Supreme Court of Appeal
28 March 2018
Mathopo JA
Issue:
Whether an adaptation of a word in common use and its acompanying device are descriptive marks.
Law:
Section 10(14) of the Trade Marks Act 194 of 1993[1]
Ratio:
- Where the prefix or first element of a word is in common use, the suffix or last element can be the distinctive element for trade mark purposes.
- The main or dominant features of a mark, as well as the general impression and striking features, are all factors to be considered in deciding whether there was a likelihood of confusion or deception [1]
- The phonetic equivalent of a non-distinctive word is itself non-distinctive [2]
Arguments:
For the appellant:
- The word PEPPA is in common use, and is merely a variation of the word “pepper”. It thus could not be considered distinctive or invented in respect of foodstuffs in general.
- The word/element PEPPA appeared in other trade mark registrations, some of which pre-dated the Respondents’ marks.
- The elements MATES and DEW cannot simply be discarded or ignored, as they served to differentiate the respective marks
- The Respondents’ device is simply a descriptive rendering of a sweet piquante pepper. The Court and full Bench had effectively granted the Respondents a monopoly in respect of a descriptive pepper device coupled with a descriptive word or element. This is analogous to, for example, a supplier of grapes not being able to use a device of a bunch of grapes alongside its name and trade mark.
For the respondent:
- The dominant element, PEPPA, which appeared in both marks was a distinctive element, as it did not appear in a dictionary (although the word PEPPADEW does, albeit with the ™ symbol),
- There is a high similarity between the marks, such that when the words DEW and MATES were removed, there was a likelihood of confusion or deception.
Conclusion:
- 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.
- 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.
Notes:
[1] s10(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 theretd 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 20 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;
[2] Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A), Corbett JA
[3] Cochrane Steel Products (Pty) Ltd v M-Systems Group (1272/2016) [2017] ZASCA 189 (13 December 2017)
Lele Muthali 