IN THE HIGH COURT OF SOUTH AFRICA
KWAZULU-NATAL DIVISION, PIETERMARITZBURG
Appeal Case No: AR123/2024
In the matter between:
AFRORMOSIA COMMODITIES CC Appellant
and
SUN SALT SERVICES (PTY) LTD Respondent
ORDER
On appeal from: KwaZulu-Natal Division of the High Court, Pietermaritzburg (Singh
AJ, sitting as court of first instance):
The appeal is dismissed with costs, including the costs occasioned by the
employment of two counsel. For purposes of taxation, scale B is to apply to junior
counsel’s fees and scale C to senior counsel’s fees.
JUDGMENT
Mlaba J (Henriques and E Bezuidenhout JJ concurring):
Introduction
[1] The respondent (who was the applicant in the court a quo) is the registered
proprietor of the trade mark SUN, registered under number 1992/01261 in respect of
salt (the SUN trade mark). The respondent produces salt and salt -related products
2
for the industrial, agricultural and household markets in South Africa, including the
SUN products.
[2] The appellant (who was the respondent in the court a quo) produces salt
products and uses an unregistered trade mark ROYAL SUN on its salt products.
[3] The appellant was using the ROYAL SUN mark and the respondent
contended that the mark wholly incorporated its SUN trade mark. It was alleged by
the respondent that the appellant ’s mark was identical to or nearly resembled the
SUN trade mark and that this was likely to deceive or cause confusion to the
respondent’s customers.
[4] In the court a quo , Singh AJ upheld claims by the respondent against the
appellant for the infringement of the SUN trade mark . She further granted a
declarator that the appellant was falsely representing that the impugned mark was
registered.
[5] The appellant now appeals, with Singh AJ’s leave, against that judgment. In
this appeal, t he appellant averred that the respondent did not discharge its onus to
prove that the ROYAL SUN mark nearly resembled the SUN trade mark so that it is
likely to deceive or confuse the respondent’s customers.
[6] The appellant further avers that the court a quo lacked jurisdiction to grant the
declaratory order, because as soon as the appellant had discovered that the
registration of its trade mark, ROYAL SUN , did not cover South Africa, it ceased
representing that its mark was registered. At the hearing of the appeal, counsel for
the appellant indicated that this ground of appeal would no longer be pursued. It is
therefore not necessary to make any determination in respect of the declarator.
[7] Before I set out t he submissions by the parties , I record my appreciation for
the helpful heads of argument furnished by Ms Mills, who appeared for the appellant,
and Mr Michau SC, assisted by Mr C W Pretorius, who appeared for the respondent.
In my recount of the submissions by the parties, I borrow extensively from the heads
of argument.
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Appellant’s submissions
[8] The appellant state d that in order for the respondent to establish an
infringement in terms of s 34(1) (a) of the Trade Marks Act 194 of 1993 (the Act), the
respondent had to prove, on a balance of probabilities, the use by the appellant of a
mark, in respect of salt, so nearly resembl ed the SUN trade mark as to be likely to
deceive or cause confusion.1 The respondent was required to prove that consumers
are likely to interpret the mark used by the appellant as designat ing or tending to
designate that the appellant’s goods originate from the respondent.
[9] The court had to objectively determine how the two marks would be perceived
by the consumer . The appellant, with reference to the general approach set out in
Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd ,2 argued that the
approach is as follows:
‘8.1 The two marks must be compared with regard to their similarities and differences , and
an assessment must be made of the impact that each would make upon the average type of
customer purchasing salt.
8.2 The notional customer is a person of average intelligence, having proper eyesight and
buying with ordinary caution.
8.3 The comparison must be made with reference to the sense, sound and appearance of
the marks.
8.4 The marks must not only be considered side by side, but also separately.
8.5 If each of the marks contains a main or dominant feature or idea, the likely impact made
by this on the mind of the customer must be taken into account.’
[10] The appellant contend ed that where the whole of a registered mark is
contained in an allegedly infringing mark , as it is here with ROYAL SUN, it does not
follow that there is a likelihood of deception or confusion.
[11] Ms Mills argued that when the appellant’s unregistered mark, ROYAL SUN, as
used on its salt products , is compared to the SUN trade mark, the two marks are
immediately different. The appellant’s mark has two words, and the respondent has a
immediately different. The appellant’s mark has two words, and the respondent has a
1 Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (SCA) at 849C-850C.
2 Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) (Plascon-Evans) at
640G-641D.
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single word. The appellant’s mark convey s a poetic or metaphorical image of
something regal and important, but in the literal sen se, there is no such thing as a
royal sun or royal salt. The SUN trade mark , on the other hand, when used in
relation to salt , evokes the image of the sun in its literal sense, the heat of which
creates salt by evaporating salt water.
[12] She further argued that the dominant feature of the SUN trade mark is the
word ‘sun’, whereas for the appellant’s mark, the word ‘royal’ is the dominant feature.
While both marks contain the word ‘sun’ as a common element, the public is likely to
pay more attention to the other features of the ROYAL SUN mark and distinguish the
products by those features . She submitted that the word ‘sun’ is commonly used in
brands such as the following: Sunlight soap, Capri-Sun juice, Sunshine-D margarine,
Sun International and Tsogo Sun hotels. It is also used to describe food products
such as sun -dried tomatoes and sun -ripened fruits. The word ‘royal’, on the other
hand, has no correlation with salt, and when used in respect of salt, is not descriptive
and has the same sense as a made -up word. It is not a type or grade of salt , as
different types of salt are described by the use of words such as iodated, table,
coarse, fine and sea salt. She argued that there is no such thing as royal salt.
[13] The appellant in addition submitted that the two words sound and look
different. The word ‘royal’ is dominant in the appellant’s mark, it is used with pictures
of an eclipse and crown , the packaging is al so completely different to that of the
respondent’s and the two products cannot be confused.
[14] In conclusion, the appellant submitted that the court a quo failed to apply the
requisite test. It sought that t he appeal be upheld with the respondent to pay the
costs.
Respondent’s submissions
[15] Mr Michau argued that the im pugned mark so nearly resembles the SUN
[15] Mr Michau argued that the im pugned mark so nearly resembles the SUN
trade mark as to be likely to deceive or cause confusion. He stated that a trade mark
is used to distinguish a product from other like products, and it serves as a badge of
origin. The fact that the SUN trade mark is registered means that it has been
recognised as being distinctive of the respondent’s salt products.
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[16] The visual similarity is that the appellant’s mark incorporates the entire SUN
trade mark of the respondent. The incorporation of the word ‘royal’ in the appellant’s
product would likely cause the average consumer to perceive the appellant’s product
to be of a high quality or of a superior quality than th e respondent’s product. The
appellant’s branding, which has an eclipse attached to the name with a crown , also
suggests the superiority of the salt product. Much like the words ‘Premier, Meester,
Prima or A-grade’ are unable to distinguish one product from another, so too can the
word ‘royal’ not distinguish one product from another.
[17] The respondent submitted that i n May 2021 , the respondent discovered that
the appellant was selling a salt product under the impugned mark. A cease-and-
desist letter was sent to the appellant by the respondent’s attorneys . The appellant,
however, denied any trade mark infringement. The matter was heard in the court a
quo and the court correctly found that the impugned mark resembled the SUN trade
mark so much that it would cause confusion or deceive its customers.
Counsel for the respondent relied on s 34(1)(a) of the Act, which provides as follows:
‘The rights acquired by registration of a trade mark shall be infringed by—
(a) the unauthorized use in the course of trade in relation to goods or services in respect
of which the trade mark is registered, of an identical mark or of a mark so nearly
resembling it as to be likely to deceive or cause confusion…’
[18] The respondent submitted that it had discharged its onus and that the finding
that the appellant’s use of the SUN trade mark infringed the respondent’s registered
trade mark is correct. The respondent sought an order dismissing the appeal with
costs, including costs of two counsel.
Issues for determination
[19] The issue s for determination are whether the use of the appellant’s mark
constitutes an infringement of the SUN trade mark, as provided by s 34(1) (a) of the
constitutes an infringement of the SUN trade mark, as provided by s 34(1) (a) of the
Act and whether the respondent discharged its onus in this regard.
Analysis
[20] To determine this issue, one must undertake a comparison of the marks . The
general test was set out in Plascon-Evans as follows:3
3 Plascon-Evans at 640I-641E.
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‘The determination of these questions involves essentially a comparison between the mark
used by the defendant and the registered mark and, having regard to the similarities and
differences in the two marks, an assessment of the impact which the defendant's mark
would make upon the average type of customer who would be likely to purchase the kind of
goods to which the marks are applied. This notional customer must be conceived of as a
person of average intelligence, having proper eyesight and buying with ordinary caution. The
comparison must be made with reference to the sense, sound and appearance of the marks.
The marks must be viewed as they would be encountered in the market place and against
the background of relevant surrounding circumstances. The marks must not only be
considered side by side, but also separately. It must be borne in mind that the ordinary
purchaser may encounter goods, bearing the defendant's mark, with an imperfect
recollection of the registered mark and due allowance must be made for this. If each of the
marks contains a main or dominant feature or idea the likely impact made by this on the
mind of the customer must be taken into account. As it has been put, marks are
remembered rather by general impressions or by some significant or striking feature than by
a photographic recollection of the whole. And finally, consideration must be given to the
manner in which the marks are likely to be employed as, for example, the use of name
marks in conjunction with a generic description of the goods.’
[21] Since Plascon Evans, over the years several principles have been elucidated
by our courts relating to the comparison of marks namely:
(a) When comparing marks to determine whether confusion or deception is likely
to arise , the court must notionally transport itself into the marketplace and be a
potential customer;4
(b) The court must compare the visual, aural and conceptual similarities of the
(b) The court must compare the visual, aural and conceptual similarities of the
two marks and a reasonable likelihood of deception and confusion in relation to one
of these will be sufficient to give rise to deception or confusion;5
(c) When examining and comparing the marks, one must do so as a whole. E ven
though they may have many points of difference, if a mark has a dominant or central
feature this may be the determining factor;6
(d) The question of similarity is one of an immediate first impression;7
4 Oude Meester Groep Bpk and Another v SA Breweries Ltd ; SA Breweries Ltd and Another v
Distillers Corporation (Sa) Ltd and Another 1973 (4) SA 145 (W) at 161C-E.
5 Cavalla Ltd v International Tobacco Co of SA Ltd 1953 (1) SA 461 (T) at 468G-H.
6 Webster & Page : South African Law of Trade Mark, 4 th Edition, para 7.10 at 7-17; Registrar of
Trade Marks v American Cigarette Co 1966 (2) SA 563 (A) at 576H ; Orange Brand Services Ltd v
Account Works Software [2013] ZASCA 158 (Orange Brand) paras 15-16.
7 Adidas AG and Another v Pepkor Retail Ltd [2013] ZASCA 3 (Adidas) para 22.
7
(e) The test for confusing similarity varies depending on the nature of goods and
the class of the consumer concerned;
(f) One must consider t hat human recollection may be imperfect when
determining deception or confusion;8
(g) When doing the comparison, one must only consider the marks themselves; 9
and
(h) One must have regard to the notional use to which the registered mark may
be put by the trade mark proprietor and the use to which the mark has been put by
the alleged infringer.
[22] The appellant admitted that the SUN trade mark is wholly incorporated in its
trade mark and that its mark is used in relation to salt products. The respondent uses
its mark in respect of salt products , and it has secured registration for the SUN trade
mark. The appellant and respondent are therefore direct competitors in the
marketplace in respect of salt.
[23] When one looks at the packaging of both products ,10 it can be observed that
the respondent’s salt packaging contains the co lours blue, yellow and white in
respect of iodated table salt, and for coarse salt, the packaging is red, white and
yellow.
[24] Although t he appellant’s packaging does not have yellow, it does have red,
blue and white colours . Red, blue and white are the same colours used in the
respondent’s packaging.
[25] The appellant could have used any other colour except blue and red in its
product, but it elected to use the same colours that the respondent uses , although
the respondent uses yellow with a combination of blue and red in its products .
Furthermore, the appellant did not have to use the word ‘sun’ for its product, as sun
is not related to salt, as per its argument . ‘Sun’ is not just a random word in this case
- it is a registered trade mark secured by the respondent. The use of essentially the
same colours, in relation to the same product and in the course of trade and without
8 Adidas para 24.
8 Adidas para 24.
9 Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others [2016] ZASCA 77 ; 2017 (2) SA 588 (SCA)
para 7.
10 The record, volume 1, at pages 16,19,39, and 40-46.
8
authorisation by the respondent , in my view, seems to be calculated to confuse the
customers into believing that the products are somehow connected.
[26] In the court a quo , Mr Pretorius, for the respondent , stated that the
respondent’s SUN products have been on the South African market since 1967 and
the SUN trade mark is displayed thereon as a distinctive feature forming part of the
main identification features of the respondent’s products .11 He further stated that the
word ‘sun’ is used in the marketplace in various brands but in salt class 30, which
incorporates the respondent’s trade mark, there is no other salt producer that
contains the word ‘sun’. ROYAL SUN emphasises ‘sun’ and the word ‘sun’ is not a
made-up word - it is distinctive when used in respect of salt products.12
[27] In her judgment , Singh AJ stated that counsel for the appellant, Ms Mills,
invited the court, which she also did in this court, to compare the product, listen to
the words, look at the mark and get an overall impression. She submitted that ‘sun’ is
not an inve nted word - salt is made by the sun and the word is not distinctive of a
particular source. She stated that the emphasis is on the word ‘royal’, the mark is
that of a crown with a swish, and the sound , appearance and sense do not intend to
deceive.
[28] The court a quo relied on several cases, including Yuppiechef Holdings (Pty)
Ltd v Yuppie Gadgets Holdings (Pty) Ltd ,13 Cowbell AG v ICS Holdings Ltd 14 and
PepsiCo v Atlantic Industries ,15 and found, correctly so in my view , that the
appellant’s use of the word ‘sun’ in relation to salt products , is directly descriptive of
the same or similar goods. It further found that in terms of the facts, there is no other
salt product in South Africa that contains the word ‘sun’ in the class 30 category and
that the word is distinctive when used for salt products . I agree with the respondent’s
that the word is distinctive when used for salt products . I agree with the respondent’s
submission that the term ‘royal’ denotes a high -quality or superior product, fit for
royalty and accordingly, a customer would perceive the appellant’s salt product to be
of superior quality because of the term ‘royal’.
11 The record at page 158.
12 The record at page 162.
13 Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd [2016] ZASCA 118
(Yuppiechef) para 26.
14 Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) (Cowbell).
15 PepsiCo Inc v Atlantic Industries [2017] ZASCA 109.
9
[29] The court a quo found that the appellant could not, in all fairness, suggest that
the use of ROYAL SUN was a mere coincidence , as the infringement was
established in the cate gory of salt. The court a quo found that the appellant’s use of
the SUN trade mark is calculated to deceive the transacting public and cause
confusion, as well as injury to the respondent’s goodwill that it has created since
1965.
[30] On my reading of the record, having regard to the judgment of the court a quo,
I do not agree that the respondent failed to discharge its onus. The appellant's
criticism of the court a quo that it erred in its finding cannot be upheld upon a
consideration of the facts, the evidence and arguments by both parties before the
court a quo, as well as the court a quo’s application of the law.
[31] The test, as enunciated in Yuppiechef and Cowbell, is whet her, on a
comparison of the two marks , it can be said that there is a reasonable likelihood of
confusion if both are used together in a normal and fair manner, in the ordinary
course of business and whether there is a likelihood of deception or confusion based
on the appreciation of the two marks and the overall impression that they leave . One
should not have to look closely and carefully at the two products to find similarities
and differences. 16 The first impression of the products will influence the value
judgment relating to the deception or confusion.17
[32] As stated in paragraphs 22 to 24 above, the two products have essentially the
same colours, both are salt products which may be found side -by-side in the course
of trade, and they have the word ‘sun’, which is a registered ba dge of origin
belonging to the respondent. The marks are not only visually similar but also
phonetically s imilar. This combination of similarities may cause confusion or
deception to an ordinary customer. I agree with the submission of the respondent that
deception to an ordinary customer. I agree with the submission of the respondent that
a not negligible number of persons will probably be confused as to the origin of the
appellant's product or the existence or non -existence of a connection between the
appellant’s Royal Sun product and the respondent’s SUN salt product.
16 Adidas para 22.
17 Orange Brand para 13.
10
[33] In the circumstances, it is my view that the court a quo was correct to conclude
that the appellant had infringed the respondent’s trade mark as the impugned mark
resembled the respondent’s registered SUN mark as to be likely to deceive or cause
confusion.
Costs
[34] The respondent sought costs of two counsel and there was no opposition by
the appellant in this regard. Since the amendment to the Uniform rules by the
introduction of rule 67A on 12 April 2024, party and party costs in the high court can
be awarded on one of three scales. The purpose is to permit a court to exercise
control over the maximum rate counsel’s fees can be recovered under an award on
the party and party scale and is not limited to counsel in the traditional sense, but any
legal practitioner.18 The focus is accordingly on assigning a maximum value that may
be recovered in respect of the work done in the presentation of the case before
court.19 The provisions of rule 72A(2) identifies which factors the court may consider
being the complexity of the matter, the value of the claim or the importance thereof.
[35] In my view, in determining an appropriate costs order in the appeal regard
must be had to the complexity of the matter and the nature of the issues which had to
be determined and the manner in which arguments were presented. In my view , the
issues in the appeal were complex and the importance of the matter to the
respondent justified the employment of two counsel.
Order
[36] Accordingly, I make the following order:
1. The appeal is dismissed with costs, including the costs occasioned by the
employment of two counsel. For purposes of taxation, scale B is to apply to junior
counsel’s fees and scale C to senior counsel’s fees.
_________________
MLABA J
18 Mashavha v Enaex Africa (Pty) Ltd [2024] ZAGPJHC 387 (Mashava) para 5.
19 Mashavha para 5.
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_________________
HENRIQUES J
_________________
E BEZUIDENHOUT J
Case Information:
Date of Hearing: 27 March 2025
Date of Judgment: 28 November 2025
For Appellant: L M Mills
Instructed By: Lott Attorneys
Office 7, Dias Block
Fairway Green
3 Abrey Road
Kloof
Tel 031 940 7047
Email: evelina@lottattorneys.co.za
c/o Neeraj Ghazi Attorneys
6th Floor, The Royal Towers
30 Dorothy Nyembe Street
Durban
For Respondent: R Michau SC
Assisted by CW Pretorius
Instructed By: Spoor & Fisher
11 Byls Bridge Boulevard
Building No. 14, Highveld ext 73
Centurion
Pretoria
Ref: LT3028658/RKR
Tel: (012) 676 1111
c/o Champman Dyer Incorporated
7th Floor, Anton Lembede Street
Durban
12
Tel: 031 319 7800
Email: hazel@cdi.co.za