IN THE HIGH COURT OF SOUTH AFRICA
(WESTERN CAPE DIVISION, CAPE TOWN)
REPORTABLE
CASE NO: 7243/2021
In the matter between:
SOUTHERN LIQUEUR COMPANY LIMITED Applicant
And
NOBLE SPIRITS (PTY) LTD Respondent
Coram: Parker, AJ
Matter heard on: 05 August 2024
Judgment delivered electronically on: 21 November 2024
______________________________________________________________________
JUDGMENT
PARKER, AJ:
Introduction
[1] The Applicant is a producer of alcoholic beverages including the AMARULA
Cream Liqueur. It is a wholly owned subsidiary of South African Distillers and Wines
(SA) Limited, which in turn, is a wholly owned subsidiary of Distell Group Limited. Distell
Group Limited is the ultimate holding company of a substantial number of subsidiary
companies, including Distell Limited ( “Distell) which is the main trading company within
the group, responsible for the manufacturing, marketing and distribution of the products
of all the subsidiary companies in the group, including that of the Applicant. Distell is an
entity in South Africa engaged in the production and marketing of high -quality wines,
spirits, and ready-to-drink alcoholic beverages, which include liqueur products.
[2] The Applicant, as the proprietor of multiple trade mark registrations for the mark
AMARULA or marks incorporating AMARULA seeks the intervention of this court to
restrain the R espondent from infringing its rights, which have been acquired through
statutory provisions and the common law.
[3] The Respondent trades in the liquor and retail products industry including cream
liqueur. The Respondent intends to commence the production of a marula cream liqueur
under the trade mark AFRULA and utilizing the AFRULA getup. The Respondent has
indicated that the product is currently not available in the South African market.
[4] As a result of the Respondent having filed its application for the registration of the
trade mark “AFRULA” under registration number 2015/20585 in class 33 forced the
Applicant to seek interdictory and ancillary relief against Respondent, based on the
following grounds:
4.1 trade mark infringements in terms of the provisions of section 34(1)(a) and
34(1)(c) of the Trade Marks Act, No 194 of 1993, ("the Act") and
4.2 passing-off at common law in respect of the use of the mark AFRULA and
the associated AFRULA get up.
4.3 consequential relief in the form of delivery-up, and
4.4 an enquiry into damages or a reasonable royalty in terms of section 34(3)
of the Act in terms of the common law.
[5] It is the Applicant’s case that:
5.1 the trade mark AFRULA is confusingly and/or deceptively similar to the
Applicant’s registered trade marks A MURULA and AMARULA, is likely to
result in deception and confusion amongst members of the public,
between goods bearing the parties’ respective trade marks;
5.2 any use made by the Respondent of the mark AFRULA is likely to exploit,
take unfair advantage of, or be detrimental to the distinctive character and
reputation of the Applicant’s well-known AMARULA trade mark; and/or
5.3 the AFRULA getup is confusingly similar to the Applicant’s AMARULA
getup, which is likely to deceive or cause confusion amongst th e public,
leading them to believe that the AFRULA product originates from the
Applicant, or associated with the Applicant.
[6] In South Africa, Applicant’s proprietorships of the trade mark collectively referred
to as the AMARULA trade marks are:
6.1 trade mark registration number 1980/03512 " AMURULA" in class 33 in
respect of “alcoholic beverages”.
6.2 trade mark registration number 1984/02496 AMARULA in class 33 in
respect of “alcoholic beverages (except beer)”.
6.3 trade mark registration number 1989/05113 AMARULA label in class 33
in respect of “alcoholic beverages (except beer)”.
6.4 trade mark registration number 2016/27262 AMARULA label in class 33
in respect of “alcoholic beverages (except beer) endorsed whereby the
trade mark shall give no right to the exclusive use of the “ elephant device”
and to the use of the “marula fruit”.
[7] During April 2019 A pplicant learnt that the R espondent applied to register the
AFRULA trade mark in the same class as its mark which resulted in a letter of demand
addressed to the Respondent dated 10 May 2019 and these proceedings.
[8] On both products, the parties’ respective trade marks AMARULA and AFRULA
appear prominently.
[9] Furthermore, on the AMARULA produ ct, the elephant themed device appears
directly below the A MARULA trade mark. On the R espondent’s label, there appears to
what the Applicant sees as a side profile of an elephant head or as Respondent puts it
“African woman ”. This would not be immediately apparent to the consumer upon
encountering the R espondent’s product. The Applicant contends that a consumer will
upon first impression be confronted with the mark AFRULA, combined with an elephant
device used in relation to a liqueur product, against a bac kground of a distinctly African
motif.
[10] As a result of this impression th e Applicant’s case is that the R espondent has
essentially replicated the primary components of the Applicant’s African -themed
AMARULA get-up, namely the AMARULA mark and the ELEPHANT device.
[11] For a passing-off cause of action, the comparison between the respective marks
are confined to the trade mark that established a reputation, as well as the getup / label
used for the products, as opposed to the trade mark and getup / la bel used for the
alleged infringing product.
[12] The Respondent has stated its intention to commence production and sale of a
marula cream liqueur under the name and style AFRULA in South Africa, subsequent to
the registration of the mark AFRULA in vario us countries, amongst others, OAPI, Kenya,
Tanzania and the EU, without any evidence of demonstrable confusion with AMARULA.
Operations were anticipated to commence in South Africa in August 2021.
[13] The Respondent belief is that that there can be co -existence in the market place
for both marks.
Trade mark infringement: Section 34(1)(a) of the Act
[14] The Applicant argued that Respondent's intended use of the “AFRULA” mark is
either identical or at least “so nearly resembling" the Applicant's “AMARULA” mark "as
to cause confusion ”. The relevant provisions of section 34(1)(a) of the Act are set out
below:
“Infringement of registered trade mark
34(1) The rights acquired by registration of a trade mark shall be infringed by-
(a) the unauthorized use in the course of trade in relation to goods or
services in respect of which the trade mark is registered, of an
identical mark or of a mark so nearly resembling it as to be likely to
deceive or cause confusion”.
[15] To benefit from t he protection in terms of the above provisions, the Applicant is
required to show that the use of a mark, or so nearly resembling it is likely to deceive or
cause confusion, and that such use in relation to the trade mark is registered. It is
unequivocal that the Respondent intends to make use of the trade mark AFRULA for
goods (marula cream liqueur) in respect of which it intends making use of the trade
mark AFRULA, falls within the scope of “alcoholic beverages”, covered by each of the
Applicant's trade mark registrations and in the same class.
[16] In order to succeed in respect of its claim for trade mark infringement in terms of
section 34(1)(a), the Applicant has to show.
“(a) use of the registered trade mark or of a mark so nearly resembling it as t o
be likely to deceive or cause confusion;
(b) that the use is in relation to the goods or services in respect of which the
trade mark is registered;
(c) that the use is in the course of trade; and
(d) that the use is unauthorised.”1
[17] In addressing the issue of “ deception” and “ confusion”, Roodezandt Ko -
operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd and Another2 the SCA said:
“‘Deception’ will result, so it has been held, when the similarity were to cause
members of the purchasing public to assume that the goods bearing the two
competing trade marks come from the same source. ‘Confusion’, on the other
hand, would occur if these members of the public will be caused to wonder if the
goods had a common origin (see eg Oude Meester Groep Bpk v SA Breweries
Ltd; SA Breweries Ltd v Distillers Corporation (SA) Ltd 1973 (4) SA 145 (W) at
160 H).”3
1 Webster & Page South African Law of Trade Marks 4 th Ed, para 12.7; Kraft Foods Inc v All Joy Foods
(Pty) Limited [1999] 1 All SA 502 (C) (“Roodezandt”).
2 [2014] ZASCA 173 (19 November 2014).
3 Supra at para [4].
[18] The deception or confusion need not be lasting for it to disqualify a mark from
registration, it suffices if it is for a short time, sufficient to attract initial interest albeit that
confusion might later be cleared up.4
[19] Respondent's case is that the Applicant cannot claim exclusive right to
monopolize the word “marula” thereby restricting its ordinary usage in the English
language by other traders. However I did not understand Applicant to be wanting to
monopolize the word “marula” which it in any event cannot do given the endorsement
whereby the trade mark shall give no right to the exclusive use of the “ elephant device”
and to the use of the “marula fruit”.
[20] Turning to R espondent’s assertion that the terms AMARULA and AFRULA may
coexist, as the similarity between the marks is confined solely to the segment 'RULA.' It
is emphasised that judicial precedent consistently mand ates that the assessment of
confusing or deceptive similarity must consider the entirety of the marks . Thus, it is
contended by the Respondent that, irrespective of the perspective taken, AFRULA does
not equate to AMARULA. There exists no visual resemblance, nor any semantic or
conceptual affinity; 'AMA' denotes a notion entirely distinct from 'AF 5,' thus rendering it
phonetically distinct as well.
[21] Furthermore R espondent disagrees with the assertion that there exist a
reasonable probability 6 that AFRULA will be perceived as AMARULA, thereby,
contending that the average consumer of the liqueur purchaser is a sophisticated,
intelligent, and discerning adult who can read. Furthermore, given that a significant
portion of Respondent’s business is conducted online, it is imperative for the adult to be
astute and discerning so as to operate and manage online e -commerce facilities, and to
possess a credit or debit card. Thus, it is highly improbable that the average consumer
/customer will not be de ceived – misled, conned, or fooled. In other words to put it
4 Orange Brand Services Ltd v Account Works Software (Pty) Ltd (970/12) [2013] ZASCA 158 (22
November 2013) at paras [13] and [16].
5 The word is an isiXhosa, isiZulu, and isiNdebele plural noun prefix,
6 For probability it must be - a possibility does not pass muster. The Upjohn Comp any v Merck and
Another 1987 (3) SA 221 (T) at 224 E -l, per Justice Harms.
plainly, into believing that one is actually the other. Therefore, it posits that consumers
are able to distinguish between AFRULA and AMARULA when presented visually,
whether on screen or store shelves.
[22] To further its argument that consumers are not fools nor is she careless , opines
that the consumer is “more likely to take added care to ensure that they purchase the
product they know and like”7.
[23] The Respondent contends that the App licant's assertion regarding the mark
AFRULA potentially leading customers to associate it with AMARULA does not
constitute confusion. The association – merely bringing to mind another’s brand – is just
the exercise of a rational mind with the ability to r ecall. A “risk that the public will
associate the two marks in the sense that one will simply bring the other to mind” 8 does
not equate to the relevant confusion for purposes of (primary 9) statutory infringement.
‘Association’, therefore, is not confusion. Respondent referenced a plethora of cases
which it leans on, however the facts in those matters10 are distinguishable from the facts
of this case . In my view t he better example is that of “ ORANGE” and “ ORANGE
WORKS”, however the reasoning in that decision does not favour Respondent11.
[24] The R espondent argues that the impression intended to be conveyed by the
purportedly infringing mark must be deemed "material." 12 According to the Sabel
approach, central to the element of confusion must be the badge of origin function of the
7 Pioneer Foods (Pty) Ltd v Bothaville (Pty) Ltd [2014] 2 All SA 282 (SCA) / [2014] ZASCA 6 para [24]
8 Sabel BV v Puma AG Rudolph Dassler Sport [1998] RPC 199 ECJ, para. 56. The Sabel principles were
adopted by the SCA in Bata Ltd v Face Fashions CC 2001 (1) SA 844 (SCA); and followed in National
Brands Ltd v Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA), and in Cowbell, supra.
9 The p osition regarding dilution takes on an even more demanding premise: namely, damage that is
caused by what is ex hypothesi non-confusing use.
10 YUPPIE GADGETS is not an infringement of YUPPIE CHEF; Yuppiechef Holdings (Pty) Ltd v Yuppie
Gadgets Holdings (Pty) Ltd [2016] ZASCA 118 (15 September 2016).
BLACK KNIGHT is not an infringement of KNIGHTS or KNIGHT ’S GOLD; Distell Ltd v KZN Wines and
Spirits CC [2016] ZASCA 18 (15 March 2016).
EVOLVE is not an infringement of EVOLYM Yair Shimansky and Another v Browns the Diamond Store
[2014] ZASCA 214 (1 December 2014).
WATCH is not an infringement of SWATCH Swatch AG (Swatch SA) v Apple Inc 2021 (3) SA 507 (SCA)
11 Supra Orange Brand Services Limited para [17] the appellant succeeded in its opposition to the tra de
mark application
12 Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA) at paragraph [5].
marks13 - that is the “material connection” postulated in Bata14 , there must “be a
genuine and properly substantiated likelihood of confusion regarding the origin of the
goods.”15
[25] In conducting an assessment as to whether this deception or confusion is
probable, a succinct overview of the approach in Century City Apartments Property
Services CC & Another16 provides:
“taking account of all relevant factors. It must be judged through the eyes of the
average consumer of the goods or services in question. That customer must be
taken to be reasonably well informed and reasonably circumspect and observant,
but he may have to rely upon an imperfect picture or recollection of the marks.
The court should factor in the recognition that the average consumer normally
perceives a mark as a whole and does not analyse its various details. 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. Furthermore, if the association between the marks
causes the public to wrongly believe that the respective goods come from the
same or economically linked undertakings, there is a likelihood of confusion.”
[26] When examining the “ distinctive and dominant components ” of the respective
marks, namely “ AMA”17 and “AF”, the Respondent posits that the distinction effectively
negates any potential for confusion. Advancing that the potential customer will likely
realise that “AFrula” is a marula cream liqueur distinct from “AMArula"- and if the
consumer wants to buy AMARU LA, they will be aware that they are looking at the
incorrect product. The law, in this context, is designed to accommodate the average
13 Sabel, supra, at 213.
14 Bata, supra, at p 850 paragraph [8].
15 Per the Advocate General’s opinion, accepted by the Court. See Sabel paragraph 58. Underlining
added.
16 Century City Apartments Property Services CC & Another v Century City Property Owner's Association
2010 (3) SA 1 SCA at paragraph [13], per Harms DP i n approving the dictum of Laddie J in LTJ Diffusion
SA v Sadas Vertbaudet SA [2003] ETMR 83.
17 I capitalize to illustrate the visual effect.
consumer and does not cater to unreasonab le interpretations or scenarios, although ,
the Respondent dismisses the Applicant’s assertion that “ initial interest confusion ” is
adequate to establish a case for confusion.
[27] The questions of “deception or confusion in any one of the aspects of sense,
sound or appearance will suffice ... ” since the approach in Bata,18 necessitated a
“global approach ”, which involves a comprehensive evaluation of all relevant factors,
especially given that “ the trade mark AMARULA and the get -up of the AMARULA
product have become…immediately recognized in the market…” 19 The “ confusion”
debate is an ongoing discussion as contained in an interesting journal , the South
African Intellectual Property Law Journal.20
[28] For the Respondent, the mark AFRULA does not exhibit a confusing or deceptive
similarity, as defined by the Act, to the registered trade marks. The question that has to
be decided is whether the Applicant has established that a substantial number of
persons will probably be deceived into believing, or be confused as to whether, there is
a material connection in the course of trade between the Respondent's product offering
and, notionally, goods offered by the Applicant. An analysis is necessary, viewed from
the perspective of the consumer, regarding the application of the mark by the purported
infringer. The existence of an infringement hinges on whether the use conveys a
substantial connection between the product and the proprietor of the mark; if such an
impression is absent, then infringement cannot be established.
[29] Put differently, this test is conducted notionally, in the context of statutory
infringement. In other words, the Court must envision a fair and reasonable application
by the Applicant of its trad e mark as a badge of origin in relation to liquor products and
notionalise whether the Respondent's actual use is likely to cause confusion. It is
important that a "risk that the public will associate the two marks in the sense that one
18 Bata v Face Fashions, supra, at paragraph [9]
19 Maharaj, page 14 paragraph 5.5.
20South African Intellectual Property Law Journal Volume 7 – 2019: “Statutory trade mark infringement
and questions about confusion”.
will simply bring t he other to mind” 21 is according to the R espondent, not relevant. This
is not confusion since the mere association that the public might establish between two
marks as a result of their analogous semantic content does not, by itself, provide
adequate justification for determining that there is a likelihood of confusion. This is
particularly true in instances where the marks possess a descriptive quality.22 However I
am not convinced that this argument advances the case for the Respondent.
[30] Our Courts have established guidelines for the evaluation of trade marks which
have been generally applied. What then stands to be compared, in the enquiry into the
section 34(1)(a) infringement, is each of the Applicant's registered trade marks (without
any reference to extraneous matter) with the mark intended to be used by the
Respondent, AFRULA.
[31] The guideline on the issue of comparison in Roodezandt provides:
“[6] Most, if not all, of these considerations seem to find application in the
present context. Other principles of comparison which have become crystallised
in earlier decisions of this court which I find to be pertinent, include the following:
(a) A likelihood of confusion does not only arise when every person
interested or concerned in the class of goods for which the trade
mark has been registered could probably be deceived or confused.
It also arises if the probabilities establish that a substantial number
of such persons will be deceived or confused.
(b) The concept of deception or confusion is not limited to inducing in
the minds of these interested persons the erroneous belief or
impression that the two competing products are those of the
21 Sabel BV v Puma AG Rudolph Dassler Sport [1998] RPC 199 ECJ, paragraph 56. The approach to
infringement adopted in the Sabel decision was approved by the Supreme Court of Appeal in Bata Ltd v
Face Fashions CC 2001 (1) SA 844 (SCA); and followed in Cowbell AG v ICS Holdings Ltd 2001 (3) SA
941(SCA).
22Cowbell, supra, at 949 C-G.
objector or that there is a connection between these two products.
A likelihood of confusion is also established when it is shown that
a substantial number of persons will probably be confused as to
the origin of the products or the existence or non-existence of such
a connection.
(c) The determination of the likelihood of confusio n involves a
comparison between the two competing marks, having regard to
the similarities and differences in the two and an assessment of
the impact it would have on the average type of customer who is
likely to purchase the kind of goods to which the mar ks are applied.
(d) The marks must not only be considered side by side, but also
separately.
(e) It must be borne in mind that the ordinary purchaser may
encounter goods bearing one mark with an imperfect recollection
of the other.
(f) If each of the competing marks c ontains a main or dominant
feature or idea, the likely impact made by this dominating feature
on the mind of the customer must be taken into account. This is so
because marks are remembered by some significant or striking
feature rather than by the photogr aphic recollection of the whole.
(See eg Plascon Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51; 1984 (3) SA 623 (A) at 640G -641E; Puma AG
Rudolf Dassler Sport v Global Warming (Pty) Ltd 2010 (2) SA 600
(SCA) para 8; and Adidas AG & anoth er v Pepkor Retail Ltd 2013
BIP 203 (SCA) paras 20-23.)”
[32] In making this comparison, the court must immerse in the dynamics of the
marketplace. The court is required to consider the manner in which the hypothetical
consumer would perceive the marks of the parties involved. The notional consumer
should be envisioned as an individual of typical intellect, possessing adequate vision
and exercising reasonable prudence in their purchasing decisions.23.
[33] It has been held that when considering the potent ial for deception or confusion in
any characteristic related to sense, sound, or appearance, the assessment of confusion
must be undertaken in a holistic manner 24 , the Supreme Court of Appeal (SCA)
accepted the principle laid down in Sabel BV v Puma AG Rudolf Dassler Sport.
[34] Do not peer too closely was conveyed in Adidas AG v Pepkor Retail Limited 25,
the SCA stated:
“It must be borne in mind that the question of the likelihood of confusion or
deception is a matter of first impression and that “one should not peer too closely
at the registered mark and the alleged infringement to find similarities or
differences”.
[35] Applicant in holding that there is an infringement of its trade mark examines
“AFRULA” and “AMARULA”, both of which start with letter and sound “A” and end with
“RULA” and the general impression in the mind of the consumer is therefore likely to be
the same, likely for consumers to be confused with regard to the sound or appearance
of the marks in question. This in my view is the high water mark.
Trade mark infringement: Section 34(1)(c) of the Act
[36] Section 34(1)(c) provides as follows:
23 Plascon-Evans (supra) at 640H.
24 In Bata para [9], the Supreme Court of Appeal accepted the principle laid down in Sabel BV v Puma AG
Rudolf Dassler Sport [1998] RPC 199 (ECJ) 221 at 224
25 2013 BIP 203 (SCA) at para [22].
“(a) …
(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: Provided that the
provisions of this paragraph shall not apply to a trade mark referred to in
section 70(2).”
[37] Respondent through its use of the name "AFRULA” denies it constitutes
unauthorized trade mark use, by denying:
37.1 the Applicant’s AMARULA trade marks are well-known in the Republic;
37.2 the AFRULA trade mark is “similar” to the AMARULA trade marks;
37.3 the use of AFRULA is likely to take unfair advantage of, or be detrimental
to, the distinctive character and repute of the trade mark AMARULA.
Well-known
[38] The SCA in McDonald's Corporation v Joburgers Drive -Inn Restaurant (Pty) Ltd
and Another26, considered the degree of knowledge required for a trade mark to be a
well-known trade mark in the Republic of South Africa, found, in respect of section 35 of
the Act, that a mark is well -known in the Republic if it is well -known to persons
interested in the goods or services to which the mark relates.
26 1997 (1) SA 1 (A).
[39] The SCA's ruling in Truworths Limited v Primark Holdings 27 reaffirmed the
reference in A M Moolla Group Limited and other s v The Gap Inc and Others28, the
importance of applying the Joint Recommendation Concerning Provisions on the
Protection of Well -Known Marks, adopted by the Paris Union for the Protection of
Industrial Property and the General Assembly of the World Intellectual Property
Organisation's General Assembly, to establish the relevant sector of the public as
follows.
“Relevant sectors of the public shall include, but shall not necessarily be limited
to:
(i) Actual and/or potential consumers of the type of goods and/or services
to which the mark applies;
(ii) Persons involved in channels of distribution of the type of goods and/or
services to which the mark applies;
(iii) Business circles dealing with the type of goods and/or services to which
the mark applies”.29
[40] According to Ms Maharaj, the Director of the Applicant, the A pplicant’s trade
mark AMARULA has been in use since September 1989. It is freely available to
persons over the age of in establishments that possess liquor licenses, including but not
limited to liquor stores, pubs, clubs, ladies bars and the like. The sales figures for this
liqueur indicate a total of 16,600,000 litres, alongside a count exceeding 58,548,605
units of AMARULA. Further matter of recognition and the evidence presented by the
Applicant is categorised into two distinct periods: before 2008 and from 2008 until the
initiation of this application.
27 2019 (1) SA 179 (SCA).
28 2005 (6) SA 568 (SCA) at paras 12 – 14.
29 At para [11] – [12]
[41] Applying these factors and guidelines, Applicant enjoys extensive use of the
mark AMARULA in South Africa which was not disputed by the Respondent.
[42] Of importance, the well-knowness is fortified in a judgment delivered by Goliath J
as she then was in this Honourable Court in the matter of Southern Liqueur Company
Ltd v SLD Liqueur Manufacturers Ltd (the SLD judgment)30. That solidifies that point.
[43] The provision of Section 34(1)(c) in the Act introduced a novel form of trade mark
protection within our legal framework focusing on safeguarding the commercial value
linked to the reputation of a trade mark, rather than its ability to differentiate the goods
or services of the owner from those of competitors, as articulated in National Brands Ltd
v Blue Lion Manufacturing (Pty) Ltd 31. Of importance is that Section 34(1)(c) does not
require deception or c onfusion. It only requires that the mark be “ similar” to the
registered well-known trade mark and in doing so protects . Its purpose is to protect the
reputation, advertising value and selling power of the well-known trade mark.32
[44] In order to protect unique identity, reputation and commercial value of a mark,
the Constitutional Court stated in Laugh It Off:33
“(T)he owner of ... A distinctive mark has a legitimate interest in continuing to
maintain the position of exclusivity he acquired through large expenditures of
time and money and that everything which could impair the originality and
distinctive character of his distinctive m ark, as well as the advertising
effectiveness derived from its uniqueness, is to be avoided ... Its basis purpose is
not to prevent any form of confusion but to protect an acquired asset”
and further
30 The “SLD judgment” (19693/08) [2011] ZAWCHC 268 (15 June 2011) 117, p 264.
31 2001 (3) SA 563 (SCA) (“National Brands v Blue Lion") at para [11].
32 Verimark at para [13): Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pt y) Ltd 2016 BIP
269 (SCA) at para [43] – [44].
33 Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark
International (Freedom of Expression Institute as Amicus Curiae) 2006 (1) SA 144 (CC) ( “Laugh it Off
CC”) at para 39.
“As it is often said the mark sells the goods and theref ore its positive image or
consumer appeal must be saved from ruin.”34
In determining the likeness
[45] National Brands v Cape Cookies35 conveys the concept of “likeness”:
“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.”
[46] The similarities in the mark s of the parties are sufficiently alike under the
provisions of section 34(1)(c). Not only are the marks similar it is a fact that the mark is
intended to be used in relation to the same goods in respect of which the mark
AMARULA has achieved recognition a nd has become well-known.36 Therefore the test
of an easily recognisable similarity between the two marks in my view is met.
Unfair advantage
[47] In Laugh It Off the Constitutional Court accepted 37 as correct what was stated in
Pfizer Ltd and Pfizer Incorporated v Eurofood Link (United Kingdom) Ltd38, that:
“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
34 2024 (2) SA 296 (SCA) at para 40.
35 2001 (1) SA 844 (SCA) at para 14 (“Bata”). See also National Brands Limited v Cape Cookies CC and
Another [2023] ZASCA 93 (12 June 2023) at paras [26] – [27]
36 See, in this regard, the SCA’s reasoning in National Brands v Cookies (supra) at paras [33] – [34].
37 At para [39].
38 [2000] FSR 767.
of 'detriment' requires an enquiry into the goodwill accruing to the business in the
goods sold under the trade mark.”
[48] In casu, the Applicant has stated the following:
“16. I respectfully aver that there is every likelihood that consumers will
associate the Respondent's AFRULA product with the Applicant's AMARULA
products and I submit that it is therefore likely that this will dilute the
distinctiveness of the Applicant's AMARULA trade mark. Accordingly, I submit
that the use by t he Respondent of the AFRULA trade mark is detrimental to the
distinctive character of the Applicant's AMARULA trade marks. It should be borne
in mind that Applicant is using its AMARULA trade marks in relation to very high
quality cream liqueur and are sol d at a price to reflect this quality and the
uniqueness of the trade marks. The uniqueness of the AMARULA trade marks
will certainly suffer tremendously as a result of the Respondent's use of the
AFRULA trade mark in relation to alcoholic beverages and in particular liqueur
products. The Respondent's target market for its alcoholic beverages bearing the
infringing mark is, I would surmise, the income groups much lower than the
income group the Applicant's alcoholic beverages is targeting. That in itself wil l
result in the uniqueness of the Applicant's trade marks suffering, which ultimately
will lead to less sales and financial damage to the Applicant.”
[49] Even if it were true, as the Respondent states that it " intends to target lower
income consumers" and that it "intends to target selective, discerning customers "39, this
does not negate the likelihood of the detriment and undue advantage complained of.
[50] In my view the Applicant has established the likelihood that the Respondent's use
of the mark AFRULA is in direct competition with it in the same market, irrespective
whether it may prevail in a sector for a lower price class, is likely to dilute the
distinctiveness of the mark AMARULA.
39 Kanugonda (answering affidavit): para 150, p 269.
Passing Off
[51] The Applicant asserts that a passing off has occurred due to a misrepresentation
made (a) by the AFRULA brand name itself; in other words, it is presumed, regardless
of any other attributes and features related to the product, and (b) by the label
displaying this mark that the Respondent intends to use for the bottle of its AFRULA
product. On both products their respect trade marks feature prominently.
[52] The Applicant asserts that the R espondent has reproduced the fundamental
components of the A pplicant’s elephant -themed AMARULA ensemble, specifically the
AMARULA mark and the elephant motif.
[53] The Respondent elaborates on the notion of the “African theme”, that aside from
the term AMARULA and the depiction of an elephant, the Applicant has failed to provide
any clarification regarding what constitutes its uniquely “ distinctly African motive ”,
particularly given that at least four other cream liqueurs similarly employ a “ African
theme”.
Reputation and goodwill
[54] Passing-off is a species of unlawful competition which specifically involves
infringement of another's rights in the reputation component of an existing goodwill. It
therefore protects a trader’s business against damage caused by a misrepresentation of
a rival competitor concerning the trade source, or business connection of the rival’s
good or services 40. Webster describes that the property that is protected by means of
the passing-off action is not property in the symbol with which the goodwill is associated
but in the goodwill itself which will be injured by the use of that symbol 41. The only
component of that goodwill of a business that can be damaged by a means of passing -
40 Reckitt & Coleman SA (Pty) Ltd v S C Johnson & Son (Pty) Ltd 1993 (2) SA 307 (A) at 315B.
41 Webster & Page (supra), para 15.8
off is its reputation. The first requirement for a successful passing off action is the proof
of the relevant reputation in circumstances where the passing -off consists of a
misrepresentation of a particular kind42.
[55] In Capital Estate & General Agencies (Pty) Ltd v Holiday Inns Inc and Others43,
Rabie JA gave what has become a classic definition of passing-off:-
“Whether there is a reasonable likelihood of such confusion arising is, of course,
a question of fact which will have to be determined in the light of the
circumstances of ea ch case. If the evidence establishes that there is a
reasonable likelihood of such confusion arising even if the parties concerned
cannot be said to be carrying on their activities in a common field, it is difficult to
see how the absence of such a common field can nevertheless constitute a
ground of denying relief to an aggrieved party.”
[56] The onus in a passing -off action, and, in distilling the position through various
judgments including Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd 44
held:
“[20] It appears to me to be whether the plaintiff has, in a practical and business
sense, a sufficient reputation amongst a substantial number of persons who are
either clients or potential clients of his business. As far as the ‘location’ of
reputation is concerned, it must subsist where the misrepresentation complained
of causes actual or potential damage to the drawing power of the plaintiff's
business. Otherwise the misrepresentation would be made in the air and be
without any consequences. The locality of th e plaintiff's business is not hereby
rendered irrelevant. Obviously, it must be an important consideration in
determining whether the plaintiff has potential clients and whether the alleged
misrepresentation causes his business any harm. Likewise, the exte nt of a
42 Ibid para 15.5
43 1977 (2) SA 916 (A) at 929 C – G.
44 1998 (3) SA 938 (SCA) at 950 E-H.
business's reputation and the scope of its activities are relevant to the probability
of deception and to damages - the smaller the reputation, the smaller the
likelihood of deception and of damage, and vice versa.”
[57] In summary, the elements of passing-off, which the Applicant must establish are:
57.1 A reputation in the mark in which exclusivity is claimed;
57.2 A likelihood of deception and / or confusi on arising from the use by the
Respondent of the mark complained of (the misrepresentation), and
57.3 Damages suffered as result of the misrepresentation.
[58] The Applicant must establish that the trade mark or get -up at issue is recognized
and associated in the public's mind with t he pertinent business, signifying its
distinctiveness regarding the goods at issue. The fundamental role of a mark is to
distinguish an entrepreneur's product from similar market offerings. Ultimately, the
purpose and function of a trade mark is to individualize and differentiate a product.
[59] The law of passing off does not extend its protective reach to goodwill of trivial
and insignificant content. It is impractical to call on a substantial number of consumers
to testify directly as to the existence of Applicant’s reputation and the Applicant requests
the court to draw such inferences. The meaning of “a substantial number ” means
“sufficient persons to make the reputation a property of appreciable commercial
value”.45
The principles relating deception and confusion
45 Supra para 15.6
[60] Confusion on its own does not give rise to an action for passing -off, however, it
does so, “where it is the result of a misrepresentation by the defendant that the goods
which he offers are those of the plaintiff or are connected with the Plaintiff46.
[61] Where a mark possesses the ability to convey to the customer an indication of
particular trade origin fo r goods made available under it and where a R espondent has
conducted itself in a manner where it is not made perfe ctly clear that his goods or
services are not those of the associated, that the resulting of confusion, the conduct will
give rise to passing-off.47
Passing off of the mark – the get up
[62] The Applicant relies on the same evidence of use and promotion of its mark
AMARULA as it does in support of its claim in terms of section 34(1)(c).
[63] The Applicant asserts that in 2016, the redesign of its AMARULA bottle to
resemble the form of an African elephant was executed to underscore and exemplify the
brand's dedication to elephant conservation, a commitment that has garnered media
attention through various awards and campaigns. The Respondent’s assertion that the
Applicant has not established a reputation and goodwill in the AMARULA get -up is
denounced by the A pplicant as being fundamentally flawed, as the evidence
unequivocally substantiates the Applicant’s claim of having indeed acquired such
reputation and goodwill.
[64] In evaluating the respective get -ups, the Respondent's get -up consists of the
trade mark AFRULA, and the side profile of an African women’s head 48, representing
elements of an African th eme. Firstly, in my view the Respondent's mark AFRULA
bears a striking r esemblance to the Applicant's mark AMARULA. In assessing both
46 Hoechst Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (in Liquidation) and Another 1987 (2)
SA 600 (A) at 619 D.
47 Webster & Page (supra) para 15.19.
48 Which (on close inspection only) appears to be a side profile an elephant
parties' get -ups, these marks constitute the most prominent element. Added to this,
there exist a side profile of an elephant head, although Respondent persists in its
contention that the device on its labelling is a representation of an African woman. The
Applicant maintains that, upon initial observation (and this is how the average consumer
would view the Respondent's product) the device depicts a lateral representation of an
elephant. To me, at a quick glance, I see it as a side view of an elephant as well.
[65] What Respondent does not appear to accept is Applicant “Amarula” is a brand in
South Africa and reported as market leader with its award winning “Amarula Cream
Liqueur” and presently holds a dominant share in the market. In the minds o f the
reasonable consumer, the Respondent conduct in making use of the AFRULA get up
does not overcome the general visual impression of similarity. The nature of the
confusion or deception is likely to divert business away from the Applicant, which could
potentially result in a loss of its market share and therefore amounts to a passing off.
[66] Applicant described it has expended considerable time, money and effort in the
promotion of its product in South Africa. The Applicant's advertising figures in respect of
its AMARULA product in the period 2009 to 2018 topped R373 million. Over the years,
the AMARULA brand has received various awards and accolades and received
particularly extensive coverage during the 2010 FI FA World Cup Tournament in South
Africa.
[67] Consequently, Respondent's conduct is likely to take unfair advantage of the
distinctive character and reputation of the “Amarula” mark in a manner that is unfair.
[68] However f or the passing off to be sustained, Applicant is faced with a hurdle.
Respondent correctly identifies Applicant’s challenge, that is, without a market presence,
assessing misrepresentation and passing off is jurisprudentially unfeasible at this stage.
There is no such evidence that the product is in the market and on shelves . If the
product is marketed, then Applicant is entitled to the relief sought. I am at this stage
exercising caution in finding liability for passing off recognising that no damage can
occur if the product is no t commercially available. Although, Respondent has
constructed a new facility at its premises in Cape Town, and it was expected to become
operational about August 2021 . Its goal was destined to employ approximately 45
people in production, marketing and sales. It is however, not operational. Applicant has
on this point provided no evidence to sh ow that the AFRULA product is in the market in
South Africa.
I battled to find a precedent on passing -off of products by a competitor where such
products of the competitor (as a Respondent) is not in the market as yet. In the result,
the claim to passing off is unsuccessful due to it is premature nature.
Constitutional protections
[69] In summation, I note the R espondent's assertion that the court is obligated to
interpret statutes in conformity with the Constitution, thereby safeguarding the
constitutional guarantee of freedom of expression. Thus, the infringement provision
must be construed to minimize impairme nt of this right, requiring an evaluation through
the constitutional lens of s ection 36(1) and balancing competing interests on a case -
specific basis.
[70] Upon applying these principles to the present case, I have determined that there
are no basis to de viate from my conclusions that a statutory infringement exists,
encompassing both primary infringement and infringement by dilution.
[71] The Constitutional guarantee of freedom of expression is subject to limitations,
particularly when it conflicts with rights of others, including commercially protected
interests. Sections 34(1)(a) and (c) demonstrate these limitations. Our economy
operates within a mixed market framework, integrating private freedoms with regulation.
Intellectual proper ty protections dr aw from common law, English law, international
agreements, and policy frameworks. At this juncture, our economy is not poised for
significant changes, acknowledging that stifling competition is counterproductive.
[72] Nonetheless, where competition invol ves infringement and passing off, existing
protections will endure, although this argument may have future merit, it is inapplicable
in this specific context.
Conclusion
[73] In my view there is no passing off as yet for reasons stated above. I am though
satisfied that the Applicant’s registration of its trade marks protects its rights from
infringement. The Applicant has satisfied the requirements that it has a clear right, a s it
acquired a clear and protectable right and that the infringement of such rights causes it
potential harm or potential injury. Therefore Applicant has satisfactorily met the test for
reasonableness of the apprehension of prejudice or harm, when a reas onable man in
the shoes of the Applicant when faced with similar facts which Applicant relies on.
Applicant in seeking final relief, have satisfied the principles laid out in Plascon Evans49.
[74] Respondent has filed its application for registration and the Applicant has
succeeded in opposing it through the arguments presented. I am accordingly satisfied
that Respondent's conduct constitutes trade mark infringement in terms of the
provisions of section 34(1)(a) and 34(1)(c) of the “Act”.
Costs
[75] I see no reason to depart from the usual costs order that costs follow the result.
Order
[76] In the circumstances the following order is made:-
76.1. In terms of the provisions of section 34(1)(a) of the Trade Marks Act No
49 Supra para 634.
194 of 1993 ("the Act");
76.1.1. The Respondent is interdicted and restrained from infringing
the Applicant’s registered trad e mark numbers 1980/03512
AMURULA, 1984/02496 AMARULA, 1989/05113 AMARULA
label, 2016/27262 AMARULA (2016) label all in class 33 (the
registered trade marks) in terms of Section 34(1)(a);
76.1.2. Interdicting and restraining the Respondent from infringing the
Applicant’s registered Marks Act, by using, in the course of
trade in relation to alcoholic beverages the mark AFRULA or a
mark or marks resembling the Applicant’s registered marks, as
to be likely or deceive or cause confusion in terms of the
provisions of section 34(1)(a) of the Act;
76.2. Interdicting and restraining the Respondent from infringing, in terms of
Section 34(1)(c) of the Trade Marks Act, the rights acquired by the well -
known and registered AMARULA trade marks (referred to in paragraph 1
above) by using in relation to any goods, the trade mark AFRULA or any
other mark which will be likely to take unfair advantage of or be
detrimental to the distincti ve character or the repute of the aforesaid well -
known and registered AMARULA trade marks;
76.3. The Respondent is ordered to pay Applicant’s costs of suit, including the
costs consequent upon the employment of counsel where so employed.
________________________
R K PARKER
ACTING JUDGE OF THE HIGH COURT
Appearances:
Counsel for Applicant : Adv. I Joubert (SC)
Instructing Attorney : Spoor & Fisher – Mr CE Webster
Counsel for Respondent : Adv. O Salmon (SC)
Instructing Attorney : Rademeyer Attorneys – Ms K Rademeyer