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[2017] ZASCA 109
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Pepsico Inc v Atlantic Industries (983/2016) [2017] ZASCA 109; 2017 BIP 122 (SCA) (15 September 2017)
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THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case No: 983/2016
In the matter between
PEPSICO INC
APPELLANT
and
ATLANTIC INDUSTRIES
RESPONDENT
Neutral
citation:
PepsiCo v Atlantic Industries
(983/16)
[2017] ZASCA 109
(15 September 2017)
Coram
:
Lewis, Cachalia & Petse JJA &
Lamont & Rogers AJJA
Heard:
28 August 2017
Delivered:
15 September 2017
Summary:
Trade marks: respondent’s registered
marks TWIST, LEMON TWIST and DIET TWIST inherently capable of
distinguishing its soft
drinks: such marks not purely descriptive of
products or their characteristics: appellant’s expungement
application correctly
dismissed.
Trade
marks: appellant’s proposed marks, consisting of or
incorporating the words PEPSI TWIST, likely to deceive or cause
confusion by virtue of similarity to respondent’s marks:
respondent’s opposition to appellant’s trade mark
application
correctly upheld.
ORDER
On
appeal from:
A full
court of the Gauteng Division of the High Court, Pretoria (per Louw
J, Prinsloo & Meyer JJ concurring), sitting on appeal
from a
judgment of the Gauteng Division of the High Court, Pretoria (Preller
J)
The
appeal is dismissed with costs, including those attendant on the
employment of two counsel.
JUDGMENT
Rogers
AJA (Lewis, Cachalia & Petse JJA and Lamont AJA concurring)
Introduction
[1]
The appellant, PepsiCo Inc (PepsiCo), is the
registered proprietor in South Africa of various trade marks
consisting of or incorporating
the words PEPSI and PEPSI-COLA. The
respondent, Atlantic Industries (Atlantic), a wholly owned subsidiary
of The Coca-Cola Company,
is the registered proprietor in South
Africa of the trade marks TWIST, LEMON TWIST and DIET TWIST. Both
parties’ registrations
are in class 32, a class which includes
‘mineral and aerated waters and other non-alcoholic drinks’.
[2]
In 2006
PepsiCo applied for the registration, also in class 32, of a word
mark PEPSI TWIST and of a device mark incorporating the
words PEPSI
TWIST. The representation of the device mark in the record is
monochrome though I assume there is no colour limitation.
[1]
Below is a monochrome depiction of the proposed device mark as it
would appear on a canned beverage (the small text above the words
‘Pepsi Twist’ does not form part of the proposed mark):
[NB:
CONSULT THE RTF AND HTML VERSION FOR IMAGES]
[3]
Atlantic opposed the registrations. PepsiCo
countered by applying for the expungement of Atlantic’s marks.
In accordance with
a request by the parties, the Registrar of Trade
Marks referred the matter to the Gauteng Division of the High Court,
Pretoria,
for determination. On 5 May 2014 that court (per Preller J)
dismissed PepsiCo’s application for the expungement but granted
PepsiCo’s application for the registration of its PEPSI TWIST
marks. Each side appealed to a full court against their respective
defeats. On 24 May 2016 the full court upheld Atlantic’s appeal
and dismissed PepsiCo’s cross-appeal. Having obtained
special
leave, PepsiCo appeals to this court against the whole of the full
court’s judgment.
Expungement
of Atlantic’s marks
[4]
It is
convenient to start with PepsiCo’s expungement application.
Section 24 of the Trade Marks Act
[2]
entitles an interested party to apply to have the trade mark register
rectified inter alia by removing any entry ‘wrongly
made in or
wrongly remaining on’ the register. PepsiCo’s expungement
application asserted that Atlantic’s marks
wrongly remained on
the register because they fell foul of ss 10(2)(a) and 10(2)(b).
Section 10 provides that certain marks
shall not be registered as
trade marks or, if registered, shall be liable to be removed from the
register. Sections 10(2)(a)
and (b) apply to a mark which:
‘
(a)
is not capable of distinguishing within the meaning of section 9; or
(b) consists
exclusively of a sign or an indication which may serve, in trade, to
designate the kind, quality, quantity, intended
purpose, value,
geographical origin or other characteristics of the goods or
services, or the mode or time of production of the
goods or of
rendering of the services’.
[5]
Section 9(1) requires that in order to be
registrable a mark must be capable of distinguishing the goods or
services of the proprietor
from the goods or services of another
person. Section 9(2) states that a mark shall be considered to be
capable of so distinguishing
if, at the date of application for
registration, it is inherently capable of so distinguishing or if it
is capable of so distinguishing
by reason of prior use. By virtue of
the proviso to s 10, a registered mark is not liable to be
removed if, by the date of
the expungement application, it has become
capable of distinguishing within the meaning of s 9.
[6]
PepsiCo’s
case on ss 10(2)(a) and (b) rests on the same essential contention,
namely that the word ‘twist’ is
a common English word
which is merely descriptive of the kind, quality or characteristics
of the goods to which Atlantic’s
marks relate and is not
inherently capable of distinguishing its beverages from those of
other proprietors. In support of these
contentions PepsiCo referred
to the
New
Shorter OED
[3]
which includes, among the meanings of ‘twist’ as a noun,
‘a curled piece of lemon etc. peel used to flavour a
drink’
and ‘a drink consisting of a mixture of two different spirits
or other ingredients, such as gin and brandy etc’.
[7]
The courts
below were right to reject these contentions. ‘Twist’ as
meaning a beverage of mixed ingredients is described
by the
New
Shorter OED
and
in the unabridged
OED
[4]
as slang. In the 1961 edition of Eric Partridge’s dictionary of
slang,
[5]
this slang was said to
be obsolete. It does not appear in other dictionaries of slang.
[6]
This obsolete British slang is likely to be known to very few, if
any, South Africans, even those whose first language is English.
Those familiar with cocktails may know that ‘twist’ can
mean a curled piece of citrus peel though the word would not
be so
used in isolation – one would speak of ‘a twist of lime
peel’ etc.
[7]
‘Twist’
in this sense would at most create a mental association between the
word and a refreshing or exotic drink.
[8]
It is
probable that for most South African consumers the word ‘Twist’
as applied to Atlantic’s beverages is an
arbitrary brand name
without meaning. Like a made-up word, a common word which is
arbitrary when applied to a particular product
is the exemplar of a
mark inherently capable of distinguishing.
[8]
Such words are to be contrasted with descriptive words. It is a
common feature of trade mark legislation that purely descriptive
marks may not be registered. The reason is that other traders should
not be barred from using them in relation to their goods.
Lord Parker
in
W
& G Du Cros
[9]
formulated the
test as being ‘whether other traders were likely, in the
ordinary course of their business and without any
improper motive, to
desire to use the same mark . . . in connection with their goods’.
More
succinctly, in order for a word to be really distinctive of a
proprietor’s goods it ‘must generally speaking be
incapable of application to the goods of anyone else’ (see this
court’s decision in
On-line
Lottery
[10]
quoting with approval a dictum of Lord Russell in
Shredded
Wheat
[11]
).
For as
Lord
Simonds said in
Copper
Works
:
[12]
‘
Paradoxically
perhaps, the more apt a word to describe the goods of a manufacturer,
the less apt it is to distinguish them: for
a word that is apt to
describe the goods of A, is likely to be apt to describe the similar
goods of B.’
[9]
In
the High Court of Australia, Kitto J in
Clark
Equipment
[13]
expressed the same idea well when he said that
the
question whether a mark is adapted to distinguish should be tested
‘
by
reference to the likelihood that other persons, trading in goods of
the relevant kind and being actuated only by proper motives
- in the
exercise, that is to say, of the common right of the public to make
honest use of words forming part of the common heritage,
for the sake
of the signification which they ordinarily possess - will think of
the word and want to use it in connexion with similar
goods in any
manner which would infringe a registered trade mark granted in
respect of it.’
[10]
The
approach in
Du
Cros
and
Clark
Equipment
was
recently affirmed by the High Court of Australia in
Cantarella
[14]
where
the following was stated:
[15]
‘
When
the "other traders" test from
Du
Cros
is applied to
a word . . . the test refers to the legitimate
desire of other traders to use a word which is
directly descriptive
in respect of the same or similar goods. The test does not encompass
the desire of other traders to use words
which in relation to the
goods are allusive or metaphorical.’
[11]
As I have said, ‘twist’ is not
descriptive of Atlantic’s beverages. No trader, acting
legitimately and not wishing
to take advantage of the reputation of
Atlantic’s brand, would wish to use the word ‘twist’
in relation to its
soft drinks. To adapt Kitto J’s words, such
a trader could not honestly say that he desired to apply the word
‘twist’
to his soft drinks for the sake of the
signification which the word ordinarily possesses. If ‘twist’
has any meaning
as applied to soft drinks, it is ‘allusive or
metaphorical’.
[12]
The present
case is readily distinguishable from one of the authorities to which
we were referred,
Pepkor
Retail
,
[16]
where this court found that the mark THE LOOK in relation to apparel
was not inherently capable of distinguishing the proprietor’s
goods. This was because of a factual finding that in the fashion
retail industry the expression ‘the look’ carried
‘the
universal ordinary meaning of fashionable or trendy clothing or
outfits’ rather than being a ‘covert or
skilful allusion’
to such goods.
[17]
[13]
I am thus
satisfied that the mark TWIST, as applied to soft drinks, is
inherently capable of distinguishing Atlantic’s beverages
from
those of other producers and that its registration was not precluded
by virtue of its being purely descriptive. It is thus
unnecessary to
explore whether possible deficiencies when the marks were registered
have been cured by subsequent use. I content
myself by saying that
there is overwhelming evidence that Atlantic and its predecessors
have used TWIST widely as a trade mark
on millions of cans and
bottles of soft drinks and through substantial advertising
expenditure. The following statement by Harms
JA in
Groupe
LFE
[18]
concerning
the use of the SWARTLAND mark in relation to wine could equally be
applied to the present case:
‘
The
Winery’s wines have been known for many decades as Swartland
wines and by no other name (save for the use of the non-distinctive
‘Winery’ suffix). No other wine has been sold under that
name. How, under these circumstances, it can be suggested
that the
mark did not become distinctive is impossible to fathom.’
[14]
The courts below were thus correct in concluding
that PepsiCo’s expungement application should fail.
Registration
of PepsiCo’s marks
[15]
PepsiCo’s proposed marks cannot be
registered if PepsiCo has no bona fide claim to proprietorship
thereof (s 10(3)).
And in terms of s 10(14), registration
of a mark is prohibited if it 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’.
[16]
These are the two grounds on which Atlantic
opposed registration of the marks. In view of my conclusion on
s 10(14) it is unnecessary
to consider the scope and
applicability of s 10(3).
[17]
The proposed mark PEPSI TWIST is not identical to
Atlantic’s registered marks. The question is whether there it
is sufficient
similarity to create a likelihood of deception or
confusion.
[18]
Since
similar language is used in s 34(1) in relation to infringement,
cases dealing with infringement can be consulted for
guidance. In
Yuppiechef
[19]
this court summarised the test thus:
‘
What
is required is a value judgment on the question of the likelihood of
deception or confusion based on a global appreciation
of the two
marks and the overall impression that they leave in the context of
the underlying purpose of a trademark, which is that
it is a badge of
origin. 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.’
[19]
There is an
inter-relationship between the similarity of the marks and the
similarity of the goods to which the marks apply. Lesser
similarities
in the marks might be counter-balanced by stronger similarities in
the goods but ultimately the question remains whether
in combination
there is a likelihood of confusion or deception.
[20]
In regard specifically to the goods to which the respective marks are
applied, relevant considerations will include (i) the uses
of the
respective goods; (ii) the users of the respective goods;
(iii) the physical nature of the goods; and (iv) the
trade
channels through which the goods respectively reach the market .
[21]
[20]
In testing
for deception and confusion, courts will usually identify the
features, if any, of the respective marks which are dominant.
If they
share a dominant feature, there is ordinarily a greater likelihood of
deception or confusion. As recently affirmed by this
court, in the
global assessment
of
the marks ‘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’.
[22]
[21]
Here the goods to which the competing marks would
be applied are identical. If the proposed marks were registered,
PepsiCo would
be entitled to use them in relation to carbonated
beverages with similar flavours to Atlantic’s carbonated
beverages. From
the proposed device mark one can infer that PepsiCo
intends to apply the proposed marks to a lemon-flavoured carbonated
beverage.
At any rate, if the marks were registered, their notional
fair and reasonable use would include use in relation to a
lemon-flavoured
carbonated beverage. Such a product might be
practically indistinguishable, in taste, from Atlantic’s Lemon
Twist.
[22]
The soft drinks to which PepsiCo would be
entitled to apply the proposed marks would be directed at the same
consumers who buy Atlantic’s
soft drinks. The trade channels,
too, would be the same – supermarkets, cafes, convenience
stores, retail outlets, bars and
restaurants. In some instances the
beverages might be displayed in close proximity to each other; in
other instances an outlet
might carry the one product but not the
other or might display them apart from each other.
[23]
As to similarity in the marks, PepsiCo’s
proposed marks will incorporate the whole of Atlantic’s mark
TWIST and part
of Atlantic’s marks LEMON TWIST and DIET TWIST.
In the latter two instances TWIST is the dominant and distinctive
feature,
LEMON and DIET being purely descriptive. In the case of
LEMON TWIST there is an endorsement on the registration that the mark
gives
no right to the exclusive use of the word ‘lemon’
in its ordinary signification and apart from the mark. Although there
is no similar disclaimer for DIET TWIST, Atlantic could not claim a
monopoly on the word ‘diet’ in relation to beverages.
[24]
PepsiCo’s proposed marks thus incorporate
the sole distinctive feature of Atlantic’s marks. Does the
insertion of PEPSI
before TWIST avoid the confusion which would
undoubtedly arise without the insertion? Aurally, the two elements
have equal prominence.
In their barest written form, PEPSI and TWIST
have equal prominence (they each comprise five letters) but in fair
and reasonable
notional use PepsiCo could choose to give TWIST
greater visual prominence than PEPSI. In the device mark, TWIST is
more prominent
than PEPSI – the font is larger and fancier. And
in fair and reasonable notional use Atlantic could depict its mark
TWIST
in much the same way as the same word appears in PepsiCo’s
proposed device mark and in any of the ways in which PepsiCo might
choose to depict its proposed word mark.
[25]
The
appellant’s contention that PEPSI is the dominant component
rests on an assertion that PepsiCo has an existing mark PEPSI
which
is so widely known that consumers will instantly notice and remember
it (I shall call this conceptual prominence). Whether,
in making the
comparison for purposes of s 10(14), we may have regard to the
existence and reputation of PEPSI as a registered
mark is doubtful.
The appellant’s own counsel opened the appeal by submitting
that in applying s 10(14) one must simply
place the marks side
by side in the market place; the court is not entitled to have regard
to extraneous matter arising from the
actual use of the marks, though
the comparison must take account of all fair and normal uses to which
the proprietors might notionally
put their marks. Although counsel
was making this point in support of an argument that in the
opposition proceedings we should
disregard evidence of Atlantic’s
use of the TWIST marks, the argument, if sound, applies equally to
extraneous matter such
as the existence and reputation of the PEPSI
mark. That such extraneous matter should be disregarded was certainly
the view of
Harms J writing for the full court in
Upjohn
Company
[23]
and he returned to this question, without finally deciding it, in
Cowbell.
[24]
[26]
We were not fully addressed on the question and
it is unnecessary to decide it because on either approach the result
is the same.
If, in line with
Upjohn Company
,
one were to disregard the existence and reputation of PEPSI as an
existing mark, one could not say that PEPSI enjoys greater conceptual
prominence than TWIST in the proposed marks. Because TWIST in this
context is non-descriptive, it has the same ability as the made-up
word PEPSI to be memorable and distinguishing. As I have said, in
fair and reasonable use PepsiCo could choose to give more prominence
to TWIST than PEPSI. In the proposed device mark, TWIST is visually
more prominent than PEPSI though this prominence may be offset
to
some extent by the non-verbal components of the device.
[27]
Assuming,
on the same basis, that one must ignore the evidence of the actual
use by Atlantic and its predecessors of the TWIST marks,
what one
cannot ignore is that TWIST is on the register and is thus recognised
as being distinctive of Atlantic’s beverages.
[25]
The incorporation of the sole distinctive feature of Atlantic’s
TWIST marks into the proposed PEPSI TWIST marks as an element
with no
less prominence than the word PEPSI, and in relation to identical
products, is such as to create a likelihood of deception
or
confusion.
[28]
If, on the other hand, the court may take into
account the existence and reputation of the PEPSI mark, this means no
more than that
the average South African consumer would take it for
granted that a beverage called Pepsi Twist is a product from the same
stable
as other Pepsi beverages. While the incorporation of PEPSI
into the proposed mark would avoid creating in the minds of ordinary
consumers the mistaken belief that Pepsi Twist was produced by a
party independent of the Pepsi stable, consumers might be deceived
into thinking that, or be confused about whether, the producer of
beverages under the name Twist (ie Atlantic) is part of the Pepsi
stable. The greater the similarity in the ways in which the producers
chose to depict TWIST on their products, the greater the
likelihood
of this confusion. I have already observed that in fair and
reasonable notional use the parties might depict TWIST in
similar
styles. Having regard to actual use, there is already some similarity
in the way in which Atlantic depicts TWIST on its
products and the
manner in which PepsiCo depicts TWIST in the proposed device mark –
in each case the word slants upwards
from left to right and the
letter ‘i’ is not capitalised and has a dot above it.
[29]
Another relevant consideration is that PEPSI
would be regarded by most consumers as a primary identifying mark of
all PepsiCo’s
products. Where a second word is added to a
primary mark in order to distinguish the producer’s products
from each other,
the second word has a unique and important function
in identifying the product – eg Pepsi-Cola, Pepsi Zero, Pepsi
Max, Pepsi
Wild Cherry and (if it is registered) Pepsi Twist. In the
case of primary and sub-brands, the sub-brand is important to
consumers.
They will not look for Pepsi products in general but for a
particular product. Because Pepsi-Cola was the first and probably
still
is the most widely sold Pepsi beverage, the word ‘Pepsi’
on its own would probably be understood as referring to Pepsi-Cola.
For other Pepsi products, the emphasis would fall on the sub-brand,
in the present case the TWIST component.
[30]
It is not
necessary to find that all or most consumers would be confused. It is
enough that a substantial number of them are likely
to be confused.
And the confusion need not be a settled belief that Pepsi is the
source of all beverages under the name Twist.
It is sufficient that
uncertainty on that score would be created in the minds of
consumers.
[26]
In that regard
one must remember that the universe of consumers for carbonated soft
drinks is large: it includes persons of all
ages, the rich and the
poor; the sophisticated and unsophisticated. Soft drinks are often
bought on a whim. Consumers would not
ordinarily subject the bottle
or can to careful scrutiny.
[31]
One should also bear in mind that consumers will
not always have the bottles or cans in front of them when choosing
their soft drink.
In a bar or restaurant setting consumers would
order beverages from a bar attendant or waiter. Because consumers are
likely to
equate a ‘Pepsi’ with the well-known Pepsi-Cola
beverage, a consumer wanting a Pepsi Twist might drop ‘Pepsi’
and simply ask for a ‘Twist’. I can envisage that a bar
attendant or waiter might, in response to a request for a ‘Twist’,
bring the customer either a Pepsi Twist or a Lemon Twist.
[32]
The
respondent’s counsel referred us to
Medion
,
[27]
a judgment of the European Court of Justice (ECJ), which is
particularly apposite. Medion was the registered proprietor of the
trade mark LIFE for leisure electronic devices. It brought
infringement proceedings in Germany against Thomson for using the
mark
THOMSON LIFE in relation to leisure electronic devices. The
German court referred the interpretation of Article 5(1)(b) of the
European Union’s Trade Mark Directive to the ECJ. Article
5(1)(b) is similar to our s 10(14). The ECJ distilled the
essence of the referring court’s question as being:
‘
whether
Article 5(1)(b) . . .
is
to be interpreted as meaning that where the goods or services are
identical there may be a likelihood of confusion on the part
of the
public where the contested sign is composed by juxtaposing the
company name of another and a registered mark which has normal
distinctiveness and which, although it does not determine by itself
the overall impression conveyed by the composite sign, has
an
independent distinctive role therein.’
[33]
After
setting out the general principles on which a comparison should be
made for purposes of Article 5(1)(b) – very similar
to the
principles applied in this country
[28]
– the ECJ continued (citation of authority omitted):
[29]
‘
However,
beyond the usual case where the average consumer perceives a mark as
a whole, and notwithstanding that the overall impression
may be
dominated by one or more components of a composite mark, it is quite
possible that in a particular case an earlier mark
used by a third
party in a composite sign including the name of the company of the
third party still has an independent distinctive
role in the
composite sign, without necessarily constituting the dominant
element.
In
such a case the overall impression produced by the composite sign may
lead the public to believe that the goods or services at
issue
derive, at the very least, from companies which are linked
economically, in which case the likelihood of confusion must be
held
to be established.
The
finding that there is a likelihood of confusion should not be subject
to the condition that the overall impression produced
by the
composite sign be dominated by the part of it which is represented by
the earlier mark.’
[34]
The
respondent’s counsel also referred us to a decision of an
appeal court in Paris
[30]
where the court found in favour of the proprietor of the registered
mark E.ON in its opposition to the registration of a proposed
mark
HYUNDAI EON. The appeal court agreed with the earlier proprietor that
the HYUNDAI element of the proposed mark had ‘no
defined
semantic value which would be added to that of the brand EON to form
a conceptually different whole with regard to the
previous brand
E.ON’. The same conclusion, I may add, was reached in the
United Kingdom in proceedings between the same parties
before the
Registrar of Trade Marks
[31]
where the Hearing Officer spoke of the trend towards the use of
sub-brands (in that case HYUNDAI as the primary brand and
EON as the
sub-brand) and said that
the
average consumer would assume that the identical and similar goods at
issue came from undertakings which were economically linked.
[35]
The exposition in
Medion
is consistent with the principles of our law
and fortifies me in the conclusion I have reached on the s 10(14)
issue. I thus
consider that the full court was right to uphold
Atlantic’s appeal against the dismissal of its opposition to
the registration
of PepsiCo’s marks.
Conclusion
[36]
Accordingly the following order is made:
The
appeal is dismissed with costs, including the costs of two counsel.
______________________
OL
Rogers
Acting
Judge of Appeal
Appearances
For the Appellant
R Michau SC (and with him I
Joubert)
Instructed by
Spoor & Fisher, Centurion
c/o Phatshoane Henney Attorneys, Bloemfontein
For the Respondent
P Ginsberg SC (and with him F
Southwood)
Instructed by
Adams & Adams, Pretoria c/o
Honey Attorneys, Bloemfontein
[1]
Section 32
of the
Trade Marks Act 194 of 1993
.
[2]
Act 194 of
1993.
[3]
The New
Shorter Oxford English Dictionary.
[4]
The Oxford English
Dictionary
2 ed (1989).
[5]
Partridge
Dictionary
of Slang and Unconventional English
5
ed (1961). This remained the recordal in the last edition (8
ed,
1984). The entry was omitted altogether in Dalzell & Victor
The
New Partridge Dictionary of Slang and Unconventional English
(2006).
[6]
See
The
Oxford Dictionary of Slang
(1998)
and Duckworth’s online
Dictionary
of Slang: English Slang and Colloquialisms Used in the United
Kingdom
.
[7]
This is
borne out by the illustrative quotations given in the unabridged
OED
.
[8]
See eg
Orange
Brand Services Ltd v Account Works Software (Pty) Ltd
[2013]
ZASCA 158
para 15.
[9]
Registrar
of Trade Marks v W & G Du
Cros
Ltd
[1913]
UKHL 588
;
[1913] AC 624
at 634, cited with approval inter alia in
Joshua
Gibson Ltd v Bacon
1927
TPD 207
at 203 and
Distillers
Corporation (SA) Ltd v Stellenbosch Farmers Winery Ltd
1979
(1) SA 532
(T) at 536G-H.
[10]
On-line
Lottery Services (Pty) Ltd v National Lotteries Board & another
[2009]
ZASCA 86
;
2010 (5) SA 349
(SCA) para 16.
[11]
Shredded
Wheat Co Ltd v Kellogg Co of Canada Ltd
[1938]
55 RPC 125 (PC).
[12]
Copper Works application
(1953) 71 RPC 150
at 153.
[13]
Clark
Equipment Co v Registrar of Trade Marks
[1964]
HCA 55
;
(1964) 111 CLR 511
para 5.
[14]
Cantarella
Bros
Pty Limited v Modena Trading Pty Limited
[2014]
HCA 48
;
(2014) 254 CLR 337
, particularly paras 70-71.
[15]
Para 59.
[16]
Pepkor Retail (Pty) Ltd v
Truworths Ltd
[2016] ZASCA
146.
[17]
Para 17.
[18]
Groupe LFE (SA) (Pty) Ltd v
Swartland Winery Ltd & another
[2011]
ZASCA 4
para 16.
[19]
Yuppiechef
Epson Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd
[2016]
ZASCA 118
para 26.
[20]
Mettenheimer & another
v
Zonquasdrif
Vineyards CC & others
2014 (2) SA 204
(SCA) para 11.
[21]
Mettenheimer
para
13.
[22]
Distell Ltd v KZN Wines and
Spirits CC
[2016] ZASCA 18
para 10.
[23]
The
Upjohn Company v Merck & another
1987
(3) SA 221
(T) at 226H-227D, dealing with s 17(1) of the Trade
Marks Act 62 of 1963, the equivalent provision of the current
s 10(14).
[24]
Cowbell AG v ICS Holdings
Ltd
2001 (3) SA 941
(SCA)
para 17.
[25]
Danco Clothing (Pty) Ltd v
Nu-Care Marketing Sales and Promotions (Pty) Ltd & another
[1991] ZASCA 121
;
1991
(4) SA 850
(A) at 861G-H;
Lawsa
2 ed vol 29
para 110
.
[26]
Roodezandt
Ko-operatiewe Wynmakery Ltd
v Robertson Winery (Pty)
Ltd & another
[2014]
ZASCA 173
para 6;
Shimansky
& another v Browns the Diamond Store (Pty) Ltd
[2014]
ZASCA 214
para 12.
[27]
Medion AG v Thomson
multimedia Sales Germany & Australia GmbH
[2005]
EUECJ C-120/04.
[28]
Paras 23-29.
[29]
Paras 30-32.
[30]
E.ON AG
v Hyundai Motor Company
Appeal Court of Paris Division 5 Case 12/05489, 22 December 2011.
The respondent's counsel provided us with a sworn translation
of the
French decision.
[31]
In re
Hyundai Motor Corporation
Appn
2577601 per Hearing Officer, Mr CJ Bowen,14 November 2012; upheld on
appeal to the Appointed Person, Ms A Michaels, Appeal
0-313-13, 1
August 2013.