“Every facet of our daily lives is infused with IP-from the shoes we wear, the coffee we drink, shapes of our cufflinks & the paper we put our legal opinions”[1]

Whilst this quote may be true, intellectual property law is still perceived as a very distant and obscure domain in our jurisdiction. What makes it worse is that, over the years there has been very little litigation in our local courts, which has stifled the development of this law. We are starved of local jurisprudence on trademark issues and have had to hugely rely on decisions made by South African courts. Any ruling on an intellectual property issue, is always an opportunity to clarify the law, a chance to build on our local jurisprudence and is always worthy of mention. The recent pronouncement [2]of the Supreme court[3] in Cairns Foods Limited[4] versus Netrade Marketing (Private) Limited[5] is now part of the leading authorities which further clarifies various issues of trademark infringement and passing off which were put to test in that particular matter.

THE HISTORY OF SUN JAM

For more than five decades, Sun jam has graced many breakfast tables in Zimbabwean homes. It is not possible to compile a list of leading homegrown Zimbabwean brands and miss the SUN jam brand. It is a well-recognised and extensively used trademark in Zimbabwe. Cairns Foods registered its trademark “SUN” word and device in Class 29 under number 1479/95 on 10 October 1995 with respect to jams. In addition to registration, it has been marketing its fruit jam under this word and device in Zimbabwe for over 50 years. It is without doubt that as result of the extensive use over the years Cairns Foods Limited has secured and acquired reputation and good will in its “SUN” jam.

THE DISPUTE

Sometime in 2016, Cairns Foods Limited noticed that Netrade had started promoting and selling its own fruit jam under the name “ROYAL SUN” in similar packaging and had registered its trademark “ROYAL SUN” word mark under registration number 288/2011 in Class 29 in 2011. A legal wrangle ensued on the allegation that Netrade Marketing’s trademark was confusingly similar to the SUN jam trademark which had been registered much earlier. Cairns approached the High Court seeking an interdict against Netrade in terms of section 9A (2) of the Trade MarksAct [Chapter 26:04]. At the heart of the dispute between the parties was the complaint that the mark “ROYAL SUN”, was infringing its registered mark and was also passing off its mark. Customers could not tell the two apart, purchasing one bottle of jam thinking it’s the usual SUN jam. Others were under the impression that the two jams were all manufactured by the same company. There was evidence of actual confusion which was provided to the court and if this continued, it would end up diluting Cairns market share and even taking a knock on its revenue.

At the court of first instance, Cairns’ case was dismissed on the basis that the marks were not identical. The court came to an erroneous conclusion of what constituted both parties’ marks by wrongly interpreting the disclaimers to the trademarks and wrongly applying the test on what constituted infringement. Simply put, the court was of the view that Cairns could not complain that its mark had been infringed when the alleged infringer had only taken the “SUN” part of its trademark and had not imitated the rest of the mark. This understanding did not take away the fact that the trademark had been copied, more so its most dominant part-the word SUN. In any event, Cairns’ case was not hinged on the other parts of its mark such as the arrangement of the fruits on the device. The claim related to the use of the dominant part of its mark which is the word “SUN”. In fact, there had been an oversight of the effect of the disclaimers on both trademarks in dispute which I will briefly discuss below.

DISCLAIMERS

When you obtain registration of a trademark, it is important to understand the extent of the legal rights that you would have been granted. In our jurisdiction the Registrar can accept the application absolutely or subject to such amendments, modifications, conditions, or limitations, as he may think fit[6]. Certain parts of the mark may not be registrable or acceptable. In that case, an applicant may be required to disclaim those parts, which may be viewed as generic, descriptive of the goods or services covered by the mark or simply not capable of obtaining exclusivity, et cetera. Once you have disclaimed a portion of the mark, you are restricted from claiming exclusivity in and to the disclaimed portion, but you still retain the rights for the composite trademark. The device of various fruits which was depicted on the Sun jam logo had been disclaimed and was never part of the SUN jam’s mark. What was theirs, legally, was just the word SUN. On the other had, Netrade had disclaimed the word Royal meaning what was left of their mark was the word SUN. This would leave the two marks identical-SUN jam and SUN jam, technically. The court had misinterpreted this aspect and had come to an incorrect finding on whether or not there was infringement of the SUN jam trademark.

 Irked by the court’s decision, the matter was taken on appeal on various grounds. On second glance by the superior court, Cairns case succeeded on appeal. Mathonsi JA correctly observed that a notional customer encountering Royal Sun Mixed fruit jam would be deceived or confused into believing that they are from the same producer. I will speak into the accuracy of this observation when I discuss the test for infringement.

The importance of this judgment is that it takes us back to the basics of what constitutes a trademark, clarifies rights that are derived from trademark registration, importance of registration, and how you arrive at whether one is infringing your trademark or is passing off. I will recap same, below.

RIGHTS ARISING FROM TRADEMARK REGISTRATION

Trademark registration gives the registrant the exclusive right to object to the use of confusingly similar marks to prevent customers and the public in general from being misled. The rights that you are granted are for a specific class of goods and if anyone was to adopt a similar mark in that same class, you are entitled to interdict that party from use of that mark in terms of Section 9A (2) of the TrademarksAct [Chapter 26:04], amongst other remedies[7]. When Cairns obtained a trademark for the word SUN, it obtained the rights to exclude any third party from using that word mark in relation to jam and secured the rights to solely use that mark perpetually.[8] No other party could use that mark for as long as they owned the trademark and they had the right to pursue anyone who threatened their legal right.

BUT, SUN?

It is important to indicate at this point that the word SUN fora sweet spread or conserve made from fruit and sugar boiled to a thick consistency[9] serves very well in distinguishing the Cairns product from a similar product. The connection between jam and the sun is so far removed to the extent that the word becomes distinctive and capable of legal protection. In the words of Mathonsi JA[10], ‘’The word sun has nothing to do with fruit jam”’. A key learning in this judgment is that common words from everyday language can also be highly distinctive if they communicate a meaning that is arbitrary in relation to the products on which they are used. The word apple for example and the device of an apple for computers is highly distinctive for the goods concerned. There is nothing peculiar in Cairns obtaining “a monopoly” over the word SUN in respect to jam, specifically.

RATIONALE BEHIND TRADEMARK REGISTRATION

Consumers should freely make the choice of the goods that they want to buy on the market and one company should be able to distinguish its goods from those of its competitors. It is not advisable to pick a name/logo/design which is similar to a product that is already existing on the market. Should you pick an identity that is similar to an existing one or that is leaning to one which is in existence, particularly a successful one, suspicions immediately arise, and allegations are made that you are trying to freeride on the success of an already existing mark. That you hold a trademark for it, does not absolve you from the offence, your trademark could still pose a challenge to an earlier registered trademark in the market, and you would still be liable for infringement. Such was the case in the Sun jam matter and Cairns approached the court for an interdict to stop the Royal sun jam from trading on the market. They were not going to allow them a moment in the “sun”.

THE TEST TO BE APPLIED IN ASSESSING INFRINGEMENT: LIKELIHOOD OF CONFUSION

Let me clearly state that a registered trademark is infringed by any unauthorized use in the course of trade, whether as a trademark or otherwise, of a mark that is identical to the registered trademark or so nearly resembling it as to be likely to deceive or cause confusion, where that mark is used in relation to the same or similar goods or services as those in respect of which the trademark is registered[11]. In short, the court determines the likelihood of consumers being confused by two different companies with similar marks. The main role of a trademark is to distinguish product A from trademark B. If the consumer is confused, the distinguishing role of the trademarks is not functioning. Both the trademark owner and the consumer are affected. One loses a sale and the other fails to buy the product they had intended to buy. In such instances the court now has to intervene and decide who is entitled to the trademark. The legal test requires the court to:

1. compare the trademark in question and the alleged infringing mark through the eyes of the ordinary consumer of the goods which the mark is applied both side by side and apart; and
2. determine whether, as a matter of global, first impression and having regard to the dominant elements of the respective marks, a substantial number of persons will probably be confused as to the origin of the alleged infringer’s goods or the existence or non-existence of a connection in trade between the trademark proprietor and the goods of the alleged infringer.

In this matter, the court needed to check if the test had been correctly applied. It is not the court’s duty to do go on a forensic expedition of the similarities and differences of the mark but to assess the general impression on an average customer shopping for jam.Ordinary customers will remember the striking features of a product and rarely do they involve themselves in some meticulous scrutiny when buying something as simple as jam.To borrow the words of Corbett JA[12], in the locus classicus[13] on the subject you look at whether a substantial number of persons of average intelligence, having proper eyesight and buying with ordinary caution will probably be deceived or confused into believing that ROYAL SUN JAM was related to or is SUN JAM.^[14]  

PASSING OFF

A company that has been trading and marketing its brand for over 50 years obtains goodwill and its product becomes well known. Usually, when a new and competing product adopts a similar name/design or packaging, an inference is drawn that it is probably trying to copy the other product in the market and mislead/deceive the market that the goods belong to the same proprietor. In trademark law, nobody has the right to represent his goods as the goods of somebody else, it is an offence to try and pass off someone’s goods as your own. It is always advisable to stay away from other people’s brand identities. There are still so many unexplored names, under the “sun”. Cairns succeeded in stopping Netrade from making these misleading impressions on the market.

CONCLUSION

The prohibition of the use of the Royal Sun jam trademark and its subsequent removal from the shelf is a battle that took five whole years. Very sticky situation! In the ordinary course of business so many things can be taken for granted or simply overlooked. You simply cannot copy someone else’s mark for your sun! This matter is a huge lesson to brand holders, choose your brand names wisely. It is prudent to always check if there is someone in the market who is using that trademark, lest you infringe on already existing rights. Apparently, the concept of rank and file is not only found in the military, in trademarks too, seniority is respected. Trademarks that were registered first and that have been in the market longer than others get priority and are treated with utmost respect. Whether it’s jam or whatever product or service, it is important to ensure that you respect other people’s trademark rights. You may not necessarily be infringing, but you could be passing off. Make sure you are doing neither of the two!

Authored by Brenda Matanga |BMATANGA IP ATTORNEYS

Copyright © October 22, 2021

ALL RIGHTS RESERVED

 

NB* BMATANGA IP ATTORNEYS REPRESENTED CAIRNS FOODS LIMITED IN THIS MATTER

At BMatanga IP, we believe in innovation and are fueled by Africa’s flourishing markets. Across this tapestry of accelerated growth, the need to protect ideas, designs and identities has never mattered more. From game changing local inovations to regional and global IP, we have you covered.

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[1] Judge Mabel Jansen in Dean & Dyer Introduction to IP- Foreword

[2] Judgement handed down on the 5^th of October 2021 No. SC 106/21

[3] Number Civil Appeal No.SC 242/20- Ref Case No. HC 7270/17

[4] Hereinafter referred to as Cairns

[5] Hereinafter referred to as Netrade

[6] Section 21 (b) of the Trademarks Act (Chapter 26: 04)

[7] Other available remedies include damages, attachment, the rendering of account, the delivery of improperly marked goods or of articles used or intended to be used for marking goods

[8] Subject to trademark renewal every 10 years

[9] Otherwise known as jam

[10] Page 13 of the judgment

[11] Section 8 of the Trademarks Act (Chapter 26:04) as amended

[12] Leading case

[13] Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984(3) SA 623 at 640G-641B

[14] My own emphasis