Woodlands Dairy Proprietary Limited v Sansom Farming CC and Others (2022/056524) [2025] ZAGPPHC 298 (10 March 2025)

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REPUBLIC OF SOUTH AFRICA

IN THE HIGH COURT OF SOUTH AFRICA
GAUTENG DIVISION, PRETORIA


CASE NUMBER: 2022 /056524


DELETE WHICHEVER IS NOT APPLICABLE

1.REPORTABLE: NO
2.OF INTEREST TO OTHER JUDGES: NO
3.REVISED : NO
10 MARCH 2025 Judge Dippenaar

In the matter between:

WOODLANDS DAIRY PROPRIETARY LIMITED
APPLICANT
And

SANSOM FARMING CC FIRST RESPONDENT

TRE COMPUTERS (PTY) LTD
SECOND RESPONDENT
ZA CENTRAL REGISTRY NPC THIRD RESPONDENT

JUDGMENT

Delivered: This judgment was handed down electronically by circulation to the
parties’ legal representatives by e -mail and by uploading it to the
electronic platform . The date and time for hand -down is deemed to be
10h00 on the 10th of MARCH 2025.

DIPPENAAR J :

[1] This is an opposed application pertaining to trademark s in which the applicant
sought the following relief: 1

1. ‘Trade mark registration no. 2017/12516 FRESH CHOICE logo in class 29 in the
name of the First Respondent, is cancelled and removed from the trade marks
register, in terms of section 24(1), read with sections 10(7), 10(12) and 10(14) of
the Trade Marks Act, 194 of 1993 (‘the Act’) ;

2. The First Respondent is interdicted fro m infringing the Applicant’s statutory trade
mark rights in terms of section 34(1)(a) and / or 34(1)(c) of the Act by making
unauthorised use, in the course of trade, of its FRESH CHOICE logo and FRESH
CHOICE trade marks (“the impugned trade marks”), or an y confusingly or
deceptively similar trade marks to the Applicant’s FIRST CHOICE logo trade
mark;

1 A draft order was provided correcting certain incorrect references to sections of the Trade Marks Act in
the notice of motion. The respondent did not object to such corrections.
3. The First Respondent is interdicted from passing off its business or products as
being, or as being connected to, the Applicant through use of the impugned
marks or any confusingly or deceptively similar marks to the Applicant’s FIRST
CHOICE and FIRST CHOI CE logo trade marks (collectively “the FIRST CHOICE
trade marks” ;

4. The First Respondent is directed, within 10 days of this order, to remove all
references to the impugned marks, or any other marks which are confusingly or
similar to the FIRST CHOICE tr ade marks, from its website, any and all
electronic media and/or messenger sites or applications relating to or associated
with it, documents and vehicles used by it, all signs at any farm or place of
business; and all goods and material in which it trades ’;

5. With reference to prayer 2 above and section 34(2)(b) of the Act, insofar as the
impugned trade marks are inseparable or incapable of being removed, the First
Respondent is ordered to deliver up such material to the Applicant ’;

6. The First Respo ndent is directed to cease all use of the domain name “fresh -
choice.co.za” and, within 10 days of such order, to instruct the Second
Respondent to delete its registration of the domain name “fresh -choice.co.za” ;

7. In the event of non -compliance with paragraph 6 of the order, the Second
Respondent is directed to delete the registration of the domain name “fresh -
choice.co.za” within 10 days of the deadline referred to in paragraph 6 ;

8. In the event that there is non -compliance with prayers 6 and 7, the Third
Respondent is directed to delete the registration of the domain name “fresh -
choice.co.za” within 10 days of the expiry of the 10 -day deadline referred to in
prayer 7 ;

9. The First Respondent is directed to pay the costs of this application, including the
costs consequent upon the employment of two counsel on Scale C. ’

[2] The trademarks in question are:


[3] The applicant is Woodlands Dairy (Pty) Ltd (Woodlands), a long standing, family
owned dairy operator with its principal dairy and packing plant in the Kuga Municipality
in the Eastern Cape. It produces an extensive range of dairy products, including UHT
milk, which is marketed and sold in outlets throughout South Africa. It sells these
products under the name and brand F IRST CHOICE . It owns the FIRST CHOICE
device trade marks in South Africa .

[4] The first respondent , Sansom Farming CC (Sansom ) is also a dairy operator, on
a substantially smaller scale as the applicant. It is based in the Buffalo City
Metropolitan Municipality in the Eastern Cape. It produces milk and other dairy products
under its registered trade mark FRESH CHOICE.

[5] The second respondent , Tre Computers (Pty) Ltd, is an internet service company
and the registrant of the fresh -choice.co.za domain name. It did not participate in the
proceedings. The third respondent is the ZA Central Registry NPC, the central domain
name registry licen sed by the ZA Domain Name Authority, the statutory regulator and
manager of the . za namespace as established by s 59 of the Electronic
Communications and Transactions Act 25 of 2002, to administer domain name
registrations. The applicant sought directory relief against the sec ond and third
respondents, but no costs orders, save in the event of opposition.

[6] The third respondent filed a notice to abide the decision of the court. As the
second and third respondents did not participate in the proceedings, the first respondent
will be referred to as ‘the respondent ’ or by name, where convenient.

[7] The applicant sought two categories of relief: the first; the cancellation and
removal of first respondent’s trade mark under s 10(12) , s 10(14) or s 10(17) of the
Trade Marks Act (‘the Act’)2 (‘the cancellation relief ’). The second; an interdict
restraining the respondent from using the said trade mark in trade, its trading name and
in the domain name of its website, w ith ancillary relief based on infringement under s
34(1)(a) or s 34(1)(c) of the Act or the delict of passing off under the common
law ( ‘the infringement relief ’).

[8] The applicant’s case in sum was that it has statutory and common law tr ade
mark rights in the FIRST CHOICE trade mark as well as the domain name fresh -
choice.co.za as it is well -known and has acquired a secondary meaning as a mark of
origin of its dairy products . It contended that the respondent’ s mark is confusingly
similar to its own, causing deception or confusion amongst notional consumers. It
submitted that the respondent would be likely to take unfair advantage of its reputation
and would enjoy a commercial benefit and that its rights were a t risk of being tarnished
or diluted even in the absence of any likelihood of confusion.

[9] The respondent conceded that the applicant demonstrated a reputation in its
composite trade marks for purposes of s 10 (12) and 10(17) of the Act , which comprise s
of more than just the descriptive words, ‘FIRST ’ and ‘CHOICE ’. Its case in sum was that
the applicant did not make out a case for any of the relief sought, either under the Act or
the common law. That submission was centrally predicated on the contention that there
was no similarity or confusion between the parties’ respective trade marks when
considered as a whole and applying the well -established test to determine similarity or
confusion . It further relie d on the disclaimer s in the Register and s 15 of the Act which
limits the protection afforded to the applicant under the trade mark registration. It
submitted that th e words FIRST and CHOICE are merely descriptive words or laudatory
epithets that are commonly used in their trade, which cannot result in m onopoli sation of
such words.


2 Act 194 of 1993.
[10] According to the applicant it only became aware of the respondent’ s use and
registration of the offending mark pursuant to the publication of an article in the Daily
Dispatch Weekend newspaper on 25 June 2022. The applicant had hitherto been
unaware of the use of the mark which initially was on a small and locali sed scal e but
which since expanded and increased in scale. Pursuant to investigation, its legal
representatives addressed various demands to the respondent to withdraw the
registration of its mark, which it refused to do. That triggered the current application.

[11] The background facts are not contentious. The applicant is the registered
proprietor in South Africa of the FIRST CHOICE trade mark device in classes 29, 30
and 32. It is depicted on the trade mark register in black and white and affords the
applicant protection for all colours and colour combinations . The colours used in t he
products referred to in the application are a red vertical ribbon, a yellow horizontal
banner and the words FIRST CHOICE depicted in black writing on the horizontal
banner .

[12] The applicant’s registered trade mark as it appears from the register is registered
in black and white, but includes all colours. It is :


[13] In class 29 , in respect of Trade Mark no 1995/16885 the applicant made
application for registration on 20 December 1995.3 it relates to ‘Meat, fish, poultry and
game; meat extracts, preservatives, dried and coo ked fruits and vegetables, jellies,
jams, fruit sauces, eggs, milk and milk products, edible oils and fats. ’

[14] The FIRST CHOICE device registrations in classes 29 and 32 contain the
following disclaimer: ‘ Registration of this mark shall give no right to the exclusive use of
the words FIRST CHOICE separately and apart from the mark’. The registration in class
30 has no disclaimer. T he present application concerns the registration in class 29.

3 Being the effective date of registration under s 29(1) of the Trade Marks Act, being the date of
lodgement of the application.

[15] The application for registration in class 32 was made by the applicant on 20
December 1995 under 1995/16886 and in class 30 under trade mark no 2006/05666 on
16 March 2006. The applicant also owns a number of other registered trade marks
incorporating the FIRST CHOICE trade mark in class 29 covering various milk and dairy
products, including trade mark registration nos. 2015/07605 FIRST CHOICE KICK
device ; 2016/09054 FIRST CHOICE FRESH MIL K device; 2020/08925 FIRST CHOICE
REFRESHA device; and 2020/12564 FIRST CHOICE HARVEST device, all of which
are valid and in full force and effect.

[16] Those trade mark s have similar endorsements to those in class 29 . The
2015/07605 FIRST CHOICE KICK tr ade mark is endorsed: ‘ registration of the trade
mark shall give no right to the exclusive use of the words “FIRST CHOICE” and KICK”
separately and apart from the mark. Trade mark registration no 2016/ 08954 is
endorsed: ‘ registration of this trade mark shall give no right to the exclusive use of the
words “FIRST CHOICE” and “FRESH MILK” separately and apart from the mark .’ Trade
mark r egistration no 2020/08925, the FIRST CHOICE REFRESHA device is endorsed:
‘registration of this trade mark shall give no right to the exclusive use of the word
“FIRST ”, separately and apart from the mark . The applicant admits that the registration
of this trade mark shall not debar other from the bona fide descriptive use in the
ordinary courts of trade of the word “REFRESH ” in its ordinary significance and apart
from the mark ’. Trade mark registration no 2020/12564, FIRST CHOICE HARVEST
device is endorsed: ‘registration of this trade mark shall give no right to the exclusive
use of the words “FIRST ”, “CHOICE ” and “HARVEST ”, separately and apart from the
mark’.

[17] The applicant contends for common law trade mark rights since founding the
FIRST CHOICE brand some 27 years ago when it started operating the packaging p lant
for milk produced on Woo dlands Farm owned by a family trust. At present it is one of
the largest producers of UHT milk in South Africa and employs in excess of 1400
people. It also produces and packages in-house brand products for Spar and
Woolworths. Its widened product range in cludes various cheeses, butter, cream, ‘amasi’
(a fermented milk beverage), yoghurts, custards, flavoured milk drinks, powdered milk,
extended shelf life (ESL) fresh milk, UHT milk (long life shelf milk which is sterilised at
ultra-high temperatures), dair y desserts, dessert toppings, ice creams, olive oil,
balsamic vinegar, flavoured dips, recovery drinks and energy booster drinks. All of these
products prominently display the FIRST CHOICE trade marks. Its products are
advertised and promoted in various forms of media and advertising including online in
various form ats. It can be purchased in numerous supermarkets and grocery stores
throughout South Africa, including via online shopping websites or via i ts online store.

[18] It was undisputed that the applicant has the necessary locus standi to seek relief,
as it falls within the category of interested person in s 24 of the Act.4 It is common ca use
between the parties that the applicant has demonstrated a reputation and goodwill in its
composite trade marks, which comprise more than the words ‘first’ and ‘choice’ and
comprises the whole mark as registered .

[19] The respondent , Sansom, has a regi stered trade mark no 2017/12526 in class 29
for FRESH C HOICE . Application was made on 9 May 2017.5 It covers: “Meat, fish,
poultry and game; meat extracts; preserv ed, frozen, dried and cooked fruits and
vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats. ”
In its terms it is virtually identical to the applicant’s registration in class 29 .

[20] The respondent ’s registered trade mark as it appears in the register is in the
colours green, blue and white. It is :


4 It provides: “24 General power to rectify entries in register
(1) In the event of non -insertion in or omission from the register of any entry, or of an entry wrongly made
in or wrongly remaining on the register, or of any error or defect in any entry in the register, any interested
person may apply to the court or, at the optio n of the applicant and subject to the provisions of section 59,
in the prescribed manner, to the registrar, for the desired relief, and thereupon the court or the registrar,
as the case may be, may make such order for making, removing or varying the entry as it or he may
deem fit.
(2) The court or the registrar, as the case may be, may in any proceedings under this section decide any
question that may be necessary or expedient to decide in connection with the rectification of the register.”
5 See fn 4 above.

The respondent also uses the following logo containing the phrase FRESH CHOICE :


[21] The F RESH CHOICE mark is endorsed ‘Registration of this trade mark shall give
no right to the exclusive use of the words “FRESH” and “CHOICE”, separately and apart
from the mark ’. It amounts to a disclaimer of the use of the words FRESH and CHOICE
apart from the mark and precludes it from c laiming infringement in such instance. The
disclaimers of the parties ’ respective marks are thus in similar terms.

[22] The respondent has been trading with the FRESH CHOICE mark for nearly ten
years. It commenced selling milk on a small scale during 2010 , primarily into the rural
areas of Good Hope and Chalumna in the Eastern Cape. By 2011, it was using the
trade mark FRESH CHOICE. The registration of the mark dates back to 9 May 2017.
Since then its use of the trade mark has been wide spread and quite significant. It
contends that its mark has acquired a reputation in the mind of notional consumers and
that it also acquired common law rights to goodwill and reputation. It operates
predominantly in the Imasi fermented milk market and sells farm style butter and cream.

[23] It is common cause that the respondent is a direct compe titor of the applicant
and that they both produce dairy products . The respondent’ s goods are offered to the
same consumers as the applicant’s and their respective tr ade channels are the same.
The respondent’s products are available in the Eastern Cape, whe reas the applicant’s
products are available throughout the country. The parties are based in and operate out
of the same province, the Eastern Cape.

The issues

[24] In broad terms t he issues are whether the applicant is entitled to the cancellation
relief and the infringement relief on any of the statutory and common law grounds
advanced. The nub of the dispute is whether the parties’ respective marks are
confusingly similar and requires a com parison thereof as it underpins much of the relief
sought. The legal effect of the various disclaimers entered onto the trade marks register
in respect of both the applicant’s FIRST CHOICE and the respondent’s FRESH
CHOICE trade marks, must also be conside red. It is convenient to deal with the issues
with reference to the various sections of the Act on which the applicant relies.

[25] An ancillary issue must first be addressed. At the hearing, the respondent sought
leave to introduce a supplementary affida vit, which enclosed certain photographic
evidence. The application was not opposed. It is in the interests of justice that a matter
be determined on its full facts. The photographic evidence was helpful in a
consideration of the respective marks. I am pers uaded that leave should be granted for
the affidavit to be introduced as evidence. As the application was not opposed, no costs
order is appropriate.

Legal principles and relevant statutory framework

[26] It is apposite to first refer to certain applicable principles. It is trite that in motion
proceedings the affidavits constitute both the pleadings and the evidence. Equally trite
is the principle that an applicant must make out its case in its founding af fidavit.

[27] The cancellation relief sought by the applicant relies on s 10 of the Act. In
relevant part, it provides:

‘10 Unregistrable trade marks

The following marks shall not be registered as trade marks or, if registered, shall,
subject to the pr ovisions of sections 3 and 70, be liable to be removed from the
register:

(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 wh ich 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 regis tration 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 with would be likely to take unfair advantage of, or be d etrimental to, the
distinctive character or the repute of the registered trade mark, notwithstanding the
absence of deception or confusion, unless the proprietor of such trade mark
consents to the registration of such mark:

Provided that a mark shall not be refused registration by virtue of the provisions of
paragraph (2) or, if registered, shall not be liable to be removed from the register by
virtue of the said provisions if at the date of the application for registration or at the
date of an applicatio n for removal from the register, as the case may be, it has in fact
become capable of distinguishing within the meaning of section 9 as a result of the
use made of the mark ’.6

[28] In relation to the infrin gement relief, s 34 of the Act in relevant part provides:

’34 (1) The rights acquired by registration of a trade mark shall be infringed by –


6 Section 9 pertains to registrable trade marks.
(a) the unauthorised use in the course of trade in relation to goods or services in
respect of which the trade mark is registered of an identical mark or of a mark
so nearly resembling it as to be likely to deceive or cause confusion;

(b) …

(c) the unauthori sed 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 o f, 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 ).

(3) Where a trade mark registered in terms of this Act has been infringed, any
High Court having jurisdiction may grant the proprietor the following relief,
namely —

(a) an interdict;

(b) an order for removal of the infringing mark from all materia l and, where the
infringing mark is inseparable or incapable of being removed from the material,
an order that all such material be delivered up to the proprietor.’

[29] The applic able test under s 10(12) was formulated thus in Smith Hayden & Co
Ltd Appn7 (the Smith Hayden test):

‘Having regard to the reputation acquired by the name ‘Hovis’, is the court satisfied
that the mark applied for, if used in a normal and fair manner in connection with any
of the goods covered by the registration proposed will not be reasonably likely to

7 Smith Hayden & Co Ltd Appn (1946) 63RPC 97 at 101, ln 39.
cause deception and confusion amongst a substantial number of persons’ .
(emphasis provided)

[30] The Smith Hayden test was adopted in our law.8 In relation to s 10(14), the test
requires a court to postulate notional use by the applicant of its registered trade mark in
respect of some or all of the goods covered by the registrations r elied on and use in a
normal and fair manner of the respondent’s trade mark in respect of any of the goods
covered by its registration.9

[31] The tests under s 10(12), s 10(14) and s 34(1)(a) are similar and relate to
whether the respondent’s trade mark is similar, alternatively so similar that it is likely to
cause confusion or deceive the consumer into thinking that the FRESH CHOICE mark
emana tes from or is somehow connected to the applicant’s FIRST CHOICE mark.

[32] In the present context, in terms of s 10(12) a mark shall not remain registered if,
inter alia , its use would be likely to deceive or cause confusion. In terms of s 10(14) a
trade mark shall not remain registered if it is identical or so similar to a prior registered
trade mark of a different proprietor that the unauthorised use thereof in relation to the
same or similar goods as those covered by the prior registered trade mark, w ould be
likely to deceive or cause confusion. It was undisputed that the applicant’s trade mark
was registered first. Section 34(1)(a) pertains to where rights acquired by the applicant
through the registration of a trade mark are infringed by unauthorised use in the course
of trade , in relation to goods in respect of which the applicant’s trade mark is registered,
by another person of an identical mark or one so nearly resembling it as to be likely to
deceive or cause confusion.

[33] The test for compari ng marks was set out in Plascon -Evans Paints (Pty) Ltd v
Van Riebeeck Paints (Pty) Ltd10 and the numerous cases which followed . The

8 Oils International (Pty) Ltd v Wm Penn Oils Ltd 1965 (3) SA 64 (T) at 67F -H; confirmed in Wm Penn Oils
(Pty) Ltd v Oils International (Pty) Ltd 1966 (1) SA 311 (A) at 317C -E.
9 Orange Brand Services v Account Works Software 2013 BIP 313 (SCA) paras 6 -7.
10 Plascon -Evans Paints (Pty) Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 641A -641E.
requirements are well known and do not require repetition. The nature of a notional
consumer was explained thus in Adidas AG and Another v Pepcor Retail Ltd (Adidas) :
11

‘When considering whether the public will be confused or deceived by an implied
representation the court must postulate neither the very careful nor the very careless
buyer, but an average purchaser, who has a good idea in his mind’s eye of what he
means to get but not an exact and accurate representation of it. The court
must also take into account that the purchaser will not necessarily have the
advantage of seeing the products side by side and will not be alerted to fine points of
distinction or definition. The court must further take into account that the purchaser
may not be able to read simple words as t here are many people in South Africa that
are illiterate.’

[34] A likelihood of confusion must be appreciated globally. Global appreciation of
visual , aural or conceptual similarity of the marks in question must be based on the
overall impression given by the marks, bearing in mind, in particular, their distinctive and
dominant components’12 The question of deception or confusion for purposes of
infringement requires a comparison of the allegedly offending mark with the registered
mark. Unlike passing -off the get up or trade dress of the goods is irrelevant.13 The value
judgment is largely a matter of first im pression; there should not be an undue peering at
the two marks to find similarities and differences.14 As held in Compass Publishing BV v
Compass Logistics Ltd : 15

‘The likelihood of confusion must be appreciated globally, taking account of all
relevant factors. It must be jud ged through the eyes of the average consumer of the

11 Adidas AG and Another v Pepcor Retail Ltd [2013] ZASCA 3 at para 3, with reference to Blue Lion
Manufacturing (Pty) Ltd v National Brands Ltd 2001 (3) SA 884 (SCA) para 3.
12 Adidas supra para 21.
13 Adidas supra para 23
14Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd 2016 BIP 269 (SCA), para 26.
15 Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch) at [24] – [25], cited with
approval in Century City Apartments Property Services CC and Another v Century City Property Owners’
Association 2010 (3) SA 1 (SCA) at 7E -J, para [13].
goods or services in question. That customer is to 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 th e 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 ove rall 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 unde rtakings, there is
a likelihood of confusion.’

[35] There must be a probability that a substantial number of persons will be deceived
or confused requires a number of persons which are ‘not negligible’.16 Confusion or
deception exists when someone believes something that is false or incorrect. To
confuse is to cause bewi lderment, doubt or uncertainty.17 It is sufficient if there is
momentary confusion only for a short time, albeit that such confusion may later be
cleared up.18 A reasonable likelihood of confusion in any one of the respects of sense,
sound and appearance will suffice to give rise to deception or confusion.19 Actual
instances of confusion and deception need not be shown. 20

[36] Section 15 of the A ct deals with disclaimers . It provides:

‘If a trade mark conta ins matter which is not capable of distinguishing within the
meaning of section 9 21, the registrar or the court, in deciding whether the trade shall

16 Danco Clothing (Pty) Ltd v Nu -care Marketing Sal es and Promotions (Pty) Ltd 1991 (4) SA 850 A at
861G -H.
17 John Craig (Pty) Ltd v Dupa Clothing Industries 1977 (3) SA 144 (T) at 150 H.
18 Orange Brand Services v Accounting Works Software 2013 BIP 313 (SCA) at para [ 13].
19 Cavalla Ltd v International Tobacco Co 1953 (1) SA 461 (T) at 468 G - H.
20 Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530 (T) at 540 A.
21 It provides: ‘(1) In order to be registrable, a trade mark shall be capable of distinguishing the goods or
services of a person in respect of which it is registered or proposed to be registered from the goods and
services of another person either generally or, where the trade mark is registered of proposed to be
registered subject to limitations, in relation to use within those limitations.
be entered in or shall remain on the register, may require, as a condition of it being
entered in or remaining on the reg ister:

(a) that the proprietor shall disclaim any right to the exclusive use of all or any
portion of any such matter to the exclusive use of which the registrar or the court
holds him not to be entitled;

(b) that the proprietor shall make such other dis claimer or memorandum as the
registrar or the court may consider necessary for the purpose of defining his
rights under the registration:

Provided that no disclaimer or memorandum on the register shall affect any rights of
the proprietor of a trade mark except such as arise out of the registration of the trade
mark in respect of which the disclaimer is made’.

[37] It is well established tha t a disclaimer is theoretically never necessary, since
registration of a trade mark cannot give rise to any rights except those arising from a
trade mark as a whole. A registered proprietor cannot institute an action for trade mark
infringement in respect of the use of the disclaimed feature alone. Its primary purpose is
to prevent the registration of a composite mark from operations so as to inhibit the use
of the disclaimed element by others. Its ancillary use is to prevent the monopolisation of
ordinary, common, laudatory or descriptive words in language, which are not inherently
distinctive.

[38] It is trite that courts are entitled to take a disclaimed feature into account in
deciding whether the infringer’s mark , as a whole, so nearly resembles the proprietor’s
mark as to be likely to deceive and cause confusion. The presence of a word or words,
which although disclaimed, are less well known and are less currently used, may result

(2) A mark shall be considered to be capable of distinguishing within the meaning of subsection (1) if, at
the date of application for registration, it is inherently capable of so distinguishing o r it is capable of
distinguishing by reason of proper use thereof’.
in confusion. In this regard , the nature of the disclaimed feature and plays an important
role in the comparison of marks. 22

[39] In Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc , 23 in
considering the effect of the disclaimer, the Supreme Court of Appeal referred with
approval to Amer ican Cigarette24 and held:

“This seems to me to have been the basis upon which the Court in that case came
to the conclusion that, in comparing the marks as a whole – i.e. having regard to the
device together with the disclaimed feature, - there was such a similarity as to be
reasona bly likely to cause confusion. Although, therefore, the word “Lafayette” was
expressly disclaimed it was nevertheless such a dominant feature of both marks,
and was, in this country at any rate, so striking and unusual, that if used in both
marks deception and confusion would be likely to ensue. Where a disclaimed feature
is so dominant or so striking as it was in that case, it may well have the effect of
overriding any differences which might be apparent in the devices themselves. The
ultimate test is, aft er all, as I have already indicated, whether on a comparison of the
two marks it can properly be said that there is a reasonable likelihood of confusion if
both are to be used together in a normal and fair manner, in the ordinary course of
business. Where the disclaimed features are common to the trade, or are of such a
commonplace and non -distinctive character as the brush and tube device in the
present case, then full effect should be given to the disclaimer. Although one would
still have regard to the ma rks as a whole, the disclaimed features will, in such event,
be of less account than if they had been more dominant or striking. ”

[40] Where disclaimed features are common to the trade, or are of such a
commonplace and non -distinctive character, full effe ct should be given to the disclaimer.

22 Registrar of Trade Marks v American Cigarette Co 1966 2 SA 563 (A) ( American Cigarette ).
23 Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc 1995 (2) SA 903 (A).
24 Registrar of Trade Marks v American Cigarette Co 1966 (2) SA 563 (A) at 574G -H.
One would still have regard to the marks as a whole, but the disclaimed features will, in
such event, be of less account than if they had been more dominant or striking.25

Comparison of the marks to determine similarity and likelihood of confusion or
deception

[41] The central issue to determine is whether Sansom’ s FRESH CHOICE trade mark
is similar to that of Woodlands’ FIRST CHOICE trade mark, alternatively , so similar that
it is likely to cause confusion or deceive the consumer into thinking that the FRESH
CHOICE mark emanates from or is somehow connected to the FIRST CHOICE mark.
That will inform whether cancellation relief is to be granted under s 10(12) or 10(14) of
the Act and/or infringement relief under s 34(1)(a) of the Act.

[42] The parties’ respective registered trade marks comprise not only of the word s or
phrase FIRST CHOICE and FRESH CHOICE, but of composite marks. They are
referred to in paragraph 2 above.

[43] The applicant submit ted that the words ‘FIRST CHOICE ’ constitute the dominant
part of the mark , being the spoken portion thereof and that the respondent’s mark is
visually and phonetically very similar , resulting in confusion or deception . The applicant
relied heavily on the incorporation of the identical second word, ‘CHOICE ’. It also
submitted that there was a ‘phonetical similari ty’ between the words ‘FIRST ’ and
‘FRESH ’ and that they have three letters in common, being F, R and S. It was submitted
that the slight visual and phonetic differences were very likely to be overlooked by
consumers, given their tendency to recall trade ma rks imperfectly.

[44] The respondent on the other hand contended that the marks were not
confusingly similar as the phrase ‘FIRST CHOICE ’ was descriptive in nature and was
disclaimed, thus the applicant could not rely on the Act to prevent use by other p arties
of the said phrase separately and apart from its composite marks. It pointed out various

25 Ibid at 912H -I.
differences between the marks and submit ted that the marks must be considered as a
whole, taking into account its disclaimers.

[45] There is an interdependence between the two legs of enquiry regarding
confusing similarity and whether there is a likelihood of deception or confusion; the less
the similarity between the respective goods and services of the parties, the greater will
be th e degree of resemblance required between their respective marks before it can be
said that there is a likelihood of deception or confusion in the use of the allegedly
offending mark and vice versa .26 The more distinctive the trade mark is, or the greater
its reputation, the greater the likelihood that there will be deception or confusion where a
similar mark is used on a competing product.27 In the present instance the parties are
direct competitors who sell similar goods .

[46] In order to test for deception and confusion, the features of the respective marks
which are dominant must be identified. If they share a dominant feature, there will
ordinarily be a greater likelihood of deception or confusion. The marks would be used in
relation to dairy products. They would be directed at the same consumers and the same
trade channels, being stores where food supplies can be purchased. In some instan ces,
the parties’ respective products may be displayed in close proximity, whereas in others,
an outlet may only carry one of the parties’ products or display them separately.

[47] The sound made for the first part of the syllable ’Fi’ in FIRST is distinct from the
sound ‘Fre’ in the first syllable of FRESH. The shape of the mouth is also different. It is
well established that the first syllable of a word is generally the most important in
considering the likelihood of confusion.28 The last part of the words are also different in
comparing the ‘St’ in FIRST and the ‘Sh’ in FRESH . The total sound of the respective
words when pronounced is di stinct . It was further undisputed that the letters F, R and S
are used in two other marks registered in class 29, being FISHERMAN’ S CHOICE and
FARMER’S CHOICE. The applicant cannot claim exclusivity in those letters.

26 New Media Publishing (Pty) Ltd v Eating Out Web Services CC 2005 (5) SA 388 (C) at 393I, 394 C -F.
27 Adidas para 24.
28 Nova rtis v C ipla Medpro (Pty) Ltd (728/17) 2018 BIP 268 (SCA) at para 14.

[48] On a grammatical level, the words FRESH and F IRST have different meanings.
According to the Oxford Dictionary, ‘fresh’ when used a s an adjective relating to food -
means recently made or obtained, not tinned, frozen or otherwise preserved, not
previously k nown or used , new or different, recently created or experienced and not
faded or impaired; as an adverb - newly, recently. First on the other hand , means
number one, coming before all others in time or order, earlies t, never previously done or
occurring, f oremost in position or rank or importance, in preference, goods of the best
quality , earliest, foremost, principal, highest, greatest, paramount, top, initial ,
introductory or original . First and F resh are normal words in the English language.

[49] The word CHOICE is also a normal word in the English language . On a
grammatical level, the word ‘choice’ means , if a noun - an act of choosing between two
or more possibilities. If an adjective pertaining to food - of very good quality. None of
the three are made -up words which render them distinctive. They are words in general
usage in trade and are of a descriptive of an adjective nature.

[50] The word CHOICE is no more than a descriptive word or a laudatory epithet
which is itself inherently incapable of being distinguishable without more . A value
judgment is required to determine whether a laudatory word like ‘CHOICE’ can through
use become distinctive.29 It was undisputed that there are other marks registered in
class 29 in use which incorporate the word ‘CHOICE’, such as HEALTH CHOICE,
FISHERMAN’S CHOICE, CHEF’S CHOICE, BEST CHOICE, M Y CHOIC E and
FARMER S CHOICE . albeit that the applicant sought to differentiate them as they
related to different types of foodstuffs and had other distinctive characteristics . The
argument does not avail the applicant, given that the respondent’s trade mark also
contains other d istinctive characteristics.


29 First National Bank of Southern Africa Ltd v Barclays Bank P LC & Another [2003] 2 All SA 1 (SCA) at
para 16
[51] I am further not persuaded that the applicant has established that as a result o f
the extensive use of the applicant of its FIRST CHOICE trade mark, the phrase FIRST
CHOICE’ of itself has acquired a secondary trade mark meaning or ha s become
distinctive through use . That statement is a conclusion, not underpinned by any primary
facts or evidence and disregards a consideration of the mark as a whole.

[52] The word CHOICE is an ordinary word in everyday use (in distinction to an
invented or made -up word) and it does not follow that confusion would probably arise if
it is used in combi nation with another word. What must be considered, therefore, is
whether the notional customer of average intelligence, viewing the marks as a whole or
looking at the dominant features of each mark, is likely to be confused or deceived into
believing that dairy products bearing the word FRESH CHOICE w ere connected in the
course of trade with the FIRST CHOICE trade mark. The common element of the marks
is of minor significance when the marks are looked at as a whole. It is not possible to
ignore the word FRE SH in the respondent’s mark and it is unlikely that the notional
purchaser of the respondent’s products would focus attention only on the word
CHOICE. The first word is as significant as the latter and the two words used together
sufficiently distinguishes the respondent’s products from those of the applicant,
specifically when considered together with the pictorial elements of the mark.

[53] The words FIRST and FRESH are similarly no more than laudatory epithets of a
descriptive nature. They ‘contribute nothing to identifying the source of the goods which
it prompted ’. 30 These words these are common to trade and of a non -distinctive
character when viewed in isolation.

[54] As held by the Supreme Court of Appeal in First National Bank::31


30 On-line Lottery Services (Pty) Ltd v National Lotteries Board and Another 2010 (5) SA 349 (SCA) para
32.
31 First National Bank of Southern Africa Ltd v Barclays Bank PLC & Another [2003] 2 Al l SA para 15; LA
Group (Pty) Ltd v Stable Brands (Pty) Ltd & Another 2022 (4) SA 448 (SCA) para 108.
‘Because a common laudatory word is naturally capable of application to the goods
of any trader that one must be careful before concluding that merely i ts use,
however substantial, has displaced its common meaning and has come to denote
the mark of a particular trader. That is all the more so when the mark has been used
in conjunction with what is obviously taken as a trade mark’ .

[55] The words “FIRST” and “FRESH” are similarly of a descriptive nature. In my
view, they are inherently incapable of distinguishing one person’s goods from another’s.
No amount of use of a purely descriptive term can make it distinctive. As held by Wallis
JA in Yuppiechef Hold ings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd,.32 ‘It is not the
purpose of trademarks or copyright to enable people to secure monopolies on the
commons of the English language’.

[56] Significantly, the applicant’s trade mark registration contains a disclaimer and
gives ‘ no right to the exclusive use of the words ‘FIRST CHOICE’, separately and apart
from the mark. The respondent’s registered mark contains a similar disclaimer and
gives ‘no right to the exclusive use of the words “FRESH’ and ‘CHOICE’ separately and
apart fr om the mark.

[57] I am persuaded that here, as in Smithkline33, the disclaimed features are
common to the trade or are of such a commonplace and non -distinctive character so
that full effect should be given to the disclaimer. Although one w ould still have regard to
the marks as a whole, the disclaimed features will, in such event, be of less account
than if they had been more dominant or striking. In the present instance, the disclaimed
features are neither dominant or striking.


32 Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd [2016] ZASCA 118 para 38.
33 Fn 23 supra.
[58] It can not be concluded, as the applicant submit ted, that the FIRST CHOICE
phrase is so dominant as to be strikingly unusual despite being disclaimed.34 Of
themselves, the words are neither unusual nor unfamiliar in a South African context.

[59] Further guidance can be found in Bata Ltd v Face Fashions Cc & Another .35
There, the Supreme Court of Appeal held that there were numerous trade mark
registrations in South Africa in respect of clothing which incorporate or include the word
‘Power ’. It was held that the word w as an ordinary word in everyday use, as distinct
from an invented or made up word, and it could not follow that confusion would probably
arise if it was used in combination with another word. In Bata, the Supreme Court of
Appeal further held tha t if full effect was given to the app ellant’s argument, similar to the
one raised by the applicant here (namely that the word ‘Power ’ was likely to lead to
confusion despite the fact that it was used in conjunction with another word), it would
result in th e appellant having a virtual monopoly on the word ‘Power ’ on clothing.

[60] In my view, the s ame applies to the word ‘CHOICE’ in the current context. In the
papers, there ar e various examples of the word ‘CHOICE’ being used in relation to
foodstuffs, albe it different ones to the products here in issue. ‘ A court is careful not to
interfere with other person’s rights further than is necessary for the protection of the
claimant, and not to allow any claimant to obtain a monopoly further than is consistent
with reason and fair dealing’ .36 If full effect is given to the applicant’s argument, it would
result in the applicant having a virtu al monopoly on the word ‘CHOIC E’ in relation to
dairy products and other goods registered in Class 29.

[61] I am fortified in this view by the disclaimer in relation to the word s FIRST
CHOICE. As pointed out by Harms Ja in Cadbury (Pty) Ltd v Beacon Sweets &
Chocolates (Pty) Ltd & Another 37:


34 In contrast see Registrar of Trade Marks v American Cigarette Co 1966 (2) SA 563(A).
35 Bata Ltd v Face Fa shions CC & Another 2001 (1) SA 844 (SCA) para 10.
36 Quad Africa Energy (Pty) Ltd v The Sugarless Company (Pty) Ltd & Another 2020 (6) SA 90 (SCA).
37 Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd & Another 2000 (2) SA 771 (SCA) para 13.
“…a disclaimer is, theoretically, never necessary since registration of a trade mark
cannot give rise to any rights except those arising from the mark as a whole. It
nonetheless has a function. Primarily, it is to prevent the registration of a composite
mark from operating so as to inhibit the use of the disclaimed element by
others…Statut ory monopolies are the exception, not the rule and they need to be
justified…”.

[62] In reply, the applicant stated its intention to apply for the removal of the
disclaimers on the basis that there has been a change in circumstances and that its
marks hav e acquired distinctiveness which militates against the disclaimers. However, it
contended that this was not be considered as any admission of the respondent’s
contentions . I do not agree. I n my view , it illustrate s that the applicant appreciates the
hurdle the disclaimers present to their present claims. In any event, the marks must be
considered in their present state of registration and any future intention on the part of
the applicant is irrelevant .

[63] The applicant places undue emphasis on the alleged phonetic and visual
similarities of the words. A holistic approach must be taken to consider the whole of the
marks. The entirety of the two marks, as they appear in the register must be considered.
An app licant cannot informally extend the ambit of the registered mark. Each allegedly
infringing mark must be compared with each registered mark as it is recorded in the
register to determine whether deception or confusion is likely. It is the mark as it
appear s on the register that the trade mark owner is entitled to protect.38 The applicant’s
focus on the phrase “FIRST CHOICE” is thus misconceived, given that its registration
applies to the composite mark and not to the said words in isolation.

[64] On a visual level, the designs of the two marks are substantially distinct, both in
font choice and in the visual appearance of t he mark s. The marks must be considered
as a whole. Although the applicant’s mark has a disclaimer, our courts have held that a
court will consider the marks as a whole including the disclaimed features in order to

38 Adidas supra para 16.
assess whether confusion or deception is l ikely to arise. Although the applicant has the
right to use any colours, the colours appearing on its products are distinctly different
from those of the respondent. The designs, shapes, font style and font size and colours
are substantially different.

[65] The n otional use to which applicant may put its mark must be considered within
the ambit of the monopoly created by the terms of the registration. That requires
consideration of ’all possible fair and normal applications of the mark within the ambit o f
the monopoly created by the terms of the registration’ . 39 Notional use requires that
notice must be taken of the full range of permissible fair use of the registered mark, in
relation to any of the goo ds in respect of which it is registered, and must embrace all
ways in which the marks are likely to be employed in fair and notional use, e .g. use of
the mark with a generic description of the goods’.40 Such consideration requires that the
applicant’s marks must also be considered not ionally in the colours used by the
respondent, as its regist ration entitles it to use them.

[66] The impression created by the FIRST CHOICE mark creates a formal
impression, given the formal evenly matched font style with no additional embellishment
of the font style or words. The words are in a bold black font. The FIRST CHOICE mark
comprises of two banner shapes, one superimposed horizontally across the vertical one
with the word emblazoned on the horizontal banner. The design of the banner with a
ribbon like triangular shape is distinctive. The Applicant is ent itled to use the FIRST
CHOICE mark in various different colour combinations, including with a red, green or
blue vertical ribbon. The words FIRST CHOICE appears in a black font on a yellow
banner.

[67] The impression created by the FRESH CHOICE mark is d ifferent and more
informal. It appears in an uneven wavy or squiggly font. The font is dark blue with a
thick white border encircling the letters. The FRESH CHOICE mark does not appear on

39 Bata para 6.
40 Ibid, paras 8 and 9.
or together with any distinctive shape as part of its design. The wr iting is superimposed
on a green rectangular shape, visually different from that of the applicant.

[68] In my view, the applicant’s emphasis on the phrase ‘FIRST CHOICE’ disregards
the distinctive nature of the pictorial elements of the two marks and ign ores the totality
of the registered marks . The designs are manifestly different and the words cannot be
considered in isolation. It must be borne in mind that the phrase ‘FIRST CHOICE ’, only
forms part of the composite mark, which must be considered as a whole. The use by the
respondent of the logo FRESH CHOICE with the depiction of a cow, is not in my view
confusingly similar to the applicant’s mark.

[69] The notional customer who wou ld be likely to purchase the kind of goods to
which the marks are applied, would be normal consumers who use dairy products on a
daily basis. Those products are of a basic nature rather than a specialised one, such as
those sold to persons with dietary res trictions or allergies. The notional consumers of
these products would purchase these products on a regular basis as part of their
shopping cart in various types of shops which sell every day foodstuffs and other
commodities.

[70] A notional customer wi ll consider the marks as a whole, considering their specific
designs, shapes, font size and type, style and colours. The designs are as important as
the words. It is the composite design and the pictorial elements of the applicant ’s mark
which is distinct, rather than the words FIRST CHOICE .

[71] The common element of the marks being the word ‘Choice’ is of minor
significance when the marks are looked at as a whole. The word ‘First’ as opposed to
the word ‘Fresh ’ is distinctive and cannot be ignored. When the marks are compared
side by side, and the main or dominant features of the phrases in the m arks are
considered , namely the words F IRST and F RESH , there is no likelihood of deception or
confusion by virtue of the differences already referred to .41

[72] Even if the marks are not considered side by side, the overall impression left by
each is distinct, rather than confusingly similar. The noti onal customer, being a person
of average intelligence, having proper eyesight, and buying with ordinary caution, would
focus on the mark as a whole, rather on the spoken or word aspects thereof. The
pictorial features of the marks are their striking featur e, rather than the words used. The
words “First’ and “Fresh’ are the distinctive feature of the relevant phrases. As held by
our courts, marks are remembered rather by general impressions or by some significant
or striking feature, than by a photographic r ecollection of the whole. If anything, focus
would be placed on the visual and pictorial appearance of the marks as a whole, given
that a substantial percentage of users of dairy products may not be first language
English speakers.

[73] It must be borne in mind that the consideration of the marks is confined to the
marks themselves and no regard should be had to other features of the get -up or other
indications of origin of the goods as marketed by the respective parties.42 In considering
an objective global comparison between the applicant’s r egistration and the
respondent’s actual use of its mark , I am not persuaded that the marks are similar or
likely to result in confusion or deception , even if the respective parties’ dairy products
are similar . Leaving aside the colour differences between the respective marks in
considering the notional use to which the applicant may put its mark, the global
impression of the marks seen as a whole is in my view substantially different.

[74] In my view, the applicant did not establish that the parties’ respective marks
resemble each other so closely that there i s a likelihood that deception or confusion will
occur , considering the dominant features of the marks as well as the general impression

41Lucky Star Ltd v Lucky Brands (Pty) Ltd & Others 2017 (2) SA 588 (SCA), a pplying the reasoning in
para 10.
42 Ibid para 7.
and any striking features.43 It is d ifficult to imagin e that the notional purchaser would
ignore the visual impression of the marks and focus attention only on the word ‘Choice ’
as the other words , ‘First’ and ‘Fresh ’ are at least equally significant.

[75] From an o verall impression, the marks do not resemble each other closely and
the average customer would not be confused or deceived into believing that the
respondent ’s products are in any way associated with the app licant. The marks are
sufficiently dissimilar to each other that no amount of similar ity between the respective
goods or services of the parties will suffice to bring about an inf ringement.44

[76] I conclude that that the applicant has not established that the respondent’s trade
mark is similar, alternatively so similar that it is likely to cause confusion or deception.
That is fatal to the relief sought under s10(12) and s10(14) of the Act.

[77] Turning to the i nfringement relief sought under s 34(1)(a) of the Act, the above
conclusions are by and large dispositive of the relief sought. For infringement to be
established, it must be established that consumers are likely to interpret the mark, as it
is used by the third party, as designating or tending to designate the undertaking from
which the third party’s goods originate. If the use creates an impression of a material
link between the product and the owner of the mark, there is infringement, otherwise
not.45

[78] In argument, the respondent relied on the similarities between the present facts
and those in Lucky Star Ltd v Lucky Brands (Pty) Ltd & Others46, concerning the
appellant’s canned fish and restaurants operated by the respondent in Cape Town. It
concerned the phrases ’ Lucky Star ’ used by the appellant and ‘Lucky Fish ’ and ‘Lucky
Fish & /and Chips ’ used by the respondent . The S upreme Court of Appeal focused on
the requirements of s 34(1)(a) and whether a substantial number of persons would

43Bata Ltd v Face Fashions CV and Another 2001 (1) SA 843 (SCA).
44 New Media Publishing (Pty) Ltd v Eating Out Web Services CC 2005 (5) SA 388 (C) para 11
45 Adidas supra para 14 and the authority cited therein.
46 Lucky Star Ltd v Lucky Brands (Pty) Ltd & Others 2017 (2) SA 588 (SCA)
probably have been deceived into believing or confusion as to whether there was a
material connection in the course of trade between the resp ondent’s goods and services
and the appellant’s trademark. It held not. Whilst each case must be determined on its
own facts, the application of the principles is instructive in the present context .

[79] The test under s 34(1)(a) is the same as under s 10(14). I have already
concluded that the applicant has not established that the marks are confusingly similar
and that there is no likelihood of confusion or deception. The applicant has also not in
my view established that the use by the respondent of it s trade mark creates an
impression of a material link between its products and the applicant. The contentions
advanced by the applicant are conclusions, and are not supported by any primary facts
or evidence. I conclude that the applicant has not establish ed the requirements of s
10(12), 10(14) for cancellation relief nor for in fringement relief under s 34(1)(a) of the
Act.

The relief sought under s 10(17) and s 34(1)(c) of the Act

[80] The test under s 10(17) and s 34(1)(c) is similar and the same authorities apply.
Section 10(17) of the Act is an anti -dilution provision which is self -standing and has its
own requirements. The Legislature, by introducing the anti -dilution provisions,
recognised that protection should be extended beyond merely ‘protecting the mark as a
badge of origin ’.47

[81] It has its counterpart in respect of infringement in s 34(1)(c), which is aimed at
protecting the commercial value that attaches to the reputation of the mark, rather than
its capacity to distinguish the goods or services of the proprietor from those of ot hers.48
It protects the reputation, advertising value or selling power of a well -known mark.49 It is
not necessary that there is any likelihood of confusion or deception. The degree of

47 National Brands Limited v Cape Cookies CC and Anothe r (309/2022; 567/2022) [2023] ZASCA 93 (12
June 2023) at para 17.
48 National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA) para 11.
49 Verimark (Pty) Ltd v BW AG; BMW AG v Verimark (Pty) Ltd [2007] ZASCA 53 ( 17 May 2007) para 13.
knowledge required for a trade mark to be ‘well -known in the Republic’ in the context of
s 10(17) would be similar to that in the law of passi ng off, namely that the reputation
must extend to a substantial number of members of the public or persons in the trade in
question.50

[82] The dilution provisions can be invoked either because unfair advantage has been
taken of a registered trade mark or where the use by another is detrimental t o the
distinctive character or repute of a well -known registered trade mark. Its object is to
avoid blurring or tarnishing of a trade mark. Although a court must be satisfied by
evidence of actual detriment or of unfair advantage, economic harm may be self -
evident from the primary facts such as where competing products are being sold and
the increased sales of the infringing product would be at the expense of the registered
proprietor. The advantage or detriment complained of must be of a sufficiently
significant degree to restrain the use of the trade mark.51

[83] Where a trade mark proprietor proves a likelihood of deception or confusion, it
follows th at the mark is likely to take unfair advantage of the registered trade mark and
he would succeed on the first leg of the enquiry. Despite the likelihood of confusion or
deception not being a requirement, it may nevertheless play a role in enquiries under s
10(17) of the Act.52

[84] The applicant submitted that the evidence demonstrate d that it has made
consistent widespread and extensive use of the FIRST CHOICE trade mark in
association with its dairy products for more than 27 years and has established
significant goodwill and common rights in and to its trade mark . As stated, the
respo ndent conceded the applicant’s reputation in its composite mark .


50 Mc Donald’s Corporation v Joburgers Drive -In Restaurant (Pty) Ltd; Mc Donald’s Corporation v Dax
Prop CC; and Mc Donald’s Corporation v Joburgers Drive -In Restaurant (Pty) Ltd 1997 (1) SA 1 (A) at
21C-D; 27H -28J.
51 Sociéte des Produits Nestlé SA v International Foodstuffs Co 2014 BIP 317 (SCA) (Nestle) paras 51 -
52.
52 Webster and Page: South African Law of Trade Marks (“Webster and Page ”) page, para 6.27, p6 -42.
[85] The applicant submitted that the dominant and striking element of the FIRS T
CHOICE mark is the phrase FIRST CHOICE and consumers w ould immediately identify
the a pplicant’s products wit h reference to that element. As such it was argued that it
must be accepted that the phrase FIRST CHOICE has acquired a reputation and a
secondary trade mark meaning over the years that serves as a badge of origin to
designate the applicant’s products as c onsumers are familiar with the phrase when
used in conjunction with dairy products and recognise that products sold under the trade
mark emanate from a single source, the applicant. It was submitted that e ven a
descriptive or disclaimed feature can through time become capable of distinguishing
products marketed and sold under the mark containing the disclaimed feature as a
result of extensive use . The circumstances which e xisted when the marks firs t
proceeded to registration have substantially changed, the disclaimers do not preclude it
from relying on and enforcing its common law trade mark rights in terms of s 15 of the
Act. As a result of extensive use they have acquired a secondary meaning when used in
relation to dairy and related products which enable the FIRST CHOICE trade marks to
perform the f unction of designating a single source of origin.

[86] The applicant further submitted that no evidence was produced by the
respondent to gainsay this . The difficulty with this argument is that the onus remains on
the applicant to prove its case and to present cogent evidence in support of the
conclusions drawn. The applicant relied on conclusio ns not underpinned by
substantiating primary facts. In my view, once fact is separated from conclusion, there is
little left of the applicant’s contentions, which primarily rest on conclusion s and
supposition. The argument that the applicant’s evidence est ablished a reputation in the
phrase ‘FIRST CHOICE’ separate and distinct of its mark is in my view not sustained by
the evidence presented.

[87] The applicant’s contention that customers who are already familiar with its FIRST
CHOICE trade mark are likel y to assume that the respondent’s goods sold under its
FRESH CHOICE device trade mark also emanate from the applicant and are likely to
overlook the small differences in the trade marks entirely and be deceived they are
buying the applicant’s product or in directly confused, is similarly based on supposition
rather than fact.

[88] The applicant’s argument is predicated o n there being a high degree of similarity
in the trade marks . Once th at falls away, there is little left. Although there is similarity in
the nature of the goods supplied by the respective parties, I have already concluded the
similarity between the parties’ respective trade marks is superficial and that the parties’
respec tive marks are distinct.

[89] The a pplicant contends as a fact that consumers are likely to assume that the
respondent’s goods sold under FRESH CHOICE device trade mark al so emanate from
the applicant and that they are likely to overlook small differences or be directly
deceived or indirectly confused . Although no evidence of actual confusion is required, it
would assist the applicant. Here its argument is based on unsubstantiated conclusions.

[90] The applicant relied on Nestle in submitting that its economic harm is self -evident
from the primary facts. I am not persuaded that the argument avails the applicant. In
the present instance, the primary facts presented are scant . The high water mark of the
applicant’s evidence is that the parties sell competing products. The remainder of the
applicant’s case relies on supposition and speculation not underpinned by primary facts.
From the evidence presented regarding the production levels of the parties, it is clear
that the applicant’s production by far exceeds that of the respondent and encompass a
far wider range of products sold throughout the Republic, whereas the respondent’s
product range is less extensive and limited to only the Eastern Cape.

[91] In my view it can thus not be concluded that the applicant has established that
the respondent’s mark would be likely to take unfair advantage of or be detrimental to
the distinctive character of the applicant’s mark.

[92] For these reasons, I am not persu aded that the applicant has established the
requirements of s 10(17) of the Act. In light of the conclusions reached, the applicant is
not entitled to the cancellation relief sought.

[93] I turn to consider the i nfringement relief sought under s 34(1)(c) of the Act. In
terms thereof, the rights in and to a well -known trade mark are also infringed by the
unauthorised use of a trade mark that is identical or similar to a prior registered well -
known trade mark where such use is likely to take unfair advantage of, or be detrimental
to, the distinctive character and repute of the registered mark, notwithstanding the
absence of any confusion or deception. The object of s 34(1)(c) of the Act is to avoid
blurring and tarnishing of a trade mark and requires evidence of actual detriment or of
unfair advantage of s sufficiently significant degree to justify rest raint of the use of the
offending trade mark.53

[94] The central issue is thus that of similarity an d a consideration of whether the
respondent’s use is likely to take unfair advantage of or be detrimental to the distinctive
character or repute of the applicant.

[95] According to the applicant, the respondent is making use of the trading name
‘Fresh Cho ice’, the FRESH CHOICE trade mark a s well as the respondent’s logo.
containing this phrase. It contends the marks are phonetically and visually confusingly
similar. In relation to the respondent’s logo depicting a cow and the words “fresh choice’
it submits that the illustration of the cow is descriptive and the phrases ‘est 2010’ and
‘premium quality’ are n ot distinctive and have no trade mark significance.

[96] The applicant’s focus is squarely on the phrase FIRST CHOICE compared to
FRESH CHOICE as the dominant element of the marks , which it contends is
confusingly similar and enables the respondent to ta ke unfair advantage of the
applicant’s reputation and goodwill to its mark, to its prejudice.


53 Nestle supra paras 51 -52.
[97] The Supreme Court of Appeal in Bata cautioned that the test in considering
similarity must not be given too broad a meaning, lest the net result if it were to stifle
competition: 54

‘…similar must obviously be construed in the context in which 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 monopoly 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.
I am inclined to hold, therefore, that the section does not apply if the two marks are
similar merely because they contain features of the same kind or because there is a
slight rese mblance between them….one of the meanings given to similar is ‘having a
marked resemblance or likeness. This seems to be an appropriate meaning to be
given to the word for purposes of the section ’.

[98] ‘Similar’ must thus be construed on the context in which it appears and should
not be given too wide or extensive interpretation for the purpose of s 34(1)(c). The
section does not apply where the two marks are similar merely because they contain
features of the sa me kind or because there is a slight resemblance between them. A
marked resemblance or likeness is required.

[99] There is a superficial resemblance between the marks, given that both marks
comprise two words and share the common word CHOICE, and the wor ds FRESH and
FIRST being one syllable words which share various letters. However, it cannot be
concluded that there is a marked resemblance given the disclaimers and the descriptive
nature of the words.


54 Bata supra para 14.
[100] There are various difficulties with the applic ant’s stance. First, for purposes of its
arguments, the applicant separates the phrase ‘ First Choice’ from the trade mark which
is registered. That argument does not bear scrutiny.

[101] Second, for the reasons already provided, the respondent’s mark does not have
‘a marked resemblance or likeness’ to that of the applicant, when considered as a
whole. The applicant over emphasises the spoken aloud aspects of the words FIRST
CHOICE and FRESH CHOICE and does not take the mark into account holistically.55 It
also disregards that many of the consumers of the parties’ respective products may not
be first language English speak ers and thus that the words would have less significance
in their choices.

[102] As stated, t here is a superficial resemblance between the respondent’s trade
mark and that of the applicant, given the use of the common word ‘choice’ and the fact
that the accompanying words first and fresh, both start with an “F”. The common
elements of the marks, being the word ‘ Choice’ is of minor significance if the marked as
considered as a whole. The word ‘Fresh’ as opposed to the word ‘First’ is different . So
are the pictorial portions of the mark. Seen holistically the two marks each contain other
distinguishing features, rendering the similarities superficial. Ultimately, the words
remain ordinary words in the English language which are not novel or made up, thereby
gaining some distinctiveness56. That likeness is not suffi ciently close to hold that they
are similar for purposes of s 34(1)(c).

[103] The FIRST CHOICE and FRESH CHOICE marks, as they appear in the regi ster
are in my view sufficiently dissimilar to each other that no amount of similarity between
the respective goods of the parties will suffice to bring about an infringement. The
overall impression which is created is that the marks do not resemble each other closely
and the average customer would not be confused or deceived into believing that the
respondent’s products are in any way associated with the applicant.

55 Lucky Star Ltd v Lucky Brands (Pty) Ltd & Others 2017 (2) SA 588 (SCA)
56 Such as in Plascon Evans supra or National Brands Limited v Cape Cookies CC & Another 2024 (2)
SA 296 (SCA), relating to Salticrax and Snackcrax, determined under s 10(17) of the Act.

[104] Third, it cannot be concluded that consumers will assume that the respondent’s
dairy products bearing its mark emanate from or are connected to the applicant. The
applicant has not established t hat the respondent is enabled to take unfair advantage of
its reputation or undermines the commercial value or selling power of its FIRST
CHOICE device trade mark , for reasons already provided . The applicant has further not
presented evidence of blurring or tarnishing of its trade mark, nor of any actual
detriment or unfair advantage of a sufficiently significant degree to justify restraint of the
use of the respondent’s trade mark .

[105] I agree with the respondent that the net effect of the relief sough t by the applicant
would be to create an unacceptable monopoly and unduly stultify freedom of trade, as
the Supreme Court of Appeal warned in Bata, because its attempt to disregard the
disclaimers and their impact amount to an attem pt to monopolise ordinary words in the
English language like ‘First’ and ‘Choice ’ even when these are used separately from its
own mark.

[106] The stifling of competition in such a manner would also amount to a misuse of
the statutory architecture of trad e marks law that flies in the face of its legislative
purpose.57 I conclude that the applicant has not established an entitlement to relief
under s 34( 1)(c) of the Act.

Passing off relief

[107] The delict of passing off has been defined by the Supreme Court of Appeal as:58

“Passing -off is a species of wrongful competition in trade or business. In its classic
form it usually consists in A representing, either expressly or impliedly (but almost
invariably by the latter means), that the goods or services marketed by him emanate

57 Lubbe NO and Others v Millenium Style (Pty) Ltd 2007 (6) SA 241 (SCA) para 2.
58 Jennifer Williams & Associates & Another v Life Line Southern Transvaal 1996 (3) SA 408 (A) at 418D -
G.
in the course of business from B or that there is an association between such goods
or services and the business conducted by B. Such conduct is treated by the law as
being wrongful because it results, or is calculated to result, in the improper filching of
another's trade and/or in an improper infringement of his goodwill and/or in causing
injury to that other's trade reputation. Such a representation may be made impliedly
by A adopting a trade name or get -up or mark for his goods which so resembles B's
name or get -up or mark as to lead the public to be confused or to be deceived into
thinking that A's goods or services emanate from B or that there is the association
between them referred to above.” 59

[108] In this regard, the difference between the test applicable in passing -off matters
and trade mark infringement matters was explained thus in Stellenbosch Farmer’s
Winery Ltd v Stellenvale Winery (Pty) Ltd :

“Inasmuch as the registration of a trade mark conf ers exclusive rights to the use of
such trade mark the enquiry whether such rights of exclusive use have been
infringed does not necessarily involve an inquiry as to whether the public is likely to
be misled . In passing -off cases the complaint is not base d upon any property rights
in a mark as such ; it is based on the likelihood that the similarity of another’s get -up
may mislead the public (Halsbury, 2nd ed Vol 32 p 614). The result is that in
passing -off actions the comparison is between the whol e get -up of the Applicant and
the whole get -up of the Respondent (Halsbury, 2nd ed p 614), whereas in
infringement of trade mark actions the enquiry is confined to a comparison of the
registered mark with that portion of the Respondent’s get -up which is al leged to
infringe the Applicant’s registered rights .”

[109] The relevant principles are stated thus by the Supreme Court of Appeal in
Adidas :


59 Jennifer Williams supra at 418D/G.
’28 The principles governing passing off are well established. Passing off occurs in
relation to goods or merch andise. When one trader represents to the public that his
goods or merchandise are the goods or merchandise of another trader. Where the
representation is implied, it will usually be made by the one trader adopting a name,
mark or get -up for his goods or m erchandise which so resembles that of the other
trader that there is a reasonable likelihood that ordinary members of the public, or a
substantial section thereof, may be confused or deceived into believing that the
goods of the former are the goods or mer chandise of the latter or are connected
therewith. Whether there is such a reasonable likelihood of confusion or deception is
a question of fact to be determined in the light of the p articular circumstances of the
case. In order to succeed in passing off p roceedings based upon an imp lied
representation the aggrieve d trader must establish, firs t, that the name, mark or get
up used by that trader has become distinctive of the trader’ s goods or merchandise
in that the public associates the na me, mark or get -up with the goods or
merchandise marketed by that trader and, secondly. That the n ame, mark or get -up
used by the other trader is so used as to cause the public to be confused or
deceived in the man ner described.

29 The degree of distinctiveness (o r the extent of the reputation) is of great
importance in passing off proceedings as it affects the issue whether the general
public will be confused or deceived into thinking, because of the similarity of the
name, mark or get -up, that the goods or merchandise of the second trader are those
of the first trader or are connected therewith. It follows that (just as in the c ase of
trademark infringement, the more distinctive the get up is (or the greater the extent
of its reputation, the greater the likelihood will be that the public will be confused or
deceived .

30 When considering whether the public will be deceiv ed or co nfused a court must
postulat e, an average purchaser who has a good idea in his mind ’s eye of what he
means to get b ut not an exact and accurate representation of it. The court must also
take into acc ount that the purchaser will not necessarily have the adv antage of
seeing the products side by side and will not be alerted to fine points of distinction or
definition. The court must further take into account that the purchaser may not be
able to read simple words as there are many people in South Africa that a re illiterate.

31 Finally, it must be borne in mind that the law of p assing off does not confer
monopolies on successful get -ups. A trader may, to an extent, copy the successful
get-up of a rival. However, the moment he copies it he will be at risk. The t rader will
only avoid liab ility for passing of if ‘he makes i t perfectly clear to the public that the
articles which is selling are not the other manufactur er’s but his own, so that there is
no probability of the ordinary purchaser being deceived.…. ’

[110] A disclaimer does not affect a proprietor’s right at common law. If the applicant
illustrates that use by the respondent of a disclaimed feature is likely to result in its
goods being passed off as the goods of the applicant, it is entitled to an int erdict .60 The
comparison is between the whole get -up of the applicant and the whole get -up of the
respondent. 61 Insofar as the likelihood of deception or confusion arising is concerned,
actual instances of deception and confusion do not need to be shown.62 The applicant
did not set out any evidence of actual confusion since the respondent started using its
fresh choice mark in 2011. Although that it not a requirement, that would have assisted
the applicant in discharging its onus.63

[111] If there is a likelihood of confusion or deception, there is usually a likelihood of
damage flowing from that.64 In considering whether the requisites for passing -off have
been established, a court will not have regard to disclaimers.65

[112] The proprietary right which is protected in an application for passing -off is
goodwill, which is comprised of a number of components.66 The only component of the

60 Cohrane Steel Products (Pty) Ltd v M -Systems Group [2017] ZASCA 189 at para13 and the authorities
cited therein, paras 14 and 22.
61 Stellenbosch Farmer’s Winery Ltd v Stellenvale Winery (Pty) Ltd 1957 (4) SA 234 (C) at 240.
62 Adidas supra 1976 (1 ) SA 530 (T) at 540 A.
63 Red Bull GmbH v Rizo Inverstments (Pty) Ltd 2002 BIP 319 T at 325H -326A.
64 Pioneer Foods supra at para [7].
65 Cochrane Steel Products (Pty) Ltd v M -Systems Group [2019] JOL 42326 (SCA) [13].
goodwill of a business that can be damaged by means of passing -off is its reputation.67
Reputation is generally proved by providing evidence of extensive use.68 For present
purposes, it can be accepted that the applicant has established goodwill and a
reputation in its trade mark. That was not disputed by the respondent.

[113] The question is whether the respondent represents, whether or not deliberately
or intentionally, that its goods are those of the applicant or are associated therewith.69
Such misrepresentation may occur by the respondent adopting the trade name, get -up,
mark or shape of the plaintiff or a name, get -up, mark or shape confusingly similar
theret o.70 The applicant must prove that the respondent’s use of the feature itself was
calculated to deceive and thus cause confusion and injury, actual or probable to the
goodwill of the applicant’s business. 71

[114] The applicant submitted that the respondent’s trade marks are too similar to its
own and a significant likelihood of deception or confusion exists amongst con sumers as
to the true source of the respondent’s products when it uses any mark, name or domain
name containing the phrase ‘fresh choice’ in connection with dairy products. It
contended that as a result of a misrepresentation by the respondent through use of any
mark, domain name or name containing the phrase fresh choice, its protectable goodwill
and reputation will be adversely affected and prejudiced. That will self -evidently result in
harm, given that the parties are competitors.

[115] Considering all the facts, I am not persuaded that the applicant has met the
necessary threshold. I have already dealt with the applicant’s contentions pertaining to
similarity and the risk of confusion or deception. Even if the disclaimed features are
taken into account, the differences between the marks by far outweigh their similarities.
Considering the respective get -ups and the respective marks as a whole from the

66 Cateram car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd [1998] 3 All SA 174 (A) at 181j..
67 Ibid 182a -e.
68 Cambridge Plan AG v Moore 1987 (4) SA 821 (D) at 837 B -E, approved in Hollywood Curl (Pty) Ltd
and Another v Twins Products (Pty) Ltd (1) 1989 (1) SA 236 (A) at 251 D-E.
69 Pione er Foods (Pty) Ltd v Bothaville Milling (Pty) Ltd 2014 BIP 486 (SCA) at para 76.
70 Jennifer Williams supra.
71 Adcock -Ingram Products (Pty) Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 436H -437C.
perspective of the average consumer likely to purchase the parties’ respective dairy
produc ts, there is n o likelihood that a substantial portion of those consumers are likely
to be confused or deceived into believing that the respondent’s products emanate from
the applicant. The applicant has not in my view established any likelihood of the
respondent’s good s being passed off as those of the applicant. Other than legal
conclusions unsupported by primary facts, there is no cogent evidence that the
respondent has imitated the applicant’s mark closely or that it has ‘acted out of a
common charade ’ ‘sailing as cl ose to the wind ’ without brewing up a storm of
deception’ .72

[116] I am further not persuade d that the applicant has established that the respondent
has attempted to ride on the coattails of the applicant’s reputation and goodwill.
Although the respondent did not in its affidavit elaborate on how its trade mark came to
be conceived, the onus remai ned on the applicant to establish the requirements for
relief. It follows that the applicant has not established the requirements of passing off
and is not entitled to interdictory relief on this basis.

[117] For these reasons, the applica tion must fail. The normal principle is that costs
follow the result. Considering the complexities involved, costs o n scale C are justified.

[118] In the result, the following order is granted:

[1] Leave is granted to t he first respondent to deliver the supplementary affidavit with
no order as to costs ;

[2] The application is dismissed with costs on Scale C.


_____________________________________
EF DIPPENAAR

72 Red Bull supra at 323F .
JUDGE OF THE HIGH COURT
GAUTENG, PRETORIA.


HEARING

DATE OF HEARI NG : 13 NOVEMBER 2024
DATE OF JUDGMENT : 10 MARCH 2025

APPEARANCES

APPLICANT’S COUNSEL : Adv. LG Kilmartin SC
Adv. JG Richards SC

APPLICAN T’S ATTORNEYS : Adams & Adams
Ms D Marriot

RESPONDENT’ S COUNSEL : Adv. P Eilers

RESPONDENT’S ATTORNEYS : Hahn & Hahn
Ms V Lawrence .