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[2019] ZAKZDHC 30
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Golden Fried Chicken (Pty) Ltd v Oh My Soul (Pty) Ltd t/a Oh My Soul Cafe (D1739/2019) [2019] ZAKZDHC 30; 2019 BIP 125 (KZD) (25 March 2019)
IN
THE HIGH COURT OF SOUTH AFRICA
KWAZULU-NATAL
DIVISION,
DURBAN
CASE NO: D1739/2019
In
the matter between:
GOLDEN
FRIED CHICKEN (PTY)
LTD APPLICANT
and
OH MY SOUL (PTY) LTD
t/a
OH MY SOUL
CAFE RESPONDENT
ORDER
The application is
dismissed with costs.
JUDGMENT
D.
Pillay J
[1]
The applicant, Golden Fried Chicken (Pty)
Ltd sought an urgent interdict against the respondent, Oh My Soul
(Pty) Ltd t/a Oh My
Soul Café, to restrain the latter from
infringing its registered trade mark in terms of section 34(1)
(a)
and
(c)
of
the Trade Marks Act 194 of 1993 (‘the Act’). The
application was brought urgently. Kruger J certified it as urgent
and
directed the parties to argue the merits of the matter on the
adjourned date. After I became aware of the directive, it was
not
open to me to revisit the question of urgency. Consequently, I
approach the matter on its merits. Facts material to the dispute
were
uncontested. Neither were the general principles of law. What was in
issue was the application of the law to the facts. More
specifically,
was the respondent’s use of its marks likely to deceive or
cause confusion?
[2]
It was common cause that:
(a)
the applicant owns the trade marks ‘Bless
My Soul’, ‘Soul’, ‘Soul Kitchen’, ‘Soul
Food’,
‘Soul Slaw’, ‘Licken’, ‘Soul
Food’, ‘Original Chicken’ and ‘Soul Food’
various classes of registration in the Act. The applicant wants the
respondent to remove the trade marks ‘Oh My Soul’,
‘Oh
My Soul Café’, ‘Licken’, ‘Soul
Food’, ‘Soul Food Sunday’, ‘Soul
Salad’
and ‘Soul Salads from all of its websites and materials.
(b)
the respondent used ‘Oh my Soul (sf)
without the authority of the applicant, but with a cow device mark.
(c)
the respondent changed ‘Licken’
to ‘Vicken’ and ‘soul salad’ to ‘sacred
salad’ after
receiving the applicant’s demand .
[3]
Section 34(1)
(a)
of the
Trade Marks Act 194 of 1993
provides:
‘
The
rights acquired by registration of a trade mark shall be infringed
by—
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;. . .’
[1]
[4]
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[2]
set
the test for establishing the likelihood of confusion or deception as
follows:
‘
In
an infringement action the
onus
is on the plaintiff to show the probability or likelihood of
deception or confusion.
It is not
incumbent upon the plaintiff to show that every person interested or
concerned (usually as customer) in the class of goods
for which his
trade mark has been registered would probably be deceived or
confused. It is sufficient if the probabilities establish
that a
substantial number of such persons will be deceived or confused. The
concept of deception or confusion is not limited to
inducing in the
minds of interested persons the erroneous belief or impression that
the goods in relation to which the defendant's
mark is used are the
goods of the proprietor of the registered mark, ie the plaintiff, or
that there is a material connection between
the defendant's goods and
the proprietor of the registered mark; it is enough for the plaintiff
to show that a substantial number
of persons will probably be
confused as to the origin of the goods or the existence or
non-existence of such a connection.
The
determination of these questions involves essentially a comparison
between the mark used by the defendant and the registered
mark and,
having regard to the similarities and differences in the two marks,
an assessment of the impact which the defendant's
mark would make
upon the
average type of customer who
would be likely to purchase the kind of goods to which the marks are
applied
. This notional customer must be
conceived of as a person of average intelligence, having proper
eyesight and buying with ordinary
caution. The comparison must be
made with reference to the sense, sound and appearance of the marks.
The marks must be viewed as
they would be encountered in the market
place and against
the background of
relevant surrounding circumstances.
The
marks must not only be considered side by side, but also separately.
It must be borne in mind that the ordinary purchaser may
encounter
goods, bearing the defendant's mark, with an imperfect recollection
of the registered mark and due allowance must be
made for this. If
each of the marks contains a main or dominant feature or idea the
likely impact made by this on the mind of the
customer must be taken
into account. As it has been put, marks are remembered rather by
general impressions or by some significant
or striking feature than
by a photographic recollection of the whole. And finally,
consideration must be given
to the
manner in which the marks are likely to be employed
,
as for example, the use of name marks in conjunction with a generic
description of the goods.’ (my underlining)
[5]
Deception
or confusion would exist if the person is deceived into believing
that there is a material connection between the goods
or services
bearing the respondent’s mark and the applicant’s trade
mark or when a person is confused about whether
any such connection
exists.
[3]
The test is
objective.
[4]
The nature of the
market for the goods is an important consideration to enable to court
to ‘notionally transport itself into
the shoes of the potential
customer.’
[5]
Determining
objectively how the marks would be perceived by the consumer is a
major consideration for the court.
[6]
Importantly, the offending mark must be considered in context, not in
isolation.
[7]
The manner in
which the applicant uses its registered marks is not decisive but how
it can use its mark fairly is relevant.
[8]
The applicant’s notional use must be compared with the
respondent’s actual use of its mark.
[9]
Matters extraneous to the mark itself are irrelevant to determining
an infringement.
[10]
The test
is a mark for mark comparison which, consequently, would exclude the
respondent’s cow device.
[11]
[6]
To
establish an infringement under
s 34(1)
(c)
the
applicant must prove that the respondent’s use of its identical
or similar mark, used in the course of trade will most
likely take
unfair advantage of or be detrimental to the distinctive character or
repute of the applicant’s registered mark,
which is well known
in the Republic.
[12]
The aim
of subsection (c) is to prevent the dilution of the value of the
applicant’s registered marks by protecting the reputation
of
the distinctive character of the mark.
[13]
The infringing mark must be similar to the registered mark.
Interpreting the word ‘similar’ in
s 34
is contextual and
should not be too wide.
[14]
An
overly extensive interpretation might create ‘an unacceptable
monopoly to a proprietor of a trade mark and thus unduly
stultify
freedom of trade’, a consequence that the legislature could not
have intended.
[15]
[7]
In
this case, both the applicant and the respondent provide restaurant
services selling pre-prepared meals. The applicant alleges
that the
respondent is misappropriating and prejudicing its goodwill by having
recently started to use its marks, which could in
future be
confusingly and deceptively similar to the applicant’s
statutorily protected marks. This would cause damage that
would be
extremely difficult if not virtually impossible to quantify. The
applicant’s trade mark is an indication of origin,
which
identified a unique source of its products.
[16]
[8]
The applicant described at length its
Chicken Licken business, an enterprise approaching R3 billion, second
only to
Kentucky Fried Chicken
(KFC) in the
fast food restaurant sector. Its Chicken Licken business incorporates
its entire operation including all its stores.
In substantiation, the
applicant continued:
’
31
… A brand is more than a trade mark. It is a cocktail of
meanin
g
associations which communicate meaning to consumers when they
see the mark. These associations are established through association
with a particular business and/or product and significant
advertisements. The meaning the
SOUL
brand communicates to
Applicant’s consumers is of African cool, a pride in an
Afrocentric heritage typified by success against
adversity, a rising
above racial prejudice and stereotypes where “blackness”
is not a shortcoming but a positive advantage.
32
This sense of self validity was typified in the 1960’s in the
United States by the civil rights movement, Martin Luther
King,
Malcom X and the great “soul” singing artists such as
Percy Sledge, Isaac Hayes, Barry White, Otis Redding, Whitney
Houston, Dusty Springfield and Ertha Kitt. The “Afro”
hairstyles of the time also featured heavily. In movies it was
celebrated by the film
SHAFT
and the Afro-American character
“Linc Hayes” in the hit television series, the Mod Squad
(who was played by Clarence
Williams III).
33
The badge of this identity in the 1960’s and 1970’s was a
certain conception of “cool” identified in
many ways –
by ever larger “Afro” hairdos, prominent jewellery, dark
glasses, extreme fashions in clothing and
cars. It has direct
relevance to South Africa and has been a phenomenal brand image
success for my company. It is an icon of the
entire
CHICKEN LICKEN
experience, a very distinctive, unique brand image for my company and
its business. It serves as a stark contrast to the brand
image of
Applicant’s prime competitor, Kentucky Fried Chicken.’
(
sic
)
[9]
Although two out of three words in the
marks ‘Oh My Soul’ and ‘Bless My Soul’ are
common, the context in
which each is used differs markedly. The
respondent’s mark characterises its business as a lifestyle
restaurant supplying
goods and services to vegans. Veganism is a
philosophy premised on the belief that animals have souls. Hence
veganism is a deep
commitment to protecting animals by not eating
meat or other products derived from animals.
[10]
Conceptually, the word ‘soul’
has different meanings for both litigants and is used in contexts
that are diametrically
opposite to each other. The applicant
and its various trade marks are well known in the Republic for
chicken meals and meat
products. They are philosophically,
ideologically and in reality the very antithesis of veganism. Vegans
are discerning consumers
most unlikely to confuse or associate ‘Oh
My Soul’ with the applicant’s conception of ‘SOUL’
in whatever
form its trade marks appear.
[11]
If the applicant wishes to trade as a vegan
food service, even if it uses ‘Bless My Soul’ as its
trade mark, it will
have a hard row to hoe in convincing vegans that
its meals are genuinely uncontaminated by meat products. Vegans would
be anxious
if not revulsed by the mere possibility of contamination.
Their revulsion would not stop there. Ideologically opposed to
killing
animals, vegans would consciously avoid patronising the
applicant and other meat services. Committed to veganism, the
respondent
is likely to distance itself as far as possible from the
applicant and like products and services. The marks ‘Licken’
and ‘Vicken’ are merely a play on chicken and vegan to
describe the product which, for vegans, would mean a chicken
substitute.
[12]
Veganism is not known for the ostentation associated with
‘African cool’, ‘ever larger “Afro”
hairdos,
prominent jewellery, dark glasses, extreme fashions in
clothing and cars.’
In as much as the
applicant strives to distinguish itself as unconventional relative to
the establishment image of the colonel in
KFC, so too does the
respondent seek to distinguish itself from the applicant and other
meat producing services. In the circumstances,
the applicant fails to
prove that the respondent seeks to adopt its badge of identity.
[13]
And if, indeed, the applicant’s ‘
SOUL
’ brand
has the remarkable capacity to communicate to its consumers ‘African
cool, a pride in an Afrocentric heritage
typified by success against
adversity, a rising above racial prejudice and stereotypes where
“blackness” is not a shortcoming
but a positive
advantage’ then in the spirit of
ubuntu
, which is the
South African conception of humanity and Africanism, the applicant
should, in the national interest, encourage rather
than restrain the
use of ‘
SOUL’
to mend our social fractures and
fissures. ‘Success against adversity’ also means allowing
small businesses to survive
onslaughts by large, economically
powerful corporates like the applicant.
[14]
The application is dismissed with costs.
D. Pillay J
Judge of the High Court
of KwaZulu-Natal
APPEARANCES
Counsel
for the plaintiff: R
Michau
SC
Instructed
by: Ron Wheeldon Attorneys
c/o
Tracy Ludwig Attorneys
Ref:
LR001011/TL
Tel:
(082) 898 6136
Email:
tracy@ludwiglaw.co.za
Counsel
for the respondent: P.P
Ferreira
Instructed
by: PFT Burger Attorneys
c/o
Johan Jooste
Ref:01/B847/009/SJ
Date of Hearing: Monday
11 March 2019
Date of Judgment: 25
March 2019
[1]
Joubert (ed)
The
Law of South Africa
(2 ed) vol 29 para
210-211;
Bata
Ltd v Face Fashions CC
2001 (1) SA 844
(SCA) 849-850.
[2]
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984
(3) SA 623
(A) at 640G-641D; [1984] 2 All SA 366 (A)
[3]
29 Lawsa 2 ed para 211
[4]
29 Lawsa 2 ed para 211;
Puma
AG Rudolf Dassler Sport v Global Warming (Pty) Ltd
2010 (2) SA 600
(SCA) para 11.
[5]
Kraft
Foods Inc v All Joy Foods (Pty) Ltd
1999
BIP 122 at 130A; 29 Lawsa 2 ed para 211;
[6]
Adidas
AG v Pepkor Retail Ltd
(187/12)
[2013] ZASCA 3
(28 February 2013) para 14-15
[7]
Verimark
(Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd
2007 (6) SA 263
(SCA) para 9; Société des
Produits
Nestlé SA v International Foodstuffs
[2015] 1 All SA 492
(SCA) para 43; 29
Lawsa
2 ed para 211
[8]
Adidas
Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd
1976 (1) SA 530
at 534-535;
Plascon-Evans,
above, at 641E-I;
Bata
, above,
2001 (1) SA 844
(SCA) para
7
[9]
Plascon-Evans
,
above, at 641E-I; 29
Lawsa
2 ed para 212
[10]
Adidas
Sportschuhfabriken
,
above, at 535H
[11]
Adidas
Sportschuhfabriken,
above,
at 535E-536A;
Verimark,
above,
para 9
[12]
29 Lawsa 2 ed para 224
[13]
Verimark,
above,
para 13-14
[14]
Bata,
above,
para 14; 29
Lawsa
2 ed para 225
[15]
Bata
,
above, para 14
;
29
Lawsa
2 ed para
225
[16]
Founding Affidavit
para
22.