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[2018] ZASCA 43
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Dinnermates (TVL) CC v Piquante Brands International (Pty) Ltd and Another (401/17) [2018] ZASCA 43; 2018 BIP 260 (SCA) (28 March 2018)
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Not
reportablE
Case
No: 401/17
In
the matter between:
DINNERMATES
(TVL)
CC
APPELLANT
and
PIQUANTE
BRANDS INTERNATIONAL (PTY) LTD
1
st
RESPONDENT
PEPPADEW
INTERNATIONAL (PTY) LTD
2
nd
RESPONDENT
Neutral
Citation:
Dinnermates
(Tvl) CC v Piquante Brands International & another
(401/17)
[2018] ZASCA 43
(28 March 2018)
Coram:
Maya P and Wallis and Mathopo JJA,
Davis and Rogers AJJA
Heard:
28 February 2018
Delivered:
28 March 2018
Summary:
Trade mark –
opposition in terms of
s 10(14)
of the
Trade Marks Act 194 of
1993
– whether mark likely to deceive or confuse –
PEPPADEW and PEPPAMATES relating to pepper products.
ORDER
On
appeal from
: The Gauteng Division of
the High Court, Pretoria (Mothle, Molopa & Hughes JJ sitting as
court of appeal) judgment reported
sub
nom Dinnermates (Tvl) CC v Piquante Brands International (Pty) Ltd
and Another
2016 BIP 294 (GP):
1
The appeal is upheld with costs, such costs to include those
consequent upon the employment of two counsel.
2
The order of the full court is set aside and replaced by the
following:
‘
(a)
The appeal is upheld with costs.
(b)
The opposition to the registration of the subject trade mark
applications 2010/09722 and 2010/09721 is dismissed;
(c)
It is directed that the subject trade marks proceed to registration.’
JUDGMENT
Mathopo
JA (Maya P and Wallis JA and Davis and Rogers AJJA concurring):
[1]
The appellant, Dinnermates (Tvl) CC, is a close corporation involved
in the business of manufacturing and selling food products
such as
processed meat and the sale of cooked pepper products. During 2010 it
applied for the registration of the trade mark PEPPAMATES
and a
device, consisting of a pepper with a pepper stalk, in classes 29, 30
and 31. The first respondent, is the registered owner
of various
trade marks, incorporating the mark PEPPADEW, sometimes alone and
sometimes in combination with a pepper and pepper
stalk. These
registrations are in classes 29 and 30. The second respondent is a
licensee of the first respondent in respect of
the use of the said
marks. For convenience, I refer to the appellant’s mark as
PEPPAMATES and the respondents’ marks
as PEPPADEW and in both
cases that will be a reference to the mark together with the pepper
device.
[2]
The respondents opposed the registration of the appellant's trade
mark in terms of s 10(14) and 10(17) of the Trade Marks
Act 194
of 1993 (the Act) before the Registrar of Trade Marks
(the Registrar). The Registrar transferred the matter to the
Gauteng Division of the High Court, Pretoria (the high court). The
argument proceeded on the basis that if there was no deception
or
confusion between the marks in this form there would be no deception
or confusion where the word PEPPADEW, or the device, were
used
separately. The high court (Tlhapi J) upheld the respondents’
case in terms of s 10(14) of the Act. Dissatisfied
with that
decision, the appellant appealed to the full court (Mothle J, Molopa
and Hughes JJ concurring). The full court agreed
with Tlhapi J and
dismissed the appeal.
[3]
This appeal, with the special leave of this court, concerns only the
opposition in terms of s 10(14) of the Act. This section
provides:
‘
10.
Unregisterable trade marks. – The following marks shall not be
registered as trade marks or, if registered, shall, subject
to the
provisions of sections 3 and 70, be liable to be removed from the
register: . . . .
(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 which 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
registration of such mark.’
[4]
The respondents’ composite mark, contains a side-view of a
single rounded pepper stalk and the word PEPPADEW, printed
in block
capitals and with a vertical orientation. They allege that the said
registrations preclude the appellant’s registrations.
The
respondents’ composite trade mark is represented as follows:
NB:
PLEASE CONSULT PDF FOR IMAGES
[5]
In 2010 the appellant decided to enter the processed pepper business
in respect of small sweet peppers such as those made by
the
respondents and other producers in South Africa. Consequently it
applied for the impugned trade mark PEPPAMATES under its proposed
business name Dinnermates.
[6] The appellant’s
proposed trade marks are depicted as follows:
NB:
PLEASE CONSULT PDF FOR IMAGES
The details of the goods
covered by the relevant trade mark applications are as follows:
2010/09722 29 –
Meat, fish, poultry and game; meat extracts; preserved, frozen, dried
and cooked
fruits and vegetables; jellies; jams, compotes; eggs, milk
and milk products; edible oils and fats.
2010/09721 30 –
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee;
flour and
preparations made from cereals, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking-powder; salt,
mustard; vinegar,
sauces (condiments); spices; ice.
2010/09723
31 – Agricultural, horticultural and
forestry products and grains not included in
other classes; live
animals; fresh fruits and vegetables; seeds, natural plants and
flowers; foodstuffs for animals; malt.
[7]
It is not disputed that the goods in respect of which the appellant
seeks to register its mark are identical to and fall within
the
category of goods for which the respondents obtained registration of
their marks. The common elements of the marks are the
prefix ‘PEPPA’
attached to the suffixes ‘DEW’ and ‘MATES’
respectively, and the use of a pepper
device. The respondents contend
that the word PEPPADEW is not a dictionary word and was made-up or
invented, relating to a specific
piquante pepper that is marketed
locally and internationally.
[8]
The high court held that there was a similarity between the two trade
marks to such a degree that, when the words DEW and MATES
were
removed, there was a likelihood of confusion or deception. The full
court agreed with the high court and dismissed the appeal
primarily
on the basis that the inclusion of a device in the form of a
side-view of the rounded pepper with a stalk as part of
both trade
marks was the most visible feature common to both marks. It concluded
that the visual description stood out when a comparison
was made as
to the similarity or otherwise of the trade marks.
[9]
A court dealing with a s 10(14) application is required to
postulate the notional use by the opponent of its registered
trade
mark in respect of some or all of the goods covered by the
registration and use in a normal and fair manner of the applicant’s
trade mark in respect of any of the goods covered by its application
for registration.
[10]
Section 10(14) of the Act prohibits registration of, amongst others,
a mark that is so similar to a registered mark, that the
use thereof
in relation to the goods or services in respect of which it is sought
to be registered, which are the same as or similar
to the goods or
services in respect of which the opponent’s mark is registered,
‘would be likely to deceive or cause
confusion’.
[11]
In considering whether the use of the appellant’s trade mark is
likely to deceive or cause confusion, this court in
Cowbell
AG v ICS Holdings Ltd
2001 (3) SA 941
(SCA);
2001 (4) All SA 24
(A) para 10, held that the
essential function of the trade mark is to indicate the origin of the
goods in connection with which
it is used and the decision whether
there is a reasonable likelihood of confusion is a value judgment. In
Orange Brand
Services Limited v Account Works Software (Pty) Ltd
[2013] ZASCA 158
; 2013 BIP 313 (SCA) (
Orange
Services
) para 6,
it was stated that in opposition proceedings the question that falls
to be decided is not how the parties use or intend
to use their
marks, but how they would be entitled to use them if both of them
were registered; that is, how they might notionally
be used.
[12]
In
Orange Services
,
Nugent JA, citing the authors of
Kerly’s
Law of Trade Marks and Trade Names
,
pointed out that the question whether there is a likelihood of
confusion or deception is a question of fact and that decided cases
in relation to other facts are of little assistance, save in so far
as they lay down any general principle. In a later decision
of this
court in
Roodezandt
Ko-operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd &
another
[2014]
ZASCA 173
; 2014 BIP 294 (SCA) para 5, Brand JA elaborated on the
meaning of the value judgment to be made, in the context of an
application
to remove a trade mark from the register. The principles
adumbrated by him apply with equal force to opposition proceedings.
In
Yuppiechef
Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd & another
2016 ZASCA 118
[2016] ZASCA; 2016
BIP 269 (SCA) (
Yuppiechef
),
an infringement case, Wallis JA stated that the value judgment is
largely a matter of first impression and there should not be
undue
peering at the two marks to find similarities or differences. He
cautioned that it is not sufficient for judges to say merely
that
their impression is that the alleged infringement mark is or is not
likely to deceive or cause confusion. Judges have an obligation
to
explain why they hold their particular view.
[13]
In
Compass Publishing BV v Compass Logistics Ltd
[2004] EWHC
520
(Ch) at para 24 Laddie J said the following:
‘
The
likelihood of confusion must be appreciated globally, taking account
of all relevant factors. It must be judged through the
eyes of the
average consumer of the goods or services in question. That customer
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 the marks. The court
should factor in the
recognition that the average consumer normally perceives a mark as a
whole and does not analyse its various
details. The visual, aural and
conceptual similarities of the marks must be assessed by reference to
the overall impressions created
by the marks bearing in mind their
distinctive and dominant components. Furthermore, if the association
between the marks causes
the public to wrongly believe that the
respective goods come from the same or economically linked
undertakings, there is a likelihood
of confusion.’
This
was approved by this court in
Century
City Apartments Property Services CC & another v Century City
Property Owners’ Association
[2009] ZASCA 157
;
2010 (3) SA 1
(SCA) para 13.
[14]
In
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A), in the context of an infringement case, Corbett
JA made it clear that the main or dominant features of the mark in
question,
as well as the general impression and striking features,
were all factors to be considered in deciding whether there was a
likelihood
of confusion or deception (see also
Lucky
Star Ltd v Lucky Brands (Pty) Ltd 2017 (2) 588 (SCA)
;
2016 BIP 180 (SCA) para 6).
[15]
It is against this background that I now turn to determine whether
the appellant’s marks are likely to cause confusion
or
deception to the members of the public.
[16]
The respondents argue that a person looking at the marks used by the
parties is likely to be deceived. And it is enough if
that deception
lasts only for a fraction of a second. The respondents, in support of
their argument it called in aid a principle
restated in
Orange
Services
. It argued
that in a busy market place an average consumer with an imperfect
recollection would not be able to distinguish the
two marks.
According to the respondents’ argument the average consumer is
likely to remember or recall the respondents’
mark PEPPADEW and
probably confuse the appellant’s trade mark with that of the
respondents.
[17]
The main complaint of the respondents is that their trade mark
registration incorporates a distinctive element, the prefix
PEPPA,
which is also a dominant element of the appellant’s marks. The
thrust of the respondents’ argument is that the
combination of
PEPPA and the single rounded pepper and stalk device
distinguishes their products from all other trade marks
which might
contain the element PEPPA. The case advanced is that the appellant’s
trade mark is similar in that it also incorporates
the two
distinctive features that have been registered by the respondents,
namely PEPPA and the side-view of a single rounded pepper
and stalk
device.
[18]
The gravamen of the respondents’ opposition is that the
appellant simply adopted its trade mark and added the word MATES
to
produce the word PEPPAMATES. Echoing the full court’s
reasoning, the respondents expanded their argument and submitted
that
because PEPPA in PEPPAMATES has the same semantic content as PEPPA in
PEPPADEW, the average consumer will be struck by the
common element
PEPPA and the presence of the device and thus be confused and believe
that the appellant’s goods are from
the same or a connected
source as the respondents.
[19]
The appellant argues that PEPPA, either on its own or in combination
with others, is descriptive and easily recognisable as
being derived
from the word ‘pepper’ and applies to a wide range of
products and services by various parties in South
Africa. It argued
that the respondents are not entitled to claim a monopoly in the
word. It contended further that PEPPA is not
an invented word but
rather an adaption (or variant spelling) of the word ‘pepper’.
The contention advanced was that
there are various parties that had
registered trade marks that include the word PEPPA and some of these
trade marks had been filed
and registered prior to the first
respondents’ trade mark registrations.
[20]
The appellant argues that when regard is had to the two marks as a
whole, the elements DEW and MATES distinguish the parties’
respective marks and are vastly different to each other and not
likely to cause any confusion or deception. It argued that the
configuration of the marks is completely different. PEPPADEW appears
in a large upright rectangle whereas the appellant’s
mark does
not have a rectangular device. In the appellant’s mark the word
PEPPAMATES is written horizontally over two lines,
with PEPPA above
and in cursive script and MATES below in Roman block capitals and
underlined. The device of a pepper appears to
the right of the mark,
almost as a full stop after the word MATES.
[21]
In opposing the registration the respondents are in essence asserting
a monopoly in the use of the word ‘PEPPA’.
It cannot,
under the guise that its products are marketed locally and
internationally, seek to preclude other bona fide trade mark
users
from utilising the word PEPPA. The fallacy in this argument is aptly
demonstrated by the fact that the respondents are not
the only entity
using the word PEPPA as its prominent element. There are other trade
marks such as PICKAPEPPA and PEPPAMELT. These
trade marks predate the
respondents’ marks. Proprietors or owners of these trade marks
have rightly not claimed exclusive
use of the word PEPPA. In my view
the use of the word PEPPA by other entities dispels the notion that
the respondents have the
exclusivity or monopoly in the prefix PEPPA.
I can see no reason why the respondents’ trade mark cannot
coexist with the
appellant’s trade mark. Coca Cola and Pepsi
Cola have existed side by side for a considerable period of time
without any
difficulty (see
Coca-Cola
of Canada Ltd v Pepsi-Cola Co. of Canada Ltd
[1942] RPC 127
(PC).
[22]
I agree with the appellant that PEPPA is an adaptation from the word
pepper, obviously chosen because the product to which
it was first
attached was a pepper. Its use conjures up an image of a pepper. In
conjunction with the pepper device, it will be
understood as
referring to a product with peppers. The distinctive element for
trade mark purposes is therefore the suffix DEW,
which is wholly
different from MATES. Because ‘PEPPA’ phonetically sounds
like ‘pepper’, the likelihood
of confusion will not
arise, especially if it is used in combination with another word such
as DEW or MATES. There is equally no
force in the argument that
exclusivity in the word PEPPA lies in the combination of the mark
with a pepper device. The word PEPPA
cannot enhance in any way the
exclusivity of the distinctiveness of the elements of the mark. To my
mind the depiction of the pepper
in the mark only serves to highlight
the descriptive nature of PEPPA. A depiction of a pepper is, like the
word itself, descriptive.
PEPPA is not only a variant spelling of the
word ‘pepper’ but is also applied to a wide range of
products offered by
various other parties throughout the world. If a
monopoly is granted in respect of PEPPA it is hard to see how it
would not extend
to the use of pepper as a prefix, as in pepperoni,
pepperpot (a West Indian stew), pepperwort or pepper sauce, all of
which are
in common usage. As the respondent’s registration
extends to confectionery peppermint would also be affected. But one
cannot
monopolise the commons of the English language in that way.
[23]
The finding by the full court that the two trade marks are the same
because they commence with the word PEPPA, is incorrect.
The
conclusion that, had it not been for the addition of a pepper device
to each parties’ mark, the result would have been
the same as
in
Yuppiechef
,
that is, the mark would not be considered to be confusingly similar,
is wrong. The parties’ marks do not have identical
devices. The
devices are far from being identical. A notional purchaser or
consumer looking at the two marks, even fleetingly,
would be in a
position to tell them apart. The differences between the two marks
are apparent and would be identified without difficulty
or prior
coaching by members of the public. Viewed together and side by side
the respective marks and devices are not the same.
A purely verbal
comparison is not enough. The court must transport itself to the
marketplace to try and visualise how customers
of the goods in
relation to which the marks are used would react. Applying the test
in
Plascon-Evans
,
which has been followed in a number of decisions by this court, the
marks are visually, phonetically and conceptually dissimilar.
It is
unlikely that a significant section of the public would consider that
PEPPAMATES is the same as PEPPADEW. The full court
erred in failing
to take into account the distinguishing features between the two
marks.
[24]
The appeal is upheld with costs, such costs to include the costs of
two counsel where so employed. The order of the full court
is set
aside and substituted with the following:
1
The appeal is upheld with costs, such costs to include those
consequent upon the employment of two counsel.
2
The order of the full court is set aside and replaced by the
following:
1
The appeal is upheld with costs, such costs to include those
consequent upon the employment of two counsel.
2
The order of the full court is set aside and replaced by the
following:
‘
(a)
The appeal is upheld with costs.
(b)
The opposition to the registration of the subject trade mark
applications 2010/09722 and 2010/09721 is dismissed;
(c)
It is directed that the subject trade marks proceed to registration.’
________________________
R
S Mathopo
Judge
of Appeal
APPEARANCES:
For
appellant:
I Joubert
S
Hussein-Yousuf
Instructed
by:
Kisch
IP, Sandton
Webbers,
Bloemfontein
For
respondent: C E Puckrin SC
L G
Kilmartin
Instructed
by:
Berdou
Attorneys, Fourways
Lovius
Block, Bloemfontein