arising from the inclusion of the
two supplementary volumes in the appeal record on the scale as between attorney
and client.
3 The order of the high court is set aside and the following order substituted:
‘(a) The opposition to trade mark application no. 2013/06837 in class 30 in
the name of Cape Cookies CC succeeds and the application for registration is
refused.
(b) Cape Cookies CC is directed to pay the costs of the opposition
proceedings, including those consequent on the employment of two counsel.’
3
__________________________________________________________________
JUDGMENT
__________________________________________________________________
Gorven JA (Ponnan, Hughes and Goosen JJA and Siwendu AJA concurring)
[1] The first respondent, Cape Cookies CC (Cape Cookies) applied to register the
trade mark SNACKCRAX by way of application no. 2013/06837 under the Trade
Marks Act 194 of 1993 (the Act). Publication took place on 28 May 2014. The
registration was sought in the following specification in class 30:
‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from
cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder, salt, mustard,
vinegar, sauces (condiments); spices; ice.’
It was common ground that these specifications covered savoury biscuits. The
application for registration was opposed by the appellant, National Brands Limited
(National Brands), on one or more of ss 10(4), 10(7), 10(12), 10(14) and 10(17) of
the Act. As is customary, the Registrar of Trade Marks, who was cited as the second
respondent, elected to abide the decision in both the high court and in this court.
[2] National Brands is the proprietor in South Africa of the following registered
marks:
(a) trade mark registration no. 1951/2139 SALTICRAX in class 30 in respect of
‘salt flavoured biscuits’, dating back to 1 Aug ust 1951 (the SALTICRAX
registration);
(b) trade mark registration no. B1985/03525 SNACKTIME in class 30 in respect
of ‘flour and preparations made from cereals; bread, biscuits, cakes, pastry,
4
confectionery and bakery products of all kinds; yeast, baking powder’, dating back
to 29 October 1986 (the SNACKTIME registration);
(c) trade mark registrations no. 2001/18858 VITASNACK and no. 2003/01759
VITASNACK WHOLEWHEAT CRISPS logo in class 30 in respect of ‘coffee, tea,
cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from
cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder,
salt, mustard, vinegar, sauces (condiments); spices; ice’ dating back to 2 November
2001 and 31 January 2003 respectively (the VITASNACK registration).
[3] Cape Cookies’ SNACKCRAX savoury biscuits have been on the market since
August 2014 and are sold in competition with National Brands’ SALTICRAX
savoury biscuits. In addition, Cape Cookies uses the VITACRAX mark , registered
in 2009, in relation to a crisp bread snack. National Brands has sought to interdict
that use in the Western Cape Division of the High Court, Cape Town (the Cape
litigation). The Cape litigation is still pending.
[4] The opposition proceedings were heard in the high court by Le Roux AJ in
the Gauteng Division of the High Court, Pretoria (the high court), who dismissed the
opposition and ordered that the relevant trade mark application must proceed to
registration and directed the Registrar of Trade Marks to register it. National Brands
was ordered to pay the costs of the opposition proceedings. The high court granted
leave to appeal on a limited basis but this court granted leave on the balance of the
grounds of opposition.
[5] The opposition by National Brands was based on the following provisions of
s 10 of the Act:
5
‘The following marks shall not be registered as trade marks or, if registered, shall, subject to the
provisions of sections 3 and 70, be liable to be removed from the register:
. . .
(4) a mark in relation to which the applicant for registration has no bona fide intention of using it
as a trade mark, either himself or through any person permitted or to be permitted by him to use
the mark as contemplated by section 38;
. . .
(7) a mark the application for registration of which was made mala fide;
. . .
(12) a mark which is inherently deceptive or the use of which would be likely to deceive or cause
confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of
persons;
. . .
(14) subject to the provisions of section 14, a mark which is identical to a registered trade mark
belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or
services in respect of which it is sought to be registered and which are the same as or similar to the
goods or services in respect of which such trade mark is registered, would be likely to deceive or
cause confusion, unless the proprietor of such trade mark consents to the registration of such mark;
. . .
(17) a mark which is identical or similar to a trade mark which is already registered and which is
well-known in the Republic, if the use of the mark sought to be registered 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 deception or confusion . . .’.
[6] It is as well to reiterate that, historically and primarily, a trade mark functions
as a badge of origin of the goods offered. 1 This originates from the definition of
1 Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd [2007] ZASCA 53; 2007 (6) SA 263 (SCA) para 5
(Verimark). This applies also to services which are not relevant here.
6
‘trade mark’ in the Act.2 It reassures persons seeing the mark that the proprietor is
the source of those goods. A registered trade mark constitutes a monopoly. That
being the case, it must not be interpreted in such a way as to impermissibly widen
its scope. On the other hand, the registration stage is aimed at ensuring the sanctity
of the Trade Mark Register, which should contain only distinctive marks.3 It is also
worth noting that only one ground of opposition need succeed for registration to be
prohibited and the application dismissed. There is an overall onus on the applicant
for registration to satisfy the court that there is no bar to registration under the Act.
[7] I turn to the objection under s 10(17) of the Act which precludes registration
of:
‘a mark which is identical or similar to a trade mark which is already registered and which is well-
known in the Republic, if the use of the mark sought to be registered 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 deception or confusion . . .’.
Section 10(17) was introduced in 1997 along with s 34(1)(c) of the Act, which is the
equivalent section dealing with infringement, and provides:
‘(1) The rights acquired by registration of a trade mark shall be infringed by –
. . .
(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 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 . . .’.
2 Apart from a non-applicable provision, ‘trade mark’ is defined as ‘ a mark used or proposed to be used by a person
in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is
used or proposed to be used from the same kind of goods or services connected in the course of trade with any other
person’.
3 See s 9 of the Act.
7
These are known as the ‘anti-dilution’ provisions.
[8] We were not referred to any authority, which has dealt with the provisions of
s 10(17) of the Act. Nor have I found any. There are a number of cases dealing with
s 34(1)(c). These afford some guidance as far as the applicable principles are
concerned but cannot be applied without more , because the provisions are not
entirely on all fours and since they relate to infringement whereas s 10(17) relates to
the registration stage. What is more, the incidence of the onus in respect of each
differs.
[9] In Laugh It Off Promotions CC v South African Breweries International
(Finance) BV t/a SabMark Internation al (Laugh It Off SCA), Harms JA listed the
requirements for proceedings under s 34(1)(c):
‘In order to establish infringement, the owner of the trademark must establish:
(a) the unauthorised use by the defendant of a mark
(b) in the course of trade
(c) in relation to any goods or services
(d) the mark must be identical or similar to a registered trademark
(e) the trademark must be well known in the Republic, and
(f) the use of the defendant's mark would be likely to take unfair advantage of, or be detrimental
to, the distinctive character or the repute of the registered trademark.’4
Of these, the first three are not in dispute.
4 Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a SabMark International [2004]
ZASCA 76; 2005 (2) SA 46 (SCA); [2004] 4 All SA 151 para 20 (Laugh It Off SCA). This judgment was reversed on
appeal by the Constitutional Court in Laugh It Off Promotions CC v SAB International (Finance) BV t/a Sabmark
International (Freedom of Expression Institute as Amicus Curiae) [2005] ZACC 7; 2006 (1) SA 144 (CC); 2005 (8 )
BCLR 743 (Laugh It Off CC) but this aspect was not departed from in that court.
8
[10] I will turn to item (d) presently. In support of its contention that item (e) was
satisfied, National Brands made t he point that, for a period of 58 years, it was the
only proprietor of a mark which included the expression ‘ CRAX’ in any guise or
form in class 30. At the time of the application by Cape Cookies for the registration
of SNACKCRAX , there were three such mar ks appearing in the Trade Marks
Register: SALTICRAX, Cape Cookies’ VITACRAX and trade mark registration no.
2009/24890, ETI CRAX , in the name of a third party who, when requested by
National Brands to cancel the registration, did so. Cape Cookies were also requested
to cancel the VITACRAX mark and refused, leading to the Cape litigation.
[11] National Brands gave detailed, unchallenged, evidence of the reputation and
goodwill of the SALTICRAX brand. It is sold through more than 2095 retail stores
in South Africa. It is also sold at over 270 convenience stores located at the major
South African fuel stations. It is sold in at least ten countries in Africa as well as in
the United Kingdom , the United States of America and Australia. Through its
Snackworks division, National Brands held a total of 66.7 percent of the savoury
biscuit market in 2012, with SALTICRAX biscuits alone accounting for 14.8
percent. In 2013, the percentages were 66.2 and 14.9 and in 2014, they were 66.9
and 13.7 respectively. I n addition, nett sales of SALTICRAX for the period from
1999 to 2014 totalled some R671 million. Between 1994 and 2009, National Brands
spent more than R11 million in advertising SALTICRAX.
[12] In argument it was conceded that the trademark SALTICRAX is well known
in South Africa. The high court found that the SALTICRAX trade mark enjoyed a
significant reputation and goodwill. This finding is now unchallenged. This means
that like items (a) to (c), item (e) has also been met. It is items (d) and (f) which must
accordingly be considered.
9
[13] Turning to item (d). By introducing the anti -dilution provisions, it was
recognised that protection should be extended beyond merely ‘protecting the mark
as a badge of origin.’5 In National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd,
this court explained as regards s 34(1)(c) of the Act:
‘Section 34(1) (c) introduces a new form of trade mark protection into our law, which aims to
protect the commercial value that attaches to the reputation of a trade mark, rather than its capacity
to distinguish the goods or services of the proprietor from those of others . . .’.6
Verimark expanded:
‘. . . the provision “aims at more than safeguarding a product's ‘badge of origin ’ or its ‘source-
denoting function’”. It also protects the reputation, advertising value or selling power of a well -
known mark.’7
[14] The inclusion of anti -dilution provisions was prompted by developments
elsewhere. In 19 88, the Council of the European Communities (EC) agreed a
Directive whose material terms in Article 5 provide:
‘2. Any Member State may also provide that the proprietor shall be entitled to prevent all third
parties not having his consent from using in the course of trade any sign which is identical with,
or similar to, the trade mark in relation to goods or services which are not similar to those for
which the trademark is registered, where the latter has a reputation in the Member State and where
use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive
character or the repute of the trade mark.
. . .
5. Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection
against the use of a sign other than for the purposes of distinguishing goods or services, where use
5 Verimark para 5.
6 National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA) (National Brands v Blue Lion)
para 11.
7 Verimark para 13.
10
of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive
character or the repute of the trade mark.’8
Paragraph 5 of Article 5 omits the requirement of use on ‘goods or services which
are not similar to those for which the trademark is registered’ and that of reputation
in a Member State.
[15] This prompted the production in the United Kingdom of a White Paper on the
reform of Trade Mark law in 1990 . The UK then introduced its anti-dilution
provisions in 1994 by way of s 10(3) of its Trade Marks Act:
‘A person infringes a registered trade mark if he uses in the course of trade a sign which –
(a) is identical with or similar to the trade mark, and
(b) is used in relation to goods or services which are not similar to those for which the trade mark
is registered, where the trade mark has a reputation in the United Kingdom and the use of the sign,
being without due cause, takes unfair advantage of, or is detrimental to, the dis tinctive character
or the repute of the trade mark.’
As will be noted, this aligns with paragraph 2 of Article 5 of the EC Directive.
[16] As was explained by Harms JA in Laugh It Off SCA:
‘According to the 'Memorandum on the Objects of the Draft Trade Marks B ill' an object of our
current Act, was to harmonise our law with that of the European Community, taking into account
the said White Paper.’9
That memorandum led to the introduction in 1997 of the anti-dilution provisions in
our Act. The Constitutional Court approved the dictum in Premier Brands UK Ltd v
Typhoon Europe Ltd,10 concerning the provisions of s 10(3) of the UK Act:
8 First Council Directive 89/1988 of the Council of the European Communities ‘To approximate the laws of the
Member States relating to trademarks ’. To be found at David Kitchin et al Kerly's Law of Trade Marks and Trade
Names (13 ed) 1017.
9 Laugh It Off SCA para 18.
10 Premier Brands UK Ltd v Typhoon Europe Ltd [2000] EWHC 1557; [2000] FSR 767.
11
‘(T)he owner of . . . a distinctive mark has a legitimate interest in continuing to maintain the
position of e xclusivity he acquired through large expenditures of time and money and that
everything which could impair the originality and distinctive character of his distinctive mark, as
well as the advertising effectivene ss derived from its uniqueness, is to be avo ided . . . Its basic
purpose is not to prevent any form of confusion but to protect an acquired asset.’11
Moseneke J went on to say of s 34(1)(c) of the Act:
‘Clearly, in our case too s 34(1) (c) serves a vital purpose in preserving trade and commercial
interests of owners of trademarks which have a reputation. This it does by prohibiting use which,
although it may not confuse or deceive, materially undermines the repute of well renowned trade
marks ordinarily harnessed to sell goods and services. The . . . section aims at more than
safeguarding a product's “badge of origin” or its “source-denoting function”. The section strives
to protect the unique identity and reputation of a registered trademark. Both of these attributes
underpin the economic value that resides in the mark's advertising prowess or selling power. As it
is often said the mark sells the goods and therefore its positive image or consumer appeal must be
saved from ruin.’12
[17] Cape Cookies submitted that the provisions of s 10(17) should not be regarded
as a ‘fall-back’, in the event of the other grounds of opposition in s 10 not being met.
However, as mentioned, each of the provisions of s 10 are self-standing grounds of
opposition to registration. If any one of them is established, the opposition must
succeed and the registration of the mark must be refused.
[18] Cape Cookies also submitted that s 10(17) applies only to goods that are
different to those for which the mark had been registered. As a result, s ince both
SALTICRAX and SNACKC RAX would cover savoury biscuits, National Brands
was not entitled to rely on s 10(17) to resist registration. For this proposition, Cape
11 Laugh It Off CC para 39.
12 Laugh It Off CC para 40.
12
Cookies called in aid the following dictum of Smit J in Triomed (Pty) Ltd v Beecham
Group plc and Others:
‘It would appear, although not specifically stated in the section, that the purpose of the section is
to prevent the use of a well-known mark in the Republic on goods other than those for which the
mark is registered. It seems to me that this subsection is not inten ded to protect a proprietor who
cannot prove the requirements of s 34(1)(a) or 34(1)(b) of the Act in respect of the same or similar
goods, as those for which a trade mark is registered.’13
This found support in Klimax Manufacturing Ltd and Another v Van Rensburg and
Another.14 Neither matter employed any reasoning in arriving at that conclusion.
[19] There are a number of strong indicators that this dictum cannot be supported.
Firstly, the language of our anti-dilution provisions does not in terms exclude similar
goods and services. In the second place, the provision was adopted with the stated
purpose of aligning our Act with provisions of the EC and the UK White Paper. The
EC provisions found expression in the Directive mentioned above. It allowed for at
least two kinds of provisions: those which applied to non -similar goods or services
and those which did not do so. The UK opted in s 10(3) of its Act to limit the
provision to non-similar goods and services. Our legislat ure, cogni sant of bo th
options in the Directive and the election by the UK, chose not to limit the application
13 Triomed (Pty) Ltd v Beecham Group plc and Others 2001 (2) SA 522 (T) at 555D-E (Triomed Gauteng). It should
be noted that Triomed was upheld on appeal to this court in Beecham Group plc and Another v Triomed (Pty) Ltd
[2002] ZASCA 2002; 2003 (3) SA 639 (SCA) ; [2002] 4 All SA 193 (SCA) (Triomed SCA). However, this court
decided the case on a different point and did not deal wi th the dictum, saying in para 6, ‘In view of my conclusion
that the appeal stands to be dismissed, I do not intend to canvass the whole area as did the learned Judge, but my
failure to deal with any particular issue should not be seen as either approval or disapproval of his judgment.’
14 Klimax Manufacturing Ltd and Another v Van Rensburg and Another [2004] 2 All SA 301 (O) ; 2005 (4) SA 445
(O) at 454G-H (Klimax).
13
of our anti -dilution provisions to non-similar goods and services. 15 This has also
been noted in some academic writing.16
[20] In the third place, this court has considered whether the provisions of
s 34(1)(c) apply to alleged infringements without limiting the enquiry to non-similar
goods. Some examples will suffice. Bata Ltd v Face Fas hions CC and Another,17
was concerned with the infringement of the appellant’s trade mark in respect of
footwear on the respondents’ clothing. Consideration was given to the merits of a
s 34(1)(c) infringement claim. Likewise, in Lucky Star Ltd v Lucky Brands (Pty)
Ltd,18 both the LUCKY STAR mark and the LUCKY FISH AND CHIPS were used
in relation to fish products; the former in respect of canned fish and the latter, cooked
fish and chips. Once more, the merits of alleged infringement under s 34(1)(c) were
considered. Finally, in Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings
(Pty) Ltd,19 this court had to consider whether the respondent was infringing the
appellant’s ‘YUPPIECHEF’ mark by using the unregistered mark ‘Yuppie Gadgets’
in respect of ‘different types of kitchen equipment . . . as well as other items of
household equipment’. Although in each matter the alleged claim of infringement
15 In Laugh It Off CC, this difference in our Act was not material and not dealt with. There Moseneke J commented in
para 36 that:
‘Provisions virtually identical in text and substance to our s 34(1)(c) are found in art 5(2) of the European Directive
and s 10(3) of the 1994 United Kingdom Act. However, there is an important difference. The corresponding European
Community and United Kingdom (UK) provisions require proof of actual detriment or unfair advantage. Our section
requires a likelihood of unfair advantage or detriment.’ Reference omitted.
As will be seen, the difference identified by him achieves some significance below.
16 Roshana Kelbrick: The term ‘well -known’ in South African trade -mark legislation: some comparable
interpretations in https://journals.co.za/doi/pdf/10.10520/AJA00104051_44, p435 at p437. Accessed on
30 May 2023.
17 Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (SCA) (Bata).
18 Lucky Star Ltd v Lucky Brands (Pty) Ltd [2016] ZASCA 77; 2017 (2) SA 588 (Lucky Star).
19 Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd [2016] ZASCA 118 (Yuppiechef).
14
failed, this court considered the infringement claim on its merits despite some
overlap in the nature of the goods.
[21] Finally, certain dicta of this court lend some support to an inclusive
interpretation. In Verimark, the goods were dissimilar: one being a car and the other
a car polish. Harms JA there said that s 34(1)(c) applied to ‘any goods’.20 Likewise,
in Laugh It Off SCA, it was said that, ‘the defendant's use need not be in relation
to similar goods or services’.21 In National Brands v Blue Lion, this court held, ‘the
nature of the goods or services in relation to which the offending mark is used is
immaterial . . .’.22 It must be pointed out however that in none of these matters was
the nature of the goods placed in issue. But, they all support the general acceptance
of the notion that the provision applies to ‘any goods’.
[22] For all of the above reasons, I conclude that s 10(17) is not limited to matters
involving different goods or services to those covered by the registered trade mark.
Similar goods and services fall squarely within its ambit. The submission of Cape
Cookies to the contrary effect must be rejected, as must the dicta in Triomed Gauteng
and Klimax.
[23] With that in mind, I turn to a comparison of the two marks. These are to be
compared as they are without taking into account extraneous matter. 23 Special care
needs to be taken that only the marks are compared in matters where, as here, the
20 Verimark para 11.
21 Laugh It Off SCA para 20. Emphasis in the original.
22 National Brands v Blue Lion para 11.
23 Tri-ang Pedigree (South Africa) (Pty) Ltd v Prima Toys (Pty) Ltd 1985 (1) SA 448 (A) at 468G–H.
15
getup on goods to which they relate has been extensively dealt with in the papers.24
It has also been made clear that ‘in opposition proceedings the question that falls to
be decided is not how the parties use or intend to use their marks, but how they would
be entitled to use them if both were to be registered’.25
[24] With that as a backdrop, the long -accepted approach as to how to compare
word marks must be applied:
‘You must take the two words. You must judge them both by their look and their sound. You must
consider the goods to which they are to be applied. You must consider the nature and kind of
customer who would be likely to buy those goods. In fact you must consider all the surrounding
circumstances; and you must further consider what is likely to happen if each of those trade marks
is used in a normal way as a trade mark for the goods of the respective owners of the marks.’26
In addition, ‘global appreciation of the visual, aural and conceptual similarity of the
marks in q uestion must be based on the overall impression given by the marks
bearing in mind in particular the distinctive and dominant components.’27 The ‘value
judgment is largely a matter of first impression and there should not be undue
peering at the two marks to find similarities and differences.’28
[25] It hardly needs saying that the marks are not identical. As was said in LTJ
Diffusion SA v Sadas Vertbaudet SA , ‘[t]he very definition of identity implies that
the two elements compared should be the same in all respects’.29 Accordingly, it is
24 National Brands v Blue Lion para 7.
25 Orange Brand Services Ltd v Account Works Software (Pty) Ltd [2013] ZASCA 158 para 6 (Orange Brand).
26 See ‘In the Matter of an Application by the Pianotist Company Ld. For the Registration of a Trade Mark’ (1906)
Reports of Patent, Design and Trade Mark Cases vol 23(32) 774-778.
27 Orange Brand para 14.
28 Yuppiechef para 26.
29 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ETMR 83 (European Trade Mark Reports) para 50 . This dictum
was approved in Century City with the caveat that ‘minute and wholly insignificant differences’ should not be taken
into account. Century City para 12.
16
an evaluation for similarity which must be undertaken. Many of the cases conflate
this enquiry with that of deception or confusion. Section 10(17) explicitly excludes
deception or confusion as an element of the enquiry. I do not think it goes so far as
to exclude the possibility that the mark s, albeit similar, might also deceive or
confuse. Simply put, the enquiry before us does not have to encompass that
element.30
[26] The cases have recognised that the word ‘similarity’ introduces the notion of
a continuum. In R v Revelas, Schreiner ACJ remarked that there are:
‘. . . degrees of similarity or likeness, some approaching, and exceptionally perhaps even reaching,
sameness, others amounting to no more than a slight resemblance. The similarity may be basic or
superficial, general or specific.’31
Having mentioned this dictum, and in the context of the test for infringement under
s 34(1)(c) of the Act, Melunsky AJA held:
‘“Similar” must obviously be construed in the context in whi ch it appears and, in my view, it
should not be given too wide or extensive an interpretation for the purposes of s 34(1) (c). The
section, while seeking to preserve the reputation of a registered mark, introduces a new concept
into South African law. If the word “similar” is given too extensive an interpretation the section
might have the effect of creating an unacceptable mono poly to the proprietor of a trade mark and
thus unduly stultify freedom of trade. I doubt whether the Legislature could have intended such a
result.’32
The need to guard against the impermissible broadening of a trade mark monopoly
was succinctly stated in English law:
30 Although it might arise in the future, I do not think it necessary to attempt to resolve the ‘conundrum’ adverted to
by Wallis JA in Yuppiechef para 44 as to the possibility of a mark being similar but not deceiving or confusing.
31 R v Revelas 1959 (1) SA 75 (A) at 80B–C.
32 Bata para 14.
17
‘The attraction of a trade mark registration is that provided it is used and the fees are paid, it gives
a perpetual monopoly. The problem is the same as the attraction but from the other perspective.
Unless the registration of trade marks is kept firmly in its proper sphere, it is capable of creating
perpetual unjustified monopolies in areas it should not.’33
[27] Using a dictionary definition of ‘similar’, and in the light of the warnings of
overbroad monopolies, Melunsky AJA concluded that it meant ‘having a marked
resemblance or likeness’.34 This court in turn explained that ‘“marked” means “easy
to recognise ”’.35 The European Court of Justice assesses whether there is a link
between the marks:
‘The types of injury referred to in Article 4(4) (a) of the Directive, where they occur, are the
consequence of a certain degree of similarity between the earlier and the marks, by virtue of which
the relevant section of the public makes a connection between those two marks, that is to sa y,
establishes a link between them even though it does not confuse them.’36
I agree with the academic comment that the opposite extreme of virtual identity
should not be required.37 The test, in my view, is that the likeness in the marks should
be easy to recognise and that a connection will be made or a link established between
them. This, of course, gives expression to the approach which recognises first
impressions and imperfect recollection, and eschews undue peering.
33 Société des Produits Nestlé SA v Cadbury UK Ltd [2012] EWHC 2637 (Ch) para 20.
34 Bata par 14.
35 National Brands v Blue Lion para 12.
36 Intel Corporation Inc. v CPM United Kingdom Ltd Case C-252/07 (ECJ) para 30. Cited in Webster and Page, issue
19, para 12.26, p12-55.
37 C Job: ‘The Value Judgment Conundrum: A critical review of recent trade mark appeal decisions in South African
Intellectual Property Law Journal (2017) p202 at p213.
18
[28] In assessing similarity, the courts have regard to any dominant feature of the
marks. In Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd , Corbett JA
said:
‘. . . if each of the marks contains a main or dominant feature or idea the likely impact on the mind
of the customer must be taken into account.’38
Clearly, the dominant feature in the present matter i s the use by both of the suffix
CRAX. This is what would strike the mind of a customer. Cape Cookies contended
that this was a descriptive word in common use rather than a made-up, distinctive
one. It submitted that ‘both parties know and accept that CRAX is an abbreviation,
or variation, of the word “CRACKERS”, which is an ordinary, descriptive, word ’.
It sought support for this submission in the affidavit of Natio nal Brands where it
claimed that ‘“CRAX” was used instead of the descriptive word “crackers”’. But the
opposite is true. National Brands argued for the distinctiveness of ‘CRAX’ over the
non-distinctive and descriptive ‘crackers’.
[29] Evidence of language usage must include dictionary use, even though this is
not decisive. The Concise Oxford Dictionary does not list ‘crax’ or give it as a form
of ‘cracker’ or ‘crackers’. The Merriam-Webster online dictionary defines ‘crax’ as
‘the type genus of Cracidae’.39 There is no mention of its being a shortened term or
an abbreviation for ‘crackers’. The Online Cambridge Dictionary has no meaning
for ‘crax’, simply listing similar words, the closest of which is ‘crack’.40 The Online
Etymology Dictionary ha s no result fo r ‘crax’.41 There is no basis for concluding
that it is, or was, a word in everyday use or is used as an abbreviation for crackers.
38 Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 641B -D. See also PepsiCo v
Atlantic Industries [2017] ZASCA 109 para 20 (PepsiCo).
39 ‘Crax.’ Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/Crax.
This is a species of long-legged bird. Accessed 25 May 2023.
40 https://dictionary.cambridge.org/spellcheck/english/?q=crax. Accessed 25 May 2023.
41 https://www.etymonline.com/search?q=crax. Accessed 25 May 2023.
19
[30] In support of its contention that ‘crax’ was a commonly used word for
‘crackers’, Cape Cookies attempted to rely on averments in an affidavit delivered in
the Cape litigation. National Brands submitted that the affidavit in question did not
form part of the papers in the present matter. It had simply been added to the
application papers without agreement or the leave of the high court. When pressed
in argument, Cape Cookies was constrained to concede that this was the case and
that the affidavit in question had not been properly introduced in evidence in the
present matter. This means, of course, that it cannot be relied on. The costs arising
from this action shall be dealt with later.
[31] It must be recognised that the competing words are both composite word
marks which include the suffix CRAX. CRAX has not been registered as a
standalone mark. The question is whether the different prefixes achieve sufficient
prominence to render SNACKCRAX dissimilar to SALTICRAX. Both prefixes are
descriptive words and thus not distinctive. SALTI alludes to taste and SNACK the
envisaged use for the biscuit. CRAX accordingly must be given more prominence
than was held to be the case in the word ‘Lucky’,42 the phonetical equivalent of the
commonly used word pepper in the mark PEPPA, 43 and the common word s
‘Power’44 and ‘Yuppie’.45 All of these were held to be non -distinctive despite their
being arguably the dominant element of the composite marks in question.46 CRAX
as the dominant feature of the two words is a coined word, unlike the other example
42 As in Lucky Star.
43 As in Dinnermates (Tvl) CC v Piquante Brands International & another [2018] ZASCA 43.
44 As in Bata.
45 As in Yuppiechef.
46 There has been criticism of some of these findings. See C Job: ‘The Value Judgment Conundrum: A critical review
of recent trade mark appeal decisions in South African Intellectual Property Law Journal (2017) p202 at p211-215;
Roshana Kelbrick and Coenraad Visser: Intellectual Property Law in 2017 Annual Survey of South African Law p658
at p670.
20
cited. It is therefore capable of distinguishing. In so far as the others are concerned,
it has come to be accepted that it is not the purpose of trade marks to enable people
‘to secure monopolies on the commons of the English language’ 47 and that the
phonetic equivalent of a non-distinctive word is itself non-distinctive.48
[32] It is worth mentioning some cases where comparisons of words have been
found to be similar and registration refused. In American Chewing Products
Corporation v American Chicle Company,49 this court upheld the opposition of the
proprietor of a registered trademark CHICLETS for chewing gum to registration of
Chicks for the same goods. In Century City Apartments Property Services CC and
Another v Century City Property O wners’ Association, this court held that, despite
the addition of the word ‘apartment’, Century City Apartments was not only similar
to Century City but confusingly so.50 In Orange Brand, the holder of the ORANGE
trademark in the technology goods category was held to be entitled to resist
registration of ORANGEWORKS, despite the word ‘orange’ being in common use.
This court explained:
‘The suffix WORKS – a word that might at best suggest an imprecise metaphor – trails off
considerably when the mark is expressed orally, is dominated visually by the
distinctive ORANGE when written, and is entirely overshadowed by the unusual conceptual use
of ORANGE in association with technology.’51
47 Yuppiechef para 38; Quad Africa Energy (Pty) Ltd v The Sugarless Company (Pty) Ltd and Another [2020] ZASCA
37; [2020] 2 All SA 687 (SCA); 2020 (6) SA 90 (SCA); 2020 BIP 426 (SCA) para 15.
48 Cochrane Steel Products (Pty) Ltd v M-Systems Group [2017] ZASCA 189 para 21.
49 American Chewing Products Corporation v American Chicle Company 1948 (2) SA 736 (A).
50 Century City Apartments Property Services CC and Another v Century City Property Owners' Association [2009]
ZASCA 157; 2010 (3) SA 1 (SCA); [2010] 2 All SA 409 (SCA) para 13.
51 Orange Brand para 16.
21
In the Court of Appeal in England, registration of ‘Alka -vescent’ was refused as
being too similar where ‘Alka-Seltzer’ had been registered.52 Finally, in relation to
prescribed medicines, this court held that ZEMAX and ZETOMAX were not only
similar, but confusingly so for lay purchasers.53
[33] The suffix CRAX is a distinctive feature of SALTICRAX, as TWIST was
held to be in PepsiCo.54 As was said in Distell Ltd v KZN Wines and Spirits CC, ‘the
visual, aural and conceptual similarities of the marks must be assessed by reference
to the overall impressions created by the marks bearing in mind their distinctive and
dominant components’.55 Not only is the first letter of both an ‘S’, but phonetically
each commences with a strong ‘s’ sound. It is well established that the first syllable
of a word is important for distinction.56 Both are three syllables. When spoken, they
sound the same, with the emphasis on ‘CRAX’. Th e difference, to the extent that
there is any, lies in the middle syllable. But, that distinction fades into insignificance,
against the backdrop of the overall impression created by the marks. Considered as
wholes, bearing in mind their dominant and disti nctive features, SNACKCRAX
must be considered to be similar to SALTICRAX. I do not consider that the prefix
SNACK serves to sufficiently distinguish SNACKCRAX from SALTICRAX either
visually or aurally. The conceptual similarities are clear.
52 Broadhead’s Application for Registration of a Trade Mark (1950) 67 RPC 209 at 217.
53 Adcock Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another [2012] ZASCA
39; 2012 (4) SA 238 (SCA); [2012] 3 All SA 1 (SCA) para 31.
54 PepsiCo para 27. I am aware that the matters are not on all fours because TWIST was on the register. It is the
prominence of the distinctive feature that is similar.
55 Distell Ltd v KZN Wines and Spirits CC [2016] ZASCA 18 para 10.
56 Tripcastroid [1925] RPC 264 cited in In the matter of Trade Mark application m1553108 by Flexiform Business
Furniture to Register the Mark Flexilink and In the matter of Opposition Thereto Under Opposition m 42604 by
Wagon Storage Products Ltd https://www.ipo.gov.uk/t-challenge-decision-results/o05399.pdf. Accessed 6 June 2023.
22
[34] Of further significance is that the marks at present, and if registered , will be
capable of being use d on identical goods. In my view, the relevant consumer will
make a connection or discern a link between the two. In this regard, the Rus/Sanrus
matter is instructive.57 In that case, the plaintiffs were the registered proprietors of a
trademark consisting of the word Rus in respect of porcelain and earthenware. They
brought proceedings for infringement and passing off against the defendants for use
of the word Sanrus in respect of bricks. In that matter, Simonds J held that, due to
its reputation in the building trade and despite the words not being similar, a link
would be made by a ‘person accustomed to deal in this class of material, that is to
say an arch itect, builder or purveyor of builders’ materials ’. As such, Sanrus was
held to amount to an infringement of Rus. By analogy, it would seem reasonable to
suppose that SNACKCRAX might be linked with, and thus amount to an
infringement of, SALTICRAX in the same way.
[35] The test of an eas ily recognisable similarity between the two marks is met.
The mark SNACKCRAX must therefore be held to be similar to SALTICRAX for
the purposes of s 10(17).
[36] Item (f) remains: This pertains to whether, as National Brands contends, it
can be said that ‘the mark sought to be registered would be likely to take unfair
advantage of, or be detrimental to, the distinctive character or the repute of the
registered trade mark’.
[37] It is noteworthy that s 10(3) of the UK Act proscribes registration where, ‘the
use of the sign, being without due cause, takes unfair advantage of, or is detrimental
57 Ravenhead Brick Co v Ruabon Brick & Terra Cotta Co. Ltd [1937 RPC 341 also cited in Flexilink fn 56 above.
23
to, the distinctive character or the repute of the trade mark.’ Our legislation differs
in only requiring the mark to be likely to do so. This court has accepted that the word
‘likely’ in s 17 of the Act must be taken to mean a reasonable probability as opposed
to a reasonable possibility. 58 That approach applies equally here. In Verimark, the
following comments were said to be apposite to s 34(1)(c):
‘. . . the unfair advantage or the detriment must be properly substantiated or established to the
satisfaction of the Court: the Court must be satisfied by evidence of actual detriment, or of unfair
advantage.’59
These were, ho wever, made in the context of the UK legislation which requires
actual advantage or prejudice.60 They accordingly did not apply to the test that such
advantage or detriment was likely. However, in a footnote to that dictum, Harms JA
said that, ‘[d]epending on the primary facts these may be self-evident’.61
[38] Concrete evidence of actual advantage or detriment is not required under
s 10(17). Only a likelihood need be shown. It seems to me that a well-founded basis
for why it would be lik ely that an unfair advantage would be gained if registration
takes place suffices. I agree that, as opposed to bare assertions, facts supporting such
an inference must be put up.62 In any event, at the time that opposition proceedings
are launched, concrete evidence may well not yet have emerged.
58 Cowbell AG v ICS Holdings Ltd [2001] ZASCA 18; 2001 (3) SA 941 (SCA); [2001] 4 All SA 242 para 10.
59 Verimark para 14.
60 Ibid, Harms JA said:
‘The following points made by Lord Menzies with reference to a number of authorities are in this context apposite: .
. . that the unfair advantage or the detriment must be properly substantiated or established to the satisfaction of
the Court: the Court must be satisfied by evidence of actual detriment, or of unfair advantage. ’
61 Footnote 21 of Verimark.
62 See Laugh It Off CC para 54.
24
[39] The Constitutional Court accepted as correct what was stated in Pfizer Ltd and
Pfizer Incorporated v Eurofood Link (United Kingdom) Ltd,63 which said:
‘The concept of ''unfair advantage'' requires an enquiry into the benefit to be gained by the
defendant from the use of the mark complained of and the concept of ''detriment'' requires an
enquiry into the goodwill accruing to the business in the goods sold under the trade mark.’64
The benefit which National Brands contends Cape Cookies will likely derive from
the use of SNACKCRAX must thus be considered.
[40] National Brands submitted that Cape Cookies would be likely to take unfair
advantage of ‘the power of attraction, the prestige an d repute’ of the SALTICRAX
mark. It submitted with some force that this had been built up over a considerable
period and with a considerable investment of money. Cape Cookies chose to go into
direct competition with it. The use of the similar mark will enable Cape Cookies to
‘ride on the coat tails’ of National Brands as regards the well-established
SALTICRAX mark without itself having to expend time and money to achieve an
equally competitive position. It was submitted that this was why Cape Cookies chose
a mark similar to SALTICRAX as opposed to a different mark under which it could
have traded without that advantage . Cape Cookies was challenged to produce its
instructions to the advertising agency so as to negate this inference but refused to do
so on the grounds that they were confidential.
[41] In my view, National Brands went beyond simply parroting the provisions of
the section. The trademark SALTICRAX was registered in 19 51. It was the only
mark containing ‘CRAX’ until 2009, when Cape Cookies registered the disputed
VITACRAX mark. National Brands spent more than R11 million in advertising
63 Pfizer Ltd and Pfizer Incorporated v Eurofood Link (United Kingdom) Ltd [2000] FSR 767.
64 Laugh It Off CC para 39.
25
SALTICRAX over a 15 -year period and achieved strong market penetration over
many years. The products marketed under the SNACKCRAX mark are virtually the
same as SALTICRAX biscuits. The significance of this is that Cape Cookies does
not have to embark upon any marketing campaign of its own (and there is no
evidence that it has thus far done so) to achieve market penetration, despite the fact
that it will be trading in the same stores with a similar product and in the same
consumer niche market.
[42] In all the circumstances, I take the view that, if registration was to be allowed,
use of S NACKCRAX would reasonably probably , or be likely to, take unfair
advantage of the distinctive character or repute of SALTICRAX. In the result, the
case was made out that s 10(17) stands in the way of registration of the mark applied
for. In my view, the high court erred in dismissing the opposition to the registration
application. It is thus not necessary to consider the other grounds of opposition relied
upon by National Brands.
[43] As mentioned, Cape Cookies attempted to utilise an affidavit from the Cape
litigation when it did not form part of the present papers. Cape Cookies persuaded
the Registrar of this court to admit into the appeal record two additional volumes
totalling 287 pages containing that affidavit in the face of protest by National Brands.
National Brands sought a punitive costs order against Cape Cookies for the inclusion
of those volumes. It had warned Cape Cookies that a punitive costs order would be
sought. Despite this, Cape Cookies persisted. There was absolutely no basis on
which Cape Cookies was entitled to include the volumes. I see no reason why Cape
Cookies should not bear the costs arising from the inclusion of those volumes on an
attorney and client scale.
26
[44] As regards the balance of the costs in the high court and on appeal, they should
follow the result. Although Cape Cookies utilised the services of only one counsel,
it raised no argument against the entitlement of National Brands to the costs of two
counsel which, in my view, was warranted.
[45] In the result, the following order issues:
1 The appeal is upheld with costs, including those consequent on the
employment of two counsel.
2 Cape Cookies CC is directed to pay the costs arising from the inclusion of the
two supplementary volumes in the appeal record on the scale as between attorney
and client.
3 The order of the high court is set aside and the following order substituted:
‘(a) The opposition to trade mark application no. 2013/06837 in class 30 in
the name of Cape Cookies CC succeeds and the application for registration is
refused.
(b) Cape Cookies CC is directed to pay the costs of the opposition
proceedings, including those consequent on the employment of two counsel.’
____________________
T R GORVEN
JUDGE OF APPEAL
27
Appearances
For appellant: C E Puckrin SC, with L G Kilmartin
Instructed by: Adams and Adams, Pretoria
Honey Attorneys, Bloemfontein
For first respondent: M Seale SC
Instructed by: Brian Bacon Incorporated, Cape Town
Webbers Attorneys, Bloemfontein