Tag: caselaw

Dinnermates v Piquante Brands International

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)

National Coalition for Gay and Lesbian Equality v Minister of Home Affairs

Constitutional Court of South Africa

2 December 1999

Ackerman J

Issues:

  • Whether it is constitutional for immigration law to facilitate the immigration into South Africa of the spouses of permanent South African residents but not to afford the same benefits to gays and lesbians in permanent same-sex life partnerships with permanent South African residents.
  • Whether, when it has been concluded that provisions in a statute are unconstitutional, the Court may read words into the statute to remedy the unconstitutionality.

Law:

  • S 25(5) of the Aliens Control Act 96 of 1991 [see note 1]
  • Sections 9, 10, 172(1)(b) of the 1996 Constitution

Ratio:

  • As affirmed in the Sodomy case the determining factor regarding the unfairness of discrimination is, in the final analysis, the impact of the discrimination on the complainant or the members of the affected group. [at para 41]
  • The Court’s obligation to provide appropriate relief, must be read together with section 172(1)(b) which requires the Court to make an order which is just and equitable.[at para 65]

Arguments:

For the National Coalition for Gay and Lesbian Equality:

  • “[T]he more vulnerable the group adversely affected by the
    discrimination, the more likely the discrimination will be held to be unfair.”[at para 44]
  • The sting of past and continuing discrimination against both gays and lesbians is the clear message that it conveys, namely, that they, whether viewed as individuals or in their same-sex relationships, do not have the inherent dignity and are not worthy of the human respect possessed by and accorded to heterosexuals and their relationships. This discrimination occurs at a deeply intimate level of human existence and relationality. It denies to gays and lesbians that which is foundational to our Constitution and the concepts of equality and dignity, which at this point are closely intertwined, namely that all persons have the same inherent worth and dignity as human beings, whatever their other differences may be.[at para 42]
  • The impact of section 25(5) is to reinforce harmful and hurtful stereotypes of gays and lesbians.[at para 49]
  • [Gays and lesbians] are capable of constituting a family, whether nuclear or extended, and of establishing, enjoying and benefiting from family life which is not distinguishable in any significant respect from that of heterosexual spouses.[at para 53(a)(viii)]
  • The impact constitutes a crass, blunt, cruel and serious invasion of their dignity. The discrimination, based on sexual orientation, is severe because no concern, let alone anything approaching equal concern, is shown for the particular sexual orientation of gays and lesbians.[at para 54]
  • There is no rational connection between the exclusion of same-sex life partners from the benefits under section 25(5) and the government interest sought to be achieved thereby, namely the protection of families and the family life of heterosexual spouses.[at para 56]

For the Minister:

  • It [is] of considerable public importance to protect the traditional and conventional institution of marriage and that the government accordingly has a strong and legitimate interest to protect the family life of such marriages and was entitled to do so by means of section 25(5).[at para 55]

Conclusion:

Unfair discrimination:

  • The discrimination in section 25(5) constitutes overlapping or intersecting discrimination on the grounds of sexual orientation and marital status, both being specified in section 9(3) and presumed to constitute unfair discrimination by reason of section 9(5) of the Constitution. [at para 40]
  • Section 25(5) constitutes unfair discrimination and a serious limitation of the section 9(3) equality right of gays and lesbians who are permanent residents in the Republic and who are in permanent same-sex life partnerships with foreign nationals… Section 25(5) simultaneously constitutes a severe limitation of the section 10 right to dignity enjoyed by such gays and lesbians.[at para 57]
  • It is true […] that the protection of family and family life in conventional spousal relationships is an important governmental objective, but the extent to which this could be done would in no way be limited or affected if same-sex life partners were appropriately included under the protection of section 25(5). There is […] no justification for the limitation in the present case and it therefore follows that the provisions of section 25(5) are inconsistent with the Constitution and invalid.[59]

Remedy:

  • Where […] the invalidity of a statutory provision results from an omission, it is not possible to achieve notional severance by using words such as “invalid to the extent that”, or other expressions indicating notional severance. An omission cannot, notionally, be cured by severance. […] The only logical equivalent to severance, in the case of invalidity caused by omission, is the device of reading in. In the present case there are only two options; declaring the whole of section 25(5) to be invalid or reading in provisions to cure such invalidity.[at para 64]
  • As far as deference to the legislature is concerned, there is in principle no difference between a court rendering a statutory provision constitutional by removing the offending part by actual or notional severance, or by reading words into a statutory provision. In both cases the parliamentary enactment, as expressed in a statutory provision, is being altered by the order of a court. In the one case by excision and in the other by addition.[at para 67]
  • It would be absurd to deny the reading in remedy, where it was equally constitutionally justified in relation to the legislature, simply because of its form.[at para 68]
  • In deciding whether words should be severed from a provision or whether words should be read into one, a court pays careful attention first, to the need to ensure that the provision which results from severance or reading words into a statute is consistent with the Constitution and its fundamental values and secondly, that the result achieved would interfere with the laws adopted by the legislature as little as possible.[at para 74]
  • In deciding to read words into a statute, a court should also bear in mind that it will not be appropriate to read words in, unless in so doing a court can define with sufficient precision how the statute ought to be extended in order to comply with the Constitution. Moreover, when reading in (as when severing) a court should endeavour to be as faithful as possible to the legislative scheme within the constraints of the Constitution. Even where the remedy of reading in is otherwise justified, it ought not to be granted where it would result in an unsupportable budgetary intrusion. In determining the scope of the budgetary intrusion, it will be necessary to consider the relative size of the group which the reading in would add to the group already enjoying the benefits. Where reading in would, by expanding the group of persons protected, sustain a policy of long standing or one that is constitutionally encouraged, it should be preferred to one removing the protection completely.[at para 75]
  • In any event the benefits conferred on spouses express a clear policy of the government to protect and enhance the family life of spouses. This policy extends back at least 69 years, for the provisions of section 3(1)(b)(v) of the Immigration Quota Act 8 of 1930 provided a comparable benefit, although less fully and in a more discriminatory manner. The indications are therefore strong that, had Parliament considered the most appropriate way for it to remedy the unconstitutionality of section 25(5), it would have chosen a remedy which did not deprive spouses of their current benefits under the section. This view is fortified by the fact that the government is, in other areas, giving effect to its legislative obligations under the equality clause in respect of same-sex partners. All these considerations indicate that, if reasonably possible, a striking down order should not be the remedy resorted to.[at para 79]
  • An appropriate remedy in the present case must vindicate the rights of permanent same-sex life partners to establish a family unit that, while retaining the characteristic features derived from its same-sex nature, receives the same protection and enjoys the same concern from the law and from society generally as do marriages recognised by law. But it must vindicate at more than an abstract level. It must operate to eradicate these stereotypes. Our constitutional commitment to non-discrimination and equal protection demands this. There is a wider public dimension.[at para 82]
  • The constitutional defect in section 25(5) can be cured with sufficient precision by reading in, after the word “spouse”, the following words: “or partner, in a permanent same-sex life partnership,” and that it should indeed be cured in this manner. Permanent in this context means an established intention of the parties to cohabit with one another permanently.[at para 86]

Notes:

[1] “Notwithstanding the provisions of subsection (4), but subject to the provisions of subsections (3) and (6), a regional committee may, upon application by the spouse or the dependent child of a person permanently and lawfully resident in the Republic, authorize the issue of an immigration permit.”