IN THE HIGH COURT OF SOUTH AFRICA
GAUTENG DIVISION, PRETORIA
CASE NO. 62288/2021
DELETE WHICHEVE R IS NOT APPLICABLE
(1) REPORTABLE: NO
(2) OF INTEREST TO OTHER JUDGES: NO
(3) REVISED: NO
\ ~\.n.~.~~.'.C.
DATE SIGNATURE
In the matter between:
SUPER GROUP AFRICA (PTY) LTD Applicant
and
THE SOUTH AFRICAN BREWERIES (PTY) LTD Respondent
JUDGMENT
AC SASSON , J
Introduction
[1) There are two applications before this Court:
1.1. The main application, brought by Super Group Africa (Pty) Ltd (Super Group -
applicant) against South African Breweries (Pty) Ltd (SAB -respondent) is for
interdictory and other ancillary relief based on SAB 's infringement of Super
Group's trade marks (as contemplated in section 34(1)(a, (b) and/or 34(1)(c)
of the Trade Marks Act1 (the TMA) , and passing-off under the common law.
1.2. The counter-application brought by SAB (the applicant) against Super
Group (the respondent) is for the expungement of Super Group's two trade
marks from the register of trade marks. The counter-application is brought
in terms of section 27(1 )(a) of the TMA. In the alternative, SAB seeks a
disclaimer to be entered against both trade marks, indicating that the
exclusive rights to the descriptive term "Seltzer" are disclaimed. I will
address the counter-application first, as it is dispositive of the matter. The
Registrar of Trade Marks is cited as the second respondent in the counter
application in her official capacity for the maintenance of the Trade Marks
Register. No relief is sought against the Registrar save to the extent that it
is necessary in the expungement application.
The facts
[2] Super Group is a multi-brand company with several brands in its portfolio.
Included in Super Group's portfolio of products is a product featuring the word
"Seltzer". It produces both still and sparkling water in South Africa and sells them
under the brand name "Seltzer". The range of Seltzer products comprises: (i) Seltzer
Original - a sparkling water flavoured from fruit sources; (ii) Seltzer Ute - a low GI
sparkling water containing no sugar and no aspartame; (iii) Seltzer Essence - a low
GI, naturally flavoured sparkling water containing no sugar, sweeteners or
preservatives.
[3] Super Group currently supplies several of South Africa's largest retailers with
the Seltzer product, such as Spar, Pick 'n Pay, Dischem, Clicks, and Food Lovers
1 194 of 1993.
2
Market (the top-end sector). In the convenience sector, Super Group supplies the
product to several of South Africa's largest fuel stations, including Engen , BP , Shell,
Total, Sasol, and various convenience stores, to name a few.
Super Group's trade marks
[4] Super Group holds two registered trade marks in South Africa that feature or
incorporate the word "Seltzer." The first is the word Selzer in a stylised font (the logo
mark), while the second is a label intended for use on containers such as bottles or cans
(the label mark). This label includes the word "Seltzer" together with additional elements,
including a ribbon device (or twist device) and descriptive wording (the label mark). For
ease of reference, both the logo and label trade marks will be referred to as Super
Group's trade marks. Super Group refers to these trade marks as the "original Seltzer
mark". The following are Super Group's two registered trade marks (the logo mark and
the label mark):
Trade Mark
1995/00621
(logo mark)
Trade Mark
2003/04711
(label mark)
[5] The logo mark is registered in relation to beer, ale, porter, mineral and aerated
waters, and other non-alcoholic beverages. The label mark is registered in relation to
beers, mineral and aerated waters, and other non-alcoholic drinks, fruit drinks and fruit
juices, syrups, and other preparations for making beverages.
3
[6] It is not disputed that Super Group currently does not use the above-depicted label
mark (the original label) on its products: It uses a different "get-up" label on its products,
which is depicted as follows:
[7] Although Super Group does not dispute that the "get-up" label is different from the
registered label, it disputes that it is "materially" different from its registered trade marks.
Super Group refers to the current label as the "refreshed Seltzer label". It therefore does
not come as a surprise that SAB launched a counter-application in terms of section
27(1)(b) of the TMA claiming that the "refreshed" label is markedly different to Super
Group's registered trade mark and that it falls to be expunged as Super Group has not
used the registered trademark for the past five years.
[8] It is also not in dispute that for approximately two decades prior to 2020, Super
Group was the only entity that used the word "Seltzer" as a trade mark in respect of
water-related products. SAB submits that the fact that Super Group (and its
predecessors) were, for some time, the only entity that used this "ordinary English" word
to describe their product is of no moment.
SAB Flying Fish Seltzer products
[9] In April 2020, SAB introduced an alcohol infused sparkling water to the
4
market, which it markets under a logo incorporating the words "FLYING FISH
SELTZER " (SAB 's get-up). It is depicted as follows on its products:
LIMON CLIME ........
Flying Fish stylised logo
[10) The following descriptors appear on SAB 's product:
10.1 On the front side of the SAB 's product the following words appear below the Flying Fish
logo: "SPARKLING ALCOHOLIC WATER WITH A DASH OF FRUIT JUICE ".
10.2 On the reverse side of SAB 's product, the following description appears below
the Flying Fish logo on the top of the label: "A HARD SELTZER , IT'S LIKE
SPARKLING WATER BUT WITH ALCOHOL AND A DASH OF FRUIT
JUICE ".
10.3 Also on the reverse side of SAB 's product but on the lower half of the label the
following description appears: "WATER ALCOHOL FINE BUBBLES A DASH
5
OF FRUIT JUICE".
[11] The evidence before court also shows that there are no fewer than twenty-five
products available on the market, marketed by various traders, which utilize the term
"seltzer" (and "hard seltzer") to describe their respective products. Furthermore,
approximately thirteen other traders have filed applications for trade marks incorporating
the word "seltzer." (Examples of some of these products are depicted in Annexure A).
The counter-application
The section 27(1)(b) non-use attack-use of different fonts and labels2
[12] SAS's counter-application is brought under section 24 of the TMA , which serves
as the general provision enabling all expungement applications. Under this section,
an interested party is entitled to apply for the rectification of the trade mark register,
including by removing any entry that is "wrongly made in or wrongly remaining on" the
register.
[13] The ambit of the dispute in the present case is narrow. SAB relies on section
27(1 )(b) of the TMA , submitting that Super Group has not used either of the Super
Group logo and label registrations in the form in which they are registered. Instead,
Super Group uses a get-up on their products which differs markedly from Super
Group's logo and label registrations and therefore should be expunged. In the
alternative, SAS also argues for the entry of a disclaimer regarding those marks that
include the word "seltzer".
[14] It is therefore not SAS 's case that Super Group has not used a mark
incorporating the word "seltzer". SAS accepts that it has. SAS , however, contends
that the current mark-up (the refreshed label) differs markedly from the Seltzer mark
in the form in which they are registered.
[15] Under this section, the non-use relates to any of the goods for which it is
2 SAB also attacks Super Group's non-use of some of the goods or services for which the trade marks have been
registered. Super G roups has since admitted that it has only used its mark in respect of mineral and aerated waters
and that the specification of goods covered by its trade mark may therefore be limited to only reflect mineral and
aerated waters.
6
registered on the basis that, up to the date three months before the relevant
application, a continuous period of five years had passed during wh ich there wa s no
bona fide use of the marks concerning the goods and/or services for which they are
registered. The relevant period for this application is 15 November 2016 to 14
November 2021 ("the relevant period"). In proceedings under section 27(1)(a) and (b),
the onus of proving, if alleged, that there has been relevant use of a trade mark rests
on the proprietor thereof (Super Group).3
[16] Section 31 (1 )4 therefore provides for a defence against a claim for expungemen t
based on non-use. If the proprietor can prove that the use of the trade mark with
additions or alterations, or as labelled by Super Group as the "refreshed label", does
not materially or substantially affect its identity, as equivalent to proof of the use
required to be proved, an expungement attack can be warded off.
[17] Super Group concedes that it no longer uses the original Seltzer label but
maintains that the "refreshed label" does not materially or substantially alter its identity.
SAS disputes this, arguing that the differences in the font used for the Super Group logo
and other elements of the get-up between the registered label and what is currently used
in trade are so significant that they cannot be regarded as immaterial. SAS further
contends that the only element common to both the original Super Group label and the
current get-up is the word "Seltzer"-a term it asserts is merely descriptive of the
product. SAS argues that, if Super Group's defence succeeds, it would effectively entitle
Super Group to claim exclusive use of the word "Seltzer" on any form of label, rendering
the font and other material features of the label irrelevant.
[18] The test is whether a mark (in this matter, the "refreshed label") contains
additions or alterations that substantially or materially affect its identity. In terms of
additions or alterations that substantially or materially affect its identity. In terms of
this test, commonly referred to as the "arresting features test", 5 a mark will not be
deemed to be substantially altered if, on a physical inspection of the marks side by
side, it is clear that the mark has retained the arresting features (in other words,
3 Saft of the Earth Creations (Pty) Ltd v The Gap , Inc 201 O BIP 163 (GN P) at para 4.
4 "31 Use of one associated or substantially identical trade mark equivalent to use of another
(1) ~en under the provisions of this Act use of a registered trade mark is required to be proved for any purpose, the
registrar or the court, as the case may be, may , if and so far as he or it deem s fit, accept proof of the use of an
~sso?iated reg(stered trade mark or of the trade mark with additions or alterations not substantially affecting its
identity, as equivalent to proof of the use required to be proved."
5Bemstein Manufacturing Co (1961) (Pvt) Ltd v Shepherdson 1968 (4) SA 386 (T) (Bernstein.)
7
striking, eye-catching or distinctive) features of the mark registered. The TMA
therefore affords some leeway to a proprietor to use a trade mark even though it is
not exactly the same as it is registered. Each case will turn on its own facts and
ultimately "[i]t is really a matter of impression".6 The Court in Bernstein Manufacturing
Co (1961) (Pvt) Ltd v Shepherdson7 explains:
"When the two marks are considered side by side it is clear that the mark used has
retained the arresting features of the mark registered and that, if they are put on
different articles of clothing, they will identify those articles with the same proprietor. I
agree with the Registrar that the mark as used is a version of the registered mark which
has not been substantially altered. In coming to the conclusion that the alterations to
the mark as used do not substantially affect its identity, and that proof of its use was
correctly accepted as equivalent to proof of the use of the registered mark ... "
Side-by-side comparison between the marks
The refreshed Seltzer label
The Seltzer logo
(registration no.
1995/00621)
The original Seltzer
label (registration
no. 2003/04711
6
Clue~ Peabody & Company Inc v McIntyre Hogg Mash & Co Ltd 1958 RPC ad 355. Referred to with approval in
Berstein supra note 5 at 3898 .
7 Bernstein supra note at 389H .
8
[19] As already pointed out, SAB therefore contends that the new get-up differs
markedly from the Seltzer marks and submits that: The original Seltzer trade marks
are for the word Seltzer styled in a particular font and for a label that incorporates the
word Seltzer. Super Group does not have a trade mark registration for the word
"seltzer" simpliciter. This is significant: Super Group's predecessors-in-title did not
register the word "seltzer" simpliciter. It was registered for seltzer in a particular
font and for a label that incorporates the word seltzer. I am therefore in agreement
with the subm ission that Super Group cannot claim to have an exclusive right to
the word seltzer except for the word seltzer in a particular font and for the
(registered) label that incorporates the word seltzer.
Section 31 defence
[20] Notwithstanding the foregoing, does the defence provided for in section 31
of the TMA save the trade marks from expungement?
[21] It is accepted that regard must be had to the overall or dom inant features
and overall impression of the mark and that nitpicking is not what should be done,
Super Group relies on the fact that because the word "seizer" - which is the
dominant feature of the trade mark-is part of the present get-up, the (current) use
of the trade mark constitutes "use" for purposes of section 31 of the TMA. 8
8
Re lying on the full bench decision of Bemsten M anufacturing Co (1961) Pfy Ltd v Sheperson 1968 (4) SA 386 (T).
9
he Seltzer logo
he refreshed Seltzer label (registration no.
1995/00621)
The logo mark
he original Seltzer
label (registration no.
003/04711
[22) Super Group's registered logo trademark features a cursive-like font with
exaggerated curves on the "S" and a very exaggerated and flowing bottom line of
the "Z" that extends all the way to the end of the "r". However, considering Super
Group's current get-up, the word seltzer is spelt using print script for the letters 's,
e, I, e, and r', while the letters 't' and 'z' are angled and conjoined. The current get
up uses a different font, which is different from the registered one.
The label trade mark
[23] The same applies to the use of the label trade mark. Save for the word
seltzer, none of the features of Super Group's label, as registered, appear as part
of the get-up that Super Group uses in the trade. The use of the word Seltzer on
the product does not incorporate the remainder of the label trade mark as
registered. If regard is had to the two examples depicted in paragraph 6, and in
particular the second example, it is evident that the remainder of the logo is not
incorporated.
10
Comparison
[24) A comparison between the original and refreshed labels thus shows that
the current get-up does not include any of the other matter (the ribbon device) and
the general arrangement of the label including the writing position beneath the
word "seizer" and the general arrangement of the label, including the writing
positioned beneath the word "seltzer" and on the ribbon the ribbon.
[25) It is also evident that the fort in the registered logo mark and its current get
up is different. Incidentally, it appears from the founding affidavit that Super Group
is the applicant for registration of the word "Seltzer" in a different stylised font. The
pending application seems to seek to align the font and overall appearance of the
word "Seltzer" with that used in Super Group's current get-up label on its products.
That begs the question: if the get-up label with the word seltzer is not materially
different, why is it necessary to apply for registration of the font of
the "refreshed" seltzer?
3.4.3. no. 2020/07518 Sel1Z'er. in class 33 in relation
to •Alcoholic beverages, except beers; alcoholfc preparations
for making beverages.•
[26) In a case in point, the Supreme Court of Appeal (SCA) case, Cadbury (Pty) Ltd v
Beacon Sweets & C hocolates (Pty) Ltd and Another,9 Cadbury (the appellant), applied
to the High Court for an order to include an additional disclaimer against the registration
of Beacon Sweets' (the respondent) trade mark under the name 'Liquorice Allsorts' to
the effect that the registration "shall also give no right to the exclusive use of the name
'Liquorice Allsorts' separately and apart from the mark". On appeal, the SCA overturned
the High Court and held that Beacon Sweets was not entitled to exclusive use of the
phrase "Liquorice Allsorts" because it was used by Beacon and others in the trade to
describe the product, not to distinguish the respondent's product from others. In deciding
describe the product, not to distinguish the respondent's product from others. In deciding
the matter, the Court faced a similar argument (akin to the one raised here) regarding
the phrase "liquorice Allsorts" on the packaging. Similar to the present case, Beacon
9 2000 (2)9SA 71 1 (SCA).
11
used the phrase on the packaging differently from the registered trade mark for
packaging. The registered packaging included the phrase 'liquorice Allsorts' along with
various other devices and matter, which constituted use of the registered trade mark.
The court remarked as follows:10
" ... Unless the supermarkets have used the trade mark as registered with Beacon's
consent, their use cannot be permitted use within the meaning of these provisions.
From the facts set out, it ought to be immediately apparent that the use of the
name Liquorice Al/sorts was not use of the trade mark as registered, but only of "matter"
contained therein. This counsel had to concede. But it goes even further. A condition of
registration of the trade mark requires in essence that only a trade mark registered in
the name of Beacon, or in respect of which it is a registered user, or a trade mark of its
registered user may be used in the blank space on its trade mark. The marks of the
supermarkets do not fall in any of these categories and the breach of this condition
cannot give Beacon any rights or otherwise protect it. These considerations, in my view,
are destructive of Beacon's defence."
[27] As already pointed out, Super Group's predecessors-in-title did not register
the word "seizer" simpliciter. It was registered for "seltzer" in a particular font and
for a label that incorporates the word "seltzer". I am therefore in agreement with
the submission that Super Group cannot claim to have an exclusive right to the
word "seltzer" except for the word "seltzer" in a particular font and for a specific
label that incorporates the word "seltzer". Therefore, the mere use of the word
'seizer' in the new get-up (without the other elements), which differs markedly from
the registered mark. does not constitute use of the mark as registered. Moreover,
using the word "seltzer" in a form or label different from that that was registered,
Super Group becomes one of the group of 25 other users who all use the word
Super Group becomes one of the group of 25 other users who all use the word
seltzer on their products. Therefore, on a proper comparison, the differences in
font (for the Super Group logo registration) and other elements of get-up (for the
Super Group label registration) between what Super Group has registered and
what it uses in trade are so marked that they cannot be said to be immaterial.
They clearly do affect the identity of the mark.
10 Id at para 11.
12
[28] Because Super Group has not used either of its trade marks in the form in
w hich they were registered for at least the last five years, the counter-application
succeeds. Consequently, the main application is dismissed. Costs in both
applications follow the result, including the costs of two counsel and, where
applicable, the costs of experts where so employed.
[29] Order
1. The counter-application for expungement of the trade mark
registrations 1995/00621 SELTZER logo and 2003/04711 SELTZER
label in class 32 in the name of Super Group Africa (Pty) Ltd is granted
and the Registrar of Trad Marks is order to remove s'aid registrations
from the. Trade Mark Register as a result of non-use in terms of section
27 of the Trade Ma rks Act
2. The costs in the expungement application are awarded in favour of the
South African Brewers (Pty) Ltd, including the costs of two counsel and
experts.
3. The main application instituted by Super Group Africa *Pty) Ltd under
case number 62282/2011 is dismissed w ith costs in favour of the South
African Brewers (Pty) Ltd, including the costs of two counsel and
experts.
A SASSON
JUDGE OF THE HIGH COURT
GAUTENG DIVISION, PRETORIA
13
For the applicant:
For the respondent:
R MICHAU SC L HARILAL
CW PRETORIUS
P Ginsberg SC
GD Marriot
14
ANNEXURE A " EXAMPLE OF OTHER USES FOR THE WORD "SELTZER "
1. !VAWTER ---~
,Produced by Distell (Pty) Limited
3. 'FREELY
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3:!~m• ~ rsl
Produced by a small, independent local producer
C 0 , 0
~- ( , l
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~---- ==-~ ----
l~
....... -...... '.: ....... _
2. 'SKINNY
iProduced by Cheeky RTD (Pty) Limited
4. !TOPO CHICO
!Produced by Coca-Cola Company (Pty) Limited
l~w •
-a!!' as•!!! • !!'12'• ~•1\!•
-· -- --- _.., _ _,_
--- ---
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15
5. ISOUTHFIELDS
Produced by Jack Black International Incorporated
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6. REVISED (RVZD)
Produced by United Dutch Breweries
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illlil•
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16
7. !SKYE FROST
Produced by Distillx (Pty) Limited
--si"'~
FROST J
HAIi
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....... ---
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---
8. ISALUT
,Produced by The Franschhoek Beer Company (Pty)I
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Limited
17
DRAGON
!11. !TWISTED SPARKLES ··--
Produced by Darika (Pty) Limited
... , -
10. jROCKHOPPER
Produced by HWH Investments (Pty) Limited
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112. 'FROST SPARKLES
Produced by Darika (Pty) Limited
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1
13. IPURA BUZZ 114. /CHEEKY MONKEY
Produced by Pura Soda Beverage Company (Pty}I
Limited
115. IRIWA 116. SELTZER
Produced by The Kennel Brewery x Stillman Distillery
... w: .. ~.-- .. --"" ......... --••
17. REVEL
Produced by VG Beverages (Pty) Limited
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RE :vER IE VE
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!Produced by Perdeberg Wines
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118. BROOKS
Produced by Mack and Schuhle Africa (Pty) Limited
!Produced by CRUSHD (Pty) Limited
1
", .... ~~~
,;-