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[2014] ZAWCHC 197
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Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others (4890/2014) [2014] ZAWCHC 197; 2014 BIP 381 (WCC) (18 December 2014)
THE
HIGH COURT OF SOUTH AFRICA
(WESTERN
CAPE DIVISION, CAPE TOWN)
In
the matter between
Case
No: 4890/2014
DATE:
18 DECEMBER 2014
LUCKY
STAR
LTD
.....................................................................................
APPLICANT
And
LUCKY
BRANDS (PTY)
LTD
............................................................
1st
RESPONDENT
MICHAEL
RUSSELL TOWNSEND
..................................................
2nd
RESPONDENT
MARIE
HOCKLY
N.O
......................................................................
3rd
RESPONDENT
MERINDA
MEINTJIES
N.O
.............................................................
4th
RESPONDENT
MICHAEL
RUSSELL TOWNSEND N.O
..........................................
5th
RESPONDENT
HARBOUR
HOUSE HOLDINGS (PTY) LTD
...................................
6th
RESPONDENT
LUCKY
FISH & CHIPS – KALK
BAY
.............................................
7th
RESPONDENT
LUCKY
FISH & CHIPS –
MUIZENBERG
......................................
8th
RESPONDENT
LUCKY
FISH MUIZENBERG
CC
...................................................
9th
RESPONDENT
LUCKY
FISH & CHIPS – BREE
STREET
.....................................
10th
RESPONDENT
LUCKY
FISH BREE STREET (PTY) LTD
......................................
11th
RESPONDENT
LUCKY
FISH & CHIPS – SEA
POINT
..........................................
12th
RESPONDENT
LUCKY
FISH REGENT STREET (PTY) LTD
.................................
13th
RESPONDENT
LUCKY
FISH & CHIPS - LONG
STREET
.....................................
14th
RESPONDENT
LUCKY
FISH LONG STREET (PTY) LTD
.....................................
15th
RESPONDENT
LUCKY
FISH 5 (PTY)
LTD
............................................................
16th
RESPONDENT
THE
COMMISSIONER OF THE COMPANIES
&
INTELLECTUAL PROPERTY COMMISSION
...........................
17th
RESPONDENT
Coram
:
ROGERS J
Heard:
1 DECEMBER 2014
Delivered:
18 DECEMBER 2014
JUDGMENT
Rogers
J:
Introduction
[1]
This is an application
(I) for an interdict to prevent alleged trade mark infringement in
violation of
s34(1)
of the
Trade Marks Act 194 of 1993
and for
consequential relief; and (ii) for an order declaring the names
of the corporate respondents to be in violation of
s 11(2)
of
the
Companies Act 61 of 2008
and for consequential relief. Mr
Ginsburg SC leading Mr Marriott appeared for the applicant and Mr
Puckrin SC leading Mr Seale
for the respondents.
[2]
The applicant is a
vertically integrated company which catches, processes and cans fish
under the Lucky Star brand. Its biggest
seller is pilchards in
tomato. It also sells canned pilchards with other flavours as well as
canned mackerel, middlecut mackerel,
sardines, shredded tuna, tuna
chunks and mussels. It also makes fish oil and fishmeal.
[3]
The applicant is the
proprietor of the word trade mark ‘Lucky Star’ and a
device mark comprising a narrow leaping fish
(a sardine, I was told
from the bar) above a stylised sea, against a background of diagonal
lines, and beneath the words ‘Lucky
Star’ and a
five-point star. The device mark appears thus:
[4]
The marks are
registered for all products in classes 29, 30 and 31 and for the
following services in class 42: ‘Retail, wholesale,
distribution, mail order and merchandising services; all concerned
with or relating to the provision and supply of foodstuffs’.
The products in class 29 include fish and fish products and cooked
vegetables (the latter would cover fried potato chips). The
products
in class 31 include fresh vegetables (the latter would cover fresh
salads).
[5]
The word and device
marks are not restricted as to colour (cf
s 32
of the Act). The
device mark, as currently applied by the applicant to canned tomato
pilchards, appears thus :
[6]
The same device mark,
with different colour schemes, is used by the applicant for other
flavours of canned pilchards and for canned
mackerel. The applicant’s
other canned products, such as shredded tuna, tuna chunks, sardines
and mackerel middlecut, bear
the device mark without the leaping
fish. In these labels a picture of the relevant fish product is
depicted in place of the leaping
fish.
[1]
[7]
The Lucky Star marks
are of long-standing and are very well known in South Africa.
[8]
The 6
th
respondent is the sole shareholder of the 1
st
respondent. The 1
st
respondent is the shareholder of the other corporate respondents. The
other corporate respondents
[2]
conduct restaurant and takeaway operations at various locations in
Cape Town under the name ‘Lucky Fish & Chips’.
These
outlets sell various styles of cooked hake, snoek, calamari, prawns
and fishcakes as well as fried chips and salads. The
2
nd
,
3
rd
and 4
th
respondents are the trustees of the MRT Trust (‘the Trust’).
The 1
st
respondent has applied for registration of the word trade marks
‘Lucky Fish & Chips’ and ‘Lucky Brands’
while the Trust has applied for registration of the word trade mark
‘Lucky Fish’, in all instances for goods and services
in
Class 43 described as ‘Services for providing food and drink;
temporary accommodation; restaurant services’. The
1
st
respondent and the Trust license the operating companies’ use
of the ‘Lucky Fish & Chips’ and ‘Lucky
Fish’
marks. The 5
th
respondent is a Mr Townsend. He is the driving force behind the other
respondents.
[9]
The logo for the
respondents’ outlets comprises, in shades of white and blue,
the words ‘Lucky Fish & Chips’
followed by an image
of a dining plate with a broad fish on it and a knife and fork on
each side of the plate. This logo is used
in external and internal
signage and on takeaway packaging. The following is representative of
the logo:
[3]
[10]
The ‘Lucky Fish’
name without the fish-on-plate device appears in the names of a few
of the menu items (eg the ‘Lucky
Fish Platter’ and the
‘Lucky Fish Village Greek Salad’) and is used in
commercial documents such as till slips.
[11]
The applicant is
opposing the pending trade mark applications made by the 1
st
respondent and the Trust, which will be determined in another forum
in due course. One of the points raised by the respondents
was that
the present case should be stayed pending the adjudication of the
opposed trade mark applications. The respondents did
not persist with
this point at the hearing.
Section
34(1)
[12]
Section 34(1)
of the
Trade Marks Act reads
as follows:
‘
(1) The
rights acquired by registration of a trade mark shall be infringed by
–
(a) the unauthorized use in
the course of trade in relation to goods or services in respect of
which the trade mark is registered,
of an identical mark or other
mark so nearly resembling it as to be likely to deceive or cause
confusion;
(b) the unauthorized use of a
trade mark which is identical or similar to the trade mark
registered, in the course of trade in relation
to goods or services
which are so similar to the goods or services in respect of which the
trade mark is registered, that in such
use there exists the
likelihood of deception or confusion;
(c) the unauthorized use in the
course of trade in relation to any goods or services of a mark which
is identical or similar to
a trade mark registered, if such a trade
mark is well known in the Republic and the use of the said mark would
be likely to take
unfair advantage of, or be detrimental to, the
distinctive character or the repute of the registered trade mark,
notwithstanding
the absence of confusion or deception: Provided that
the provisions of this paragraph shall not apply to a trade mark
referred
to in
section 70(2).
’
[13]
Common to all three
forms of infringement is that the infringing mark, if not identical
to the registered mark, should be similar
to the registered mark. In
the case of para (a) the degree of similarity is indicated by the
words ‘a mark so nearly resembling
[the registered mark] as to
be likely to deceive or cause confusion’. In paras (b) and (c)
the word is simply ‘similar’.
[14]
In paras (a) and (b)
there is a requirement that the use of the identical or similar mark
should be such as to create the likelihood
of deception or confusion.
The difference between the two provisions is that para (a) is
concerned with use of the infringing mark
in relation to goods or
services in respect of which the trade mark is registered whereas
para (b) is concerned with use in relation
to goods or services
which, while not being those in respect of which the trade mark is
registered, are so similar to the goods
or services in respect of
which the trade mark is registered as to result in the mark’s
use creating the likelihood of deception
or confusion. Para (b) thus
extends the proprietor’s monopoly beyond the particular goods
or services for which the mark
is registered, provided there is not
only a similarity between the two marks but also a sufficient
similarity between the two classes
of goods or services as to give
rise to the likelihood of deception or confusion.
[15]
In para (c) there is no
requirement of a likelihood of deception or confusion. This type of
infringement is generally styled dilution
and protects the proprietor
against the dilution in the value of his mark through blurring or
tarnishment (
Verimark
(Pty) Ltd v BMW AG
2007
(6) SA 262
(SCA) paras 11-12;
Laugh
It Off Promotions CC v South African Breweries International
(Finance) BV t/a Sabmark International
2005
(2) SA 46
(SCA) paras 12-19).
The
case based on
s 34(1)(a)
and (b)
[16]
Although the similarity
of the marks and the likelihood of deception or confusion may be
regarded as separate requirements for an
infringement of paras (a)
and (b), they are necessarily inter-related, in that dissimilar marks
are unlikely to give rise to deception
or confusion. The
inter-relationship appears from the following oft-cited passage in
Plascon-Evans Paints
(Pty) Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984
(3) SA 623
(A) at 640H-641E:
‘
In
an infringement action the onus is on the plaintiff to show the
probability or likelihood of deception or confusion. It is not
incumbent upon the plaintiff to show that every person interested or
concerned (usually as customer) in the class of goods for
which his
trade mark has been registered would probably be deceived or
confused. It is sufficient if the probabilities establish
that a
substantial number of such persons will be deceived or confused. The
concept of deception or confusion is not limited to
inducing in the
minds of interested persons the erroneous belief or impression that
the goods in relation to which the defendant’s
mark is used are
the goods of the proprietor of the registered mark, ie the plaintiff,
or that there is a material connection between
the defendant’s
goods and the proprietor of the registered mark; it is enough for the
plaintiff to show that a substantial
number of persons will probably
be confused as to the origin of the goods or the existence or
non-existence of such a connection.
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 consumer 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 marketplace 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.’
[17]
Plascon-Evans
itself
concerned two word marks, both used in relation to textured coatings
(a type of paint), the registered mark being
‘
Micatex’
and the allegedly infringing mark ‘Mikacote’
.
Although the case was regarded as not being an easy one (at 643G),
the court found in favour of the proprietor. Both products
were
available at hardware stores, general dealerships and other retail
outlets. Although persons skilled in the paint trade were
unlikely to
be deceived or confused, the lay person might well. Such a person
might have an imperfect recollection of the applicant’s
mark
and would tend to recall it as
‘
Mica-something’or
‘a
word starting
with mica’ (at 643B). The phonetically identical first two
syllables ‘mica’/mika’
,
on which the emphasis would fall in pronunciation, gave the marks
their dominant impression or idea, focusing on a known word
for a
known substance. By contrast, the un-emphasised final syllable of the
two marks
(‘tex’/‘cote’)
made less of an impression, as both
appeared to be derived from the phrase ‘texture coating’.
This outcome can be contrasted
with
The
Upjohn Company v Merck & Another
where
a full court said that the word marks ‘
Repromap’
and ‘Reprodin’, both in
relation
to veterinary pharmaceuticals, were not deceptively or confusingly
similar in sound, sense or appearance, even though the
‘repro’
part of the words was in each case derived from ‘reproduction’
(at 227I-228B).
[18]
There is also an
inter-relationship between the similarity of the marks and the
similarity of the goods/services. Lesser similarities
in the marks
might be counter-balanced by stronger similarities in the
goods/services but ultimately the question remains whether
in
combination there is a likelihood of confusion or deception (see
Mettenheimer & Another v
Zonquadrif Vineyards CC & Others
2014
(2) SA 204
(SCA) para 11)
.
In regard specifically to the goods and services to which the
respective marks are applied, relevant considerations will include
(a) the uses of the respective goods; (b) the users of the
respective goods; (c) the physical nature of the goods; and
(d) the trade channels through which the goods respectively
reach the market (
Mettenheimer
supra para 13)
.
[19]
I was referred to a
number of other cases, including the recent judgement of the Supreme
Court of Appeal in
Roodezandt
Ko-Operatiewe Wynmakery Ltd
v
Robertson Winery (Pty) Ltd & Another
[2014]
ZASCA 173.
Proceedings had been instituted by the first respondent,
the proprietor of the trade marks ‘Robertson Winery’ and
‘Robertson
Vineyards’, registered and used in relation to
wine, against the appellant, who had later obtained registration for
the trade
mark ‘Robertson Hills’, also registered and
used in relation to wine. The first respondent sought an order for
the
removal of the appellant’s mark from the register. The
trial court granted the order and an appeal failed. The outcome of
the appeal hinged on a comparison of the marks for similarity, so as
to establish whether the appellant’s mark was likely
to deceive
or cause confusion (para 4).
[20]
Brand JA quoted with
approval the following passage from
Laboratoire
Lacharte SA v Armour-Dial Incorporated
1976
(2) SA 744
(T):
‘
We
have had ample time for full consideration and close comparison of
the two trademarks with which we are concerned. These advantages,
however, carry their own dangers. They have caused us to look at the
trademarks with far greater care than they would be looked
at by the
members of the public whose probable reactions we are required to
assess, and with a far keener awareness of similarities
and
dissimilarities than such people would probably have as they go about
their daily lives. What we have now to do is, therefore,
to transport
ourselves, notionally, from the court room or the study, to the
marketplace. We must try to look at the marks as they
will be seen,
if they are both in fair and normal commercial use, by the
hypothetical consumers of [wine]. Those will be people
of many races
and degrees of education, having varied gifts, interests and talents.
We are not to postulate the consumer of “phenomenal
ignorance
or extraordinarily defective intelligence”…We are to
consider a person of average intelligence and proper
eyesight, buying
with ordinary caution.’
[21]
Brand JA proceeded to
tabulate various considerations, crystallised from earlier decisions
of the court, most of which in his view
found application in the case
the court was called upon to decide (para 6):
‘
(a)
A likelihood of confusion does not only arise when every person
interested or concerned in the class of goods for which the
trade
mark has been registered could probably be deceived or confused. It
also arises if the probabilities establish that a substantial
number
of such persons will be deceived or confused.
(b) The concept of deception or
confusion is not limited to inducing in the minds of these interested
persons the erroneous belief
or impression that the two competing
products are those of the objector or that there is a connection
between these two products.
A likelihood of confusion is also
established when it is shown that a substantial number of persons
will probably be confused as
to the origin of the products or the
existence or non-existence of such a connection.
(c) The determination of the
likelihood of confusion involves a comparison between the two
competing marks, having regard to the
similarities and differences in
the two and an assessment of the impact it would have on the average
type of customer who is likely
to purchase the kind of goods to which
the marks are applied.
(d) The marks must not only be
considered side-by-side, but also separately.
(e) It must be borne in mind
that the ordinary purchaser may encounter goods bearing one mark with
an imperfect recollection of
the other.
(f) If each of the competing
marks contains a main or dominant feature or idea, the likely impact
made by this dominating feature
on the mind of the customer must be
taken into account. This is so because marks are remembered by some
significant or striking
feature rather than by the photographic
recollection of the whole…’
[22]
The court concluded
that ‘Robertson’ was the dominant feature of the
competing marks, the suffixes ‘Hills’,
‘Winery’
and ‘Vineyards’ being non-distinctive. Although
‘Robertson’ was also the name of a
town, the use of the
name exclusively with reference to the wine of the specific producer
for a lengthy period had resulted in
the name acquiring
distinctiveness with reference to wine, in the same way as ‘Windhoek’
had acquired distinctiveness
in relation to beer.
[23]
In
Specsavers
International Ltd & Others v Asda Stores Ltd
[2012]
EWCA Civ 24
the English Court of Appeal recently stated the approach
as follows in a passage consistent with our own authorities (I add
emphasis
with a view to one of the applicant’s arguments in the
present case):
‘
On the
basis of these and other cases the Trade Marks Registry has developed
the following useful and accurate summary of key principles
sufficient for the determination of many of the disputes coming
before it:
(a)
the likelihood of confusion must be appreciated globally, taking
account of all relevant factors;
(b)
the matter must be judged through the eyes of the average consumer of
the goods or services in question, who is deemed to be
reasonably
well informed and reasonably circumspect and observant, but who
rarely has the chance to make direct comparisons between
marks and
must instead rely upon the imperfect picture of them he has kept in
his mind, and whose attention varies according to
the category of
goods or services in question;
(c)
the average consumer normally perceives a mark as a whole and does
not proceed to analyse its various details;
(d)
the visual, aural and conceptual similarities of the marks must
normally be assessed by reference to the overall impressions
created
by the marks bearing in mind their distinctive and dominant
components,
but it is only when all other components of a complex
mark are negligible that it is permissible to make the comparison
solely on
the basis of the dominant elements
;
(e)
nevertheless, the overall impression conveyed to the public by a
composite trade mark may, in certain circumstances, be dominated
by
one or more of its components;
(f)
and beyond the usual case, where the overall impression created by a
mark depends heavily on the dominant features of the mark,
it is
quite possible that in a particular case an element corresponding to
an earlier trade mark may retain an independent distinctive
role in a
composite mark, without necessarily constituting a dominant element
of that mark;
(g)
a lesser degree of similarity between the goods or services may be
offset by a greater degree of similarity between the marks,
and vice
versa;
(h)
there is a greater likelihood of confusion where the earlier mark has
a highly distinctive character, either per se or because
of the use
that has been made of it;
(i)
mere association, in the strict sense that the later mark brings the
earlier mark to mind, is not sufficient;
(j)
the reputation of a mark does not give grounds for presuming a
likelihood of confusion simply because of a likelihood of association
in the strict sense;
(k)
if the association between the marks causes the public to wrongly
believe that the respective goods [or services] come from
the same or
economically-linked undertakings, there is a likelihood of
confusion.’
[24]
In determining whether
the use of the allegedly infringing mark is likely to deceive or
cause confusion, the court should compare
such use not only with the
use currently made by the proprietor but also such notional use as
may be regarded as fair and normal
(see
Plascon-Evans
supra at 641E-I).
Evidence as to the presence or absence of actual confusion or
deception may be relevant in assessing whether there
is a likelihood
of deception or confusion in the current use of the respective marks
but in the nature of things there will not
be such evidence where the
use of the allegedly infringing mark is contrasted with notional fair
and normal use by the proprietor
(
Compass
Publishing BV v Compass Logistics Ltd
[2004]
EWHC 520
(Ch) para 22). In an infringement case (as distinct from a
registration case), notional use is only relevant in regard to the
proprietor’s
mark; in the case of the allegedly infringing
mark, the court has regard to its actual use, not the manner in which
the defendant
might notionally use his mark in the future
(
Plascon-Evans
at
641I-642B). Although Corbett CJ’s observations on this latter
aspect were
obiter
,
they were accepted by counsel in the present case as representing the
law. See also
Puma
AG Rudolf Dassler Sport v Global Warming (Pty) Ltd
2010
(2) SA 600
para 10, where Harms DP said that what is required in a
trade mark infringement case is ‘an objective comparison
between
the registration and the defendant’s actual use’,
and
New Media
Publishing (Pty) Ltd v Eating Out Web Services CC
[2005] ZAWCHC 20
;
2005
(5) SA 388
(C) at 394H-I.
[25]
It has been said that
the question of confusing or deceptive similarity is very much a
matter of ‘first impression’
and that one should ‘not
peer too closely’ at the registered mark and the alleged
infringement to find similarities
and differences (
Puma
v Global Warming
supra
para 9). The first impression, in the context of litigation, is the
impression made on the judge. Since the judge may not
be
representative of all the classes of persons who consume the relevant
product or service, and since the judge will be seeing
the marks as
set out in court papers rather than in the market place, the judge
will naturally need to test his or her first impression
in accordance
with the principles set out in the cases.
[26]
The question arises as
to what aspects, if any, of the way the marks are actually deployed
by the parties on their respective products
or services are relevant
in assessing the likelihood of deception or confusion. This was not a
question addressed in argument before
me; perhaps leading counsel on
both sides, being very experienced in trade mark law, took it for
granted. In
Adidas
Sportschuhfabriken
Adi Dassler
KG v
Harry Walt & Co (Pty) Ltd
1976
(1) SA 530
(T) Botha J emphasised the distinction between an action
based on trade mark infringement and an action based on passing-off,
stating
that in trade mark infringement the manner in which the marks
have actually been used, including additional features of get-up and
distinguishing features not forming part of the registered mark and
the allegedly infringing mark, are not taken into account.
It was
irrelevant, he considered, that the proprietor had as yet not used
his mark in respect of particular goods or in a particular
way. On
the trade mark part of the case he thus disregarded the fact that the
proprietor invariably used its registered device
mark (three stripes)
on shoes in conjunction with the word ‘Adidas’ (not a
registered mark in South Africa) and that
the alleged infringer, who
used a mark on shoes consisting of four stripes, placed a tag on the
lower part of the heel with the
name ‘Beaver’ (at
533E-536A; see also
John
Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd
1977
(3) SA 144
(T) at 149D-H;
International
Power Marketing (Pty) Ltd v Searles Industrials Pty Ltd
1983
(4) SA 163
(T) at 165
in
fine
;
New
Media Publishing
supra
at 396I-397G).
[27]
In
Metal
Box South Africa Ltd v
Midpak
Blow-Moulders (Pty) Ltd
1988
(2) SA 446
(T) McCreath J said that
s 44(1)(
a)
of the Trade Marks Act 62 of 1963, the forerunner of the current
s 34(1)(a), did not require the
use
of the marks to be confusing or deceptive; the confusion and
deception related to the mark itself (451G; see also
Standard
Bank of South Africa Ltd v United Bank Ltd & Another
1991
(4) SA 780
(T) at 788E).
[28]
Insofar as these
judgements, and in particular the
Adidas
case, suggest that
one should not have regard to the manner in which the defendant has
actually used his mark but to the use of
the mark in any manner which
may be regarded as a fair use of it (
Adidas
at 535E-F), the
approach is at odds with
Plascon-Evans
.
In regard to the proprietor’s mark, one must have regard not
only to actual use but to notional use of the mark in a fair
and
normal manner. This does not render the manner of current use
irrelevant; it merely indicates that the proprietor’s rights
are not limited to the manner in which he currently uses the
registered mark, so that apart from actual current use one must have
regard to notional use of the mark in a fair and normal manner. This
could include, where the registration is not limited as to
colour,
the use of his mark with a different colour scheme to the one he has
hitherto used (
Stellenbosch
Farmers’ Winery Ltd v Stellenvale Winery (Pty) Ltd
1957
(4) SA 234
(C) at 241E-F).
[29]
Accordingly, one’s
‘first impression’, which may be influenced by matters of
get-up which are, in terms of the
above principles, irrelevant, will
again need to be adjusted so as not to embark upon the wrong enquiry.
[30]
The cases discussed
above hold that one must, in the case of the allegedly infringing
mark, disregard distinguishing features outside
of the mark itself.
That raises the question as to what constitutes the allegedly
infringing mark (cf
Verimark
supra para 9). In
Adidas
the
‘Beaver’ heel tag was evidently something separate and
spatially removed from the four stripes which were alleged
to
infringe the proprietor’s three-stripe mark. In the present
case, there is no doubt that the respondents’ marks
comprise at
least the words ‘Lucky Fish’ and ‘Lucky Fish &
Chips’. The respondents’ signage,
in and outside their
outlets and on their takeaway packaging, also incorporates the
fish-on-plate device. I would have thought
that the words and device
together constituted the respondents’ trade mark (cf
Puma
v Global Warming
supra
paras 6-7). It is true that on some menu items the respondents use
the words ‘Lucky Fish’ in isolation but any
consumer
looking at the menu will already have identified the outlet by
reference to the composite logo.
[31]
The respondents have
only applied for registration of ‘Lucky Fish’ and ‘Lucky
Fish & Chips’ as word
marks and have not applied for the
registration of a logo mark comprising the words ‘Lucky Fish’
together with the
fish-on-plate device. This would not in itself be
decisive. The applications for registration of the word marks are
opposed and
might never be granted. In the meanwhile, one is
concerned with the trade marks actually used by the respondents. In
the material
attached to the founding papers as illustrative of the
alleged infringement, the fish-on-plate device always appears
together with
the words ‘Lucky Fish’. I would thus have
thought it unrealistic to disregard the fish-on-plate device in
assessing
confusing or deceptive similarity. However, in the
affidavits the parties focused their attention on the word marks. The
respondents
appear to have been content to fight the case on the
basis that their marks were confined to the words. They did not, in
their
answering papers or in argument, assert that the fish-on-plate
device was a part of their trade mark (their ‘badge of origin’)
and did not refer to that device as a distinguishing feature.
[32]
I thus consider that I
must limit myself, in the case of the alleged infringing use, to the
word marks ‘Lucky Fish’
and ‘Lucky Fish &
Chips’. The latter form of the word mark is the one which
appears on all signage and takeaway
packaging and should in my view
be regarded as the mark actually used by the respondents.
[33]
In the case of the
applicant, there are two registered marks, namely the word mark
‘Lucky Star’ and the device mark
previously described.
[34]
In regard to the actual
use made by the applicant of its marks, my first impression, on
reading the papers and seeing the marks,
was that there was no
likelihood of deception or confusion. This first impression was a
combined result of the lack of significant
similarity in the marks
and in the products and services to which they are respectively
applied. Like Harms DP in
Puma
supra, argument did
not convince me to the contrary.
[35]
It is perhaps
inevitable that when one seeks to explain one’s first
impression in more detail, what one really is doing is
identifying,
ex post facto as it were, the various features which caused one
instinctively to react as one did. That process of
reasoning might in
certain circumstances cause one to question one’s first
impression but, as I say, that did not occur in
the present case.
[36]
The applicant’s
marks are applied to canned fish. The canned fish is sold in
supermarkets as well as in smaller retail outlets.
The retail outlets
have their own identity and branding (Pick ʼn Pay, Checkers
etc). The customer at the retail outlet thus
associates the
applicant’s marks not with the outlet but with the specific
canned product, which is one of very many products
of all kinds to be
found in the retail outlet.
[37]
The respondents’
marks, by contrast, are used primarily as an identifier of the
outlet, ie the restaurant and takeaway establishment.
Although a few
items on the menu incorporate the words ‘Lucky Fish’, the
ordinary consumer will remember the words
‘Lucky Fish’ or
‘Lucky Fish & Chips’ as the name of a
restaurant/takeaway establishment rather than
the name of a specific
product.
[38]
The applicant’s
canned products would typically be bought by consumers doing their
grocery shopping. The canned products would
not be for immediate
consumption but to be taken home and opened when and as desired.
[39]
The products which the
respondents sell, by contrast, are cooked fish and ancillary food
stuffs for immediate consumption, including
at tables within the
establishment. The menu is typical of what one would expect in a
medium-priced restaurant and takeaway establishment
specialising in
fish. The menu calls to mind the Ocean Basket franchise (which, I
imagine, would be a prime competitor). I accept
that the applicant’s
canned products are nutritious and are consumed by a great many
people in South Africa. Nevertheless,
the applicant’s products,
and particularly the very popular canned pilchards, cannot, I think,
be regarded as aspirational.
The applicant’s products would
typically be part of the necessary grocery purchases of the consumers
who buy the product.
The respondents’ offering, by contrast,
would typically be part of a consumer’s discretionary spend –
a treat,
as it were.
[4]
I accept the respondents’ statement that they would not want
their customers to make an association with the applicant’s
canned products and have no intention that such an association should
be made.
[40]
Apart from these
differences, the parties sell different fish products: pilchards,
mackerel, sardines, mussels and tuna (all canned)
in the case of the
applicant; hake, snoek, prawns and calamari (all cooked) in the case
of the respondents.
[41]
Although the applicant
has registered the word mark ‘Lucky Star’, the word mark
in isolation is not what the average
consumer sees or remembers. The
average consumer sees the canned products. None of the applicant’s
products are sold only
under the word mark. All of them bear the
device mark. In the case of the high-volume products such as
pilchards, the products
bear the full device mark. In the case of
some of the other products, the leaping fish is omitted from the
device but the label
still has the star, the diagonal lines and the
stylised sea. The device mark, or parts of it, are also employed in
all the examples
given by the applicant of its advertising on
bill-boards and buses, as in-store merchandising, on television, in
social media and
so forth. The word mark in isolation may be used on
commercial and other formal documentation but the persons who see
such documentation
are not the average consumers and would not be
likely to be confused, even if there were some similarity in the word
marks.
[42]
The applicant’s
device mark is in appearance quite dissimilar from the respondents’
marks (which, for reasons explained,
exclude the fish-on-plate
device). The only similarity is the word ‘Lucky’. The
applicant’s device mark incorporates
the following features
absent from the respondents’ marks: the word ‘Star’,
the five-pointed star, the diagonal
lines, the leaping fish and the
stylised sea. The letters in the word ‘Lucky Star’ are
broad and written with a curving
base – the terminal letters
are the tallest, shrinking in height towards the middle. (The curving
base and dimensions of
the letters in relation to the other features
of the device are part of the device mark as registered.) In the
respondents’
marks the letters are thin and of uniform height.
The words ‘Lucky’ and ‘Fish’ are separated by
a dot,
and there are the additional sign and word ‘&
Chips’.
[43]
The applicant’s
case for similarity would not be strengthened if one were to include,
as part of the respondents’ mark,
the fish-on-plate device. The
respondents’ fish is quite different in appearance (broad
rather than narrow, clearly a different
species). It is positioned
laterally on a dining plate, apparently dead and ready for
consumption, whereas the applicant’s
fish is very much alive.
The idea of readiness for consumption is fortified by the knife and
fork. The applicant’s device
mark does not incorporate a plate
or knife and fork.
[44]
If one were, as part of
assessing confusing or deceptive similarity between the marks as
currently deployed in the market place,
to have regard to their
get-up, the differences become even more pronounced. (In
PPI
Makelaars & Another v Professional Provident Society of South
Africa
1998 (1) SA
595
(SCA) Harms JA, while observing that the respondent’s
registered trade mark was not limited as to colour, regarded as
relevant
that the appellants had chosen the respondent’s
corporate blue colour scheme (at 604E-H).) Red and orange feature
prominently
in all the variants of the applicant’s product
labels. In most instances the background is red or orange. Where the
background
is white, the words ‘Lucky Star’ are in red or
orange and have outlines and shading in a contrasting colour which
give
them a three-dimensional appearance. The respondents’
signage, by contrast, is dominated by shades of blue and white. The
respondents cannot be said to have selected a colour scheme
calculated to call to mind the applicant’s labels.
[45]
The applicant’s
main contention in the founding papers and in argument was that the
word ‘Lucky’ was the dominant
feature of both marks. This
was said to be so because ‘Lucky’ was the first word in
the word mark and because the word
‘Star’ was a laudatory
epithet indicating quality rather than a distinctive word indicating
origin (for the second
of these propositions I was referred to
Star
Shirt Clothing Factory Natal (Pty) Ltd v Registrar of Trademarks
1972
(1) SA 562
(D) at 567A-C). I regard the argument as contrived.
[46]
In the first place, the
argument rests on the proposition that ‘Lucky Star’ is
used as a word mark in isolation and
that the only comparison is
between that word mark and the respondents’ ‘Lucky Fish’.
But as I have already observed,
the mark which the applicant applies
to its products and which the average consumer sees is the device
mark, of which the words
‘Lucky Star’ form only part. The
other features of the device mark are striking and memorable.
[47]
But even taking the
applicant’s word mark in isolation and contrasting it with the
respondents’ word mark ‘Lucky
Fish’, I reject the
argument that the word ‘Lucky’ is the dominant feature of
both marks, ie the one likely to
stick in the mind of the average
consumer. Although the word ‘star’ can sometimes be an
indicator of quality (this
was so in the
Star
Shirt
case supra -
grading the quality of something by awarding it a certain number of
stars), ‘star’ is in fact a noun while
‘lucky’
is an adjective. Unsurprisingly, therefore, the adjective and noun in
combination make up a composite expression
(‘Lucky Star’).
This is also true of the respondents’ mark (‘Lucky
Fish’). The adjective ‘lucky’
is such a common one
that in isolation it cannot be regarded as distinctive. It is only in
combination with a noun that it might
become so. (The respondents in
their answering papers attached a list of registered company names in
which ‘lucky’
features in combination with various nouns.
These include ‘Lucky Bean’, Lucky Chicken’, ‘Lucky
Fairy’,
‘Lucky Love’, ‘Lucky Me’,
‘Lucky Streak’, ‘Lucky 13’. The applicant
itself has
a registered mark ‘Lucky Pet’ in relation to
animal foodstuffs. And there is, of course, the famous cigarette
brand
‘Lucky Strike’.)
[48]
As it happens, the
applicant chose an expression which was already idiomatic in the
English language – ‘you can thank
your lucky stars’,
‘I was born under a lucky star’. The phrase ‘lucky
star’ here refers to a harbinger
of good fortune. This
connotation is reinforced by the five-pointed star which is
invariably placed on the applicant’s product
labels beneath the
words ‘Lucky Star’. I accept that some consumers may not
know the idiomatic expression. Nevertheless,
neither the idiomatic
expression ‘Lucky Star’ nor the ordinary meaning of the
two words in combination has any natural
association with fish. It is
simply a catchy expression which, through prolonged use by the
applicant, has in South Africa become
associated with canned fish.
[49]
The respondents also
chose a composite phrase which is idiomatic in the English language.
An adult may affectionately exclaim to
a child, ‘You lucky
fish!’, meaning ‘How fortunate you are!’. Unlike
the applicant’s word mark, the
respondents’ mark involves
word-play – the metaphorical fish in the composite idiomatic
expression and the literal
fish served by the respondents. The
expression ‘Lucky Fish’ has, no doubt, already started to
build a reputation for
the respondents in Cape Town with reference to
cooked fish served in a restaurant/takeaway environment.
[50]
Apart from the verbal
sense of the two expressions, there is nothing in the appearance or
sound to elevate the word ‘Lucky’
to a dominant feature.
In
Plascon-Evans
supra the court was
dealing with a single word
(‘Micatex’/Mikacote’)
which, as a matter of appearance, was
more apt to confuse unless one saw the two products side-by-side.
Furthermore, as a matter
of sound, both single words were pronounced
with the emphasis on the first syllable, the third (and potentially
distinguishing)
syllable being un-emphasised in speech. In the
present case, by contrast, there are two words. The average consumer
will not visually
pass over or fail to notice ‘Star’ in
the one instance and ‘Fish’ in the other. Furthermore, in
natural
speech the first and third syllables in the composite
expressions would have equal emphasis, again tending to recruit the
respective
words ‘Star’ and ‘Fish’ as equal
partners in the word marks. The appearance and sound of the
respondents’
mark are taken even further away from the
applicant’s word mark by the additional elements ‘&
Fish’.
[51]
In both cases,
therefore, it is the composite expression which would stick in the
minds of the average consumer. A consumer would
no more say that he
is going to the shop to buy some ‘Lucky’ (meaning a can
of pilchards) than he would say he is going
out with his family to
‘Lucky’ (meaning a ‘Lucky Fish’ restaurant
and takeaway outlet). There is, at any
rate, no evidence to this
effect.
[5]
[52]
There was no acceptable
evidence of any confusion or deception in the market place. Two
instances of supposed actual confusion were
alleged. The applicant
included in its founding papers an affidavit by a legal assistant
employed by its attorneys of record in
which she recounted,
anecdotally, that when she had recently suggested to her sister that
they look for a Lucky Fish restaurant
at which to have lunch, her
sister had replied, ‘Why would we want to eat pilchards?’.
There is nothing to indicate
that this was anything other than a
jocular remark. No affidavit by the sister was filed and the legal
assistant herself did not
claim that her sister had been confused.
The question attributed to the sister tends to reinforce the
respondents’ contention
that they would not want to create any
association between their outlets and the applicant’s canned
fish products.
[53]
The second instance of
alleged confusion was included in the replying papers – a
favourable online review of the Kalk Bay
Lucky Fish outlet. The
reviewer mistakenly referred to ‘Lucky Star, Kalk Bay’.
Once again, there is no evidence that
the reviewer was in fact
confused. The review appeared immediately above a photographic image
of the entrance to the restaurant,
with the name ‘Lucky Fish &
Chips’ clearly visible. A slip of the tongue is not the same as
confusion. It is not
unknown for a person to use one familiar
expression when she intended another in circumstances where she is
not in the least confused
between the two expressions or what they
signify.
[54]
Having regard to the
differences in the marks and in the products and services to which
they are applied, I do not consider that
there is any likelihood of
deception or confusion in the marks as currently used.
[55]
This leaves notional
use. The applicant’s marks are not registered in Class 43, the
class appropriate to restaurant services.
Whether the Class 29 and 30
registrations, read perhaps with the Class 42 registration, would
cover the sale of cooked fish, chips
and salads as takeaway food is
unclear. Those registrations would, though, entitle the applicant to
sell its canned products and
other fish products, including fresh
fish, from retail outlets called ‘Lucky Star’. The
applicant did previously own
a seafood restaurant, takeaway shop and
fresh fish retailer in Hout Bay called
‘
Snoekies’
but sold this business in 2006. The
applicant’s deponent stated in his founding affidavit, without
elaboration, that the applicant
desired in future to use its Lucky
Star mark ‘for restaurant-style services’, adding that
this would ‘be a natural
progression for the brand’. In
his answering affidavit Mr Townsend pointed out that in November 2012
the applicant applied
for registration of a ‘Lucky Star’
device mark in Class 43 for ‘Services for providing food and
drink’
but that nearly two years had passed without any
restaurant being opened. In reply, the applicant’s deponent
said that one
could not infer from this that the applicant will never
enter the restaurant market. He added that Lucky Star restaurants
would
not necessarily only serve meals consisting of canned pilchards
– it could serve a variety of fish and seafood meals ranging
from soups, pastas and curries to sandwiches, quiches and salads.
(The status of this Class 43 application is unclear. It seems
not yet
to have been finally approved.)
[56]
The notional uses to
which I may have regard are notional uses in the classes for which
the applicant’s marks are currently
registered. The applicant
does not say that it has a registration in Class 43. I thus exclude
notional use in the course of conducting
a restaurant. I shall,
however, assume in favour of the applicant that its current
registrations would permit it to have retail
outlets selling cooked
takeaway fish, chips and salads and retail outlets selling fresh fish
and/or canned fish.
[57]
I must nevertheless
limit the notional use to use ‘in a fair and normal manner’.
I do not understand this expression
to mean, as the respondents
counsel suggested, that the proprietor must prove that he has any
current plans to use the mark in
the manner supposed; it is
sufficient that such use would be fair and normal. On the other hand,
what is fair and normal cannot,
I think, be assessed without regard
to the proprietor’s historical and current business operations,
in the sense that certain
future uses might be regarded as a fair and
normal evolution and expansion in the proprietor’s operations
whereas others
that could be conceived of in theory would be too far
removed from reality in practice to be regarded as ‘normal’
in
all the circumstances.
[58]
Would it be a normal
evolution of the applicant’s historical and current operations
for it to start operating its own retail
outlets for takeaway food or
for fresh fish? The applicant has been the proprietor of the ‘Lucky
Star’ marks for decades
and has not as a fact branched into
these fields. The applicant currently owns twelve fishing vessels
which catch pilchards, anchovy
and red-eye herring. It owns a fish
cannery and a fishmeal and fish oil plant in St Helena and another
fishmeal and fish oil plant
in Hout Bay. The applicant has joint
ventures and supply contracts with the South African holders of
pelagic fishing rights and
with foreign suppliers of frozen
pilchards, canned tuna, mackerel, sardines and mussels. The applicant
does not say that it holds
quotas for fish such as hake and snoek or
that it catches or receives supplies of calamari or prawns. These
would be among the
staple fish products in which a fish takeaway
outlet would deal. None of the fish species which the applicant
currently catches
or receives from third parties are fish which would
typically feature in a takeaway outlet’s menu. The applicant
has also
not, apart from Snoekies, which it disposed of a eight years
ago, operated as a retailer; it supplies its canned products on a
wholesale basis to retailers and traders. The applicant is a
high-volume producer. Its turnover and profits from current
operations
are very large. There is no suggestion on the papers that
the current routes to market are not the most efficient and
profitable
for the company.
[59]
All of these
circumstances make me doubt whether it would be a normal evolution of
the applicant’s business to branch out
into the operation of
takeaway outlets for cooked fish or into retail operations for fresh
fish or even canned fish. The applicant,
I should add, does not say
that it wishes to sell its canned products through its own retail
outlets.
[60]
If one were to suppose
that it would be a natural evolution for the applicant to start
retailing its own canned products, I have
no doubt that it would name
and brand its stores in a way which maximised the goodwill associated
with the ‘Lucky Star’
marks. This it would do by using
names and signage which had an appearance closely similar to the
labels which appear on its canned
products. That would be the normal
way for the applicant to expand into the retailing of its canned
products. If it did so, its
retail stores would be as distinct from
the respondents’ outlets as the applicant’s current
canned products are.
[61]
If one were to suppose
that it would be a normal evolution for the applicant to start
retailing fresh fish of the kind in which
it already deals in canned
form (pilchards, anchovies, sardines, tuna and mussels), the same
would be true – the normal use
of the marks in respect of such
operations would be use which maximised the association with the
marks as currently used on the
applicant’s very successful
canned products. Again, therefore, the normal use of the marks for
this notional use would be
as distinct from the respondents’
use of its marks as is currently the case.
[62]
If one were to
postulate a scenario in which the applicant began to operate a chain
of fish takeaway outlets (a diversification
which would, as I have
observed, entail the sourcing and cooking of fish products in which
the applicant does not currently deal),
how would the applicant
naturally go about this? I find it implausible that the applicant
would want to create an association between
these takeaway outlets
and its canned fish products – one would not want the potential
patrons of the takeaway outlets to
think of canned pilchards.
Furthermore, the revenue generated by such takeaway outlets would
inevitably be dwarfed by the revenue
generated by the canned
products. The applicant would not wish to risk the brand value of the
canned products through less predictable
customer reaction to its
takeaway outlets. So I would not naturally expect the applicant to
use the ‘Lucky Star’ marks
at all in relation to takeaway
outlets but rather something like ‘Snoekies’, which the
applicant previously used.
[63]
But if the applicant
did see value in using the ‘Lucky Star’ marks in relation
to takeaway outlets, that would be because,
unlike me, the applicant
would have concluded that the goodwill associated with the marks when
used in relation to its canned products
would assist the operation of
the takeaway outlets. On that hypothesis, one would again have names
and signage following as closely
as possible the features of the
device marks on the canned products. Again, there would be no
confusion with the respondents’
outlets.
[64]
It may be said that the
applicant is not limited to using its marks in a particular style or
colour scheme. But one is not concerned
with purely theoretical use
of the marks but with use which would be fair and normal (cf
National
Brands Ltd v Blue Lion Manufacturing (Pty) Ltd
2001
(3) SA 563
(SCA), where the court found that the word marks ‘Romany
Creams’ and ‘Romantic Dreams’, both in relation
to
chocolate biscuits, were not, as ordinarily rendered, confusingly or
deceptively similar and that the increased similarity which
would be
brought about by highlighting their common components and minimising
their contrasting components would not be fair and
normal use of the
marks – para 9). It would not be normal to dilute the value of
one’s marks by deploying them in a
new (and inevitably
significantly smaller) operation in a way which differed materially
from the existing marks. One would either
follow the existing
features or one would use a different mark altogether.
[65]
But even if I must
assume that the applicant might go into business as a fish takeaway
outlet, using the simple name ‘Lucky
Star’ in a style and
manner completely different from the way it currently deploys its
device marks, I go back to the comparison
I have already undertaken
of the parties’ respective word marks. In this comparison of
notional use by the applicant, the
parties’ products would
admittedly have a greater degree of similarity than is currently the
case. Nevertheless, the differences
in the word marks remain such
that I would still conclude that there is no likelihood of confusion
or deception.
[66]
One thing is clear. It
would not be fair and normal use of its marks by the applicant to use
the words ‘Lucky Star’
with reference to fish takeaway
outlets in a style which so closely copied the respondents’
marks as to give rise to a likelihood
of deception or confusion. If
the applicant were closely to imitate the respondents’ signage
(colour scheme, letter size
and style, the fish-on-plate device),
changing only ‘Lucky Fish’ to ‘Lucky Star’,
there might perhaps be
deception or confusion. However, it would not
be fair and normal for the applicant to deploy its marks in this way.
On the contrary,
if it were to do so it would open itself up to an
action for passing-off (cf
IPC
Media Ltd v Media 10 Ltd
[2014]
EWCA Civ 1439
para 64;
New
Media Publishing
supra
at 397E).
[67]
The case based on an
alleged infringement of paras (a) and (b) of s 34(1) thus fails.
The
case based on s 34(1)(c)
[68]
There is little I need
say on the dilution case. A prerequisite for such infringement is
that the respondents’ marks should
be ‘similar’ to
the applicant’s. In
Bata
Ltd v Face Fashions CC & Another
2001
(1) SA 844
(SCA) Melunsky AJA said that the word ‘similar’
in s 34(1)(c) must be construed in its specific context and
should
not be given ‘too wide or extensive an interpretation’
since otherwise para (c) ‘might have the effect of
creating an unacceptable monopoly to the proprietor of a trade mark
and thus unduly stultifying freedom of trade’. The learned
judge of appeal considered that para (c) does not apply ‘if the
two marks are similar merely because they contain features
of the
same kind or because there is a slight resemblance between them’;
the word ‘similar’ should in context
be construed as
meaning ‘having a marked resemblance or likeness’ (para
14).
[69]
In
Bata
the appellant’s registered mark was the word ‘Power’
in respect of footwear and clothing. The alleged infringer,
the first
respondent, used ‘Power House’ and ‘Powerhouse’
in relation to clothing. On the s 34(1)(a)
part of the case the
court held that the word ‘House’ in the respondent’s
mark was as significant as the word
‘Power’ and that the
two words used together sufficiently distinguished the respondent’s
clothing from that of
the appellant (paras11-12). In regard to
s 34(1)(c), the court said that the first respondent’s
mark might possibly
be regarded as having a slight superficial
resemblance to the appellant’s but the likeness was not
sufficiently close or
marked to enable the court to hold that they
were similar for purposes of s 34(1)(c) (para 14).
[70]
The applicant’s
complaint in the present case is that the respondents’ use of
their marks will give rise over time to
blurring and thus be
detrimental to the distinctive character of the applicant’s
marks. In my view, however, there is not
a sufficient degree of
similarity in the two marks to make this a plausible case. The words
‘Lucky Star’ and ‘Lucky
Fish’ seem to me to
be at least as different from each other as ‘Power’ is
from ‘Power House’ (cf
Bata
).
In the present case, the absence of current blurring is not
attributable to the fact that the respondents have been using their
marks for a shorter time than the applicant but because the
respondents’ marks are sufficiently different as not to
encroach
on the distinctiveness of the applicant’s marks. And
if the distinctiveness remains, there will not be detriment to the
applicant’s
marks.
Section
11(2)
of the
Companies Act
[71
]
Section 11(2)
of the
Companies Act provides
in relevant part as follows:
‘
(2)
The name of a company must –
(a) not be the same as –
(I) …;
(ii) …;
(iii) a registered trade mark
belonging to a person other than the company…, unless the
registered owner of that mark has
consented in writing to the use of
the mark as the name of the company; or
(iv) … ;
(b) not be confusingly similar
to a name, trade mark, mark, word or expression contemplated in
paragraph (a) unless …[the
exceptions are not applicable
here];
(c) not falsely imply or
suggest, or be such as would reasonably mislead a person to believe
incorrectly, that the company –
(I) is part of, or associated
with, any other person or entity;
(ii)…;
(iii)…;
(iv)…;
(d)….’
[72]
The applicant alleges
that the names of the corporate respondents other than the 6
th
respondent violate these provisions of
s11(2)
by virtue of such names
being confusingly similar to the applicant’s registered trade
mark ‘Lucky Star’. In the
case of the 1
st
respondent, the applicant relies on the further consideration that
the applicant is not only the proprietor of the marks already
mentioned but also (among others) the word mark ‘Oceana
Brands’. The 1
st
respondent’s name co-joins ‘Lucky’ with ‘Brands’.
[73]
I do not think there is
any merit in these complaints. The company names as such are not what
the ordinary consumer sees. The ordinary
consumer sees the respective
marks as deployed in relation to the actual goods and services which
the parties respectively supply
(the labels in the applicant’s
case, the exterior and interior signage and the menus in the
respondents’ case). For
reasons I have explained, there is no
likelihood of confusion and deception there. The company names would
appear on corporate
documentation such as contracts, invoices,
letterheads and the like. However, the ordinary consumer does not see
such documents.
Those who deal with the parties’ corporate
documentation and who see the corporate names are likely to be
suppliers, landlords,
bankers and other knowledgeable persons
(including, in the applicant’s case, the wholesalers,
supermarkets and other retail
outlets that buy its products). These
people are not likely in the least to be confused between the
respondents and the applicant
or the applicants marks (cf
Polaris
Capital v Registrar of Companies & Another
2010
(2) SA 274
(SCA) para 18).
[74]
Furthermore, the only
common feature in the names is the word ‘Lucky’. For
reasons I have already given, the word on
its own is not distinctive.
The respondents attached to their answering papers the results of
company name searches from which
it appears that there are 1063
companies with names which incorporate the word ‘Lucky’,
10 847 which incorporate
the word ‘Star’ and 33
which combine the words ‘Lucky Star’. The 1
st
respondent’s name combines two words to create ‘Lucky
Brands’. There are 3411 companies whose names incorporate
the
word ‘Brands’. (Compare
Peregrine
Group (Pty) Ltd & Others v Peregrine Holdings Ltd & Others
2001 (3) SA 1268
(SCA) para 12, where the court, in rejecting a complaint in terms of
s 45(2A) of the Companies Act 61 of 1973, remarked on
the many
companies in South Africa incorporating the word ‘Peregrine’
in their names.)
[75]
The 1
st
respondent, I should add, does not deal with the average consumer at
all. It does not own or operate fish outlets. Furthermore,
the
applicant’s complaint in its case is not strengthened by the
combined use of ‘Lucky’ and ‘Brands’.
The
marks ‘Lucky Star’ and ‘Oceana Brands’ are
separate marks. The combining of one non-distinctive
word from
each mark so as to make a different composite name (‘Lucky
Brands’) does not strengthen the allusion to either
of the
registered word marks. Put differently, if (as I find) the use of the
word ‘Lucky’ in the 1
st
respondent’s name is not confusingly similar to the mark ‘Lucky
Star’, the addition, in the 1
st
respondent’s name, of the further word ‘Brands’,
which forms no part of the ‘Lucky Star’ mark, could
not
logically increase the chances of confusion with that mark. And if
(as I find) the use of the word ‘Brands’ in
the 1
st
respondent’s name is not confusingly similar to the mark
‘Oceana Brands’, the addition, in the 1
st
respondent’s name, of the further word ‘Lucky’,
which forms no part of the ‘Oceana Brands’ mark,
could
not logically increase the chances of confusion with that mark. To
this I add only that, if it were relevant, there is no
evidence that
the average person (as distinct from a sophisticated user, who would
not in any event be confused) would make any
connection between the
marks ‘Lucky Star’ and ‘Oceana Brands’, ie
that they had a common proprietor
[76]
It may well be, given
the ubiquitous use of the words ‘Lucky’, ‘Star’
and ‘Brands’ in company
names, that the unremarkable
feature of a company name incorporating one of these elements is
insufficient in itself to create
an association with a particular
entity. At any rate, I am satisfied that the names of the corporate
respondents are not confusingly
similar to the applicant’s word
marks ‘Lucky Star’ or ‘Oceana Brands’.
Conclusion
[77]
The application is thus
dismissed with costs including those attendant on the employment of
two counsel.
ROGERS
J
APPEARANCES
For Applicant: Mr P Ginsburg SC and Mr G Marriott
Instructed by:
Adams & Adams
28
th
Floor, 1 Thibault Square
Cnr Long Street & Hans
Strijdom Ave
Cape Town
For 1
st
– 16
th
Respondents: Mr C Puckrin SC and Mr M Seale
Instructed
by: Brian Bacon Inc
2
nd
Floor, Mariendahl House
Newlands
on Main
Main
Road
Newlands
[1]
See record 269-282.
[2]
The 9
th
,
11
th
,
13
th
,
15
th
and 16
th
respondents. The businesses cited as the 7
th
,
8
th
,
10
th
,
12
th
and
14
th
respondents do not have an independent existence.
[3]
This image, of the Bree Street outlet, comes from
the internet. The photographs attached to the papers, at113-123, are
not in
a form which I can incorporate into this judgment.
[4]
The applicant says that on occasion its products
have featured on the menus of well-known restaurants such as The
Mount Nelson
and the Le Quartier Francais. I agree with the
respondents' counsel’s submission that this was gimmicky –
the impact
lay in the very incongruity of seeing canned pilchards in
the context of a high-end restaurant.
[5]
This is in contrast with a decision to which I
was not referred,
NV Sumatra Tobacco
Trading Co v British American Tobacco (Brands) Inc
[2010]
NZCA 24
; (2010) 86 IPR206. There the competing marks (‘Lucky
Strike’ on the one hand, ‘Lucky Draw’ and ‘Lucky
Dream’ on the other) were applied to identical products,
cigarettes. There was evidence that Lucky Strike cigarettes were
known by consumers as ‘Luckies’. There was also a
conceptual similarity, so the court held, in the words ‘Strike’,
‘Draw’ and ‘Dream’. These were among the
considerations which caused the court to find a likelihood of
confusion or deception. This outcome can be contrasted with two
other cases, mentioned and distinguished in the judgment, where
no
likelihood of confusion or deception was found, namely
Cooper
Engineering Co (Pty) Ltd v Sigmund Pumps Ltd
[1952]
HCA 15
;
(1952) 86 CLR 536
(‘Rain King’ and ‘
Rainmaster’
,
both used with reference to water spraying installations) and
Stichting Lodestar v Austin Nichols
[2007] NZCA 61
(‘Wild Turkey’
and ‘Wild Geese’, both used with reference to spirits).