IS THE SCA MISSING THE MARK?
A Critical Analysis of Recent SCA Judgments
White Star Kit Kat Evolym Knights Lucky Star Yuppiechef The Look Pepsi Twist
Corr
ectn
ess o
f th
e SC
A’s “
Valu
e Ju
dgm
ent”
A line of decisions which are of increasing concern to Trade Mark Litigation Practitioners……and Trade Mark Proprietors
Tests and Criteria to determine whether two trade marks are confusingly similar
1. Basic Test (use your senses): Visual (sight), aural (sound) and conceptual (meaning) similarity? 2. First impressions3. Considered as a whole but dominant/prominent features = primarily decisive
4. Descriptive words are of lesser significance than non-descriptive words (“capable of distinguishing”)5. Imperfect recollection and trading conditions at points of sale6. Transport oneself into the marketplace i.e. no “armchair speculation”
7. Consider marks together but also separately8. Consider the “notional use” of the marks in a fair and realistic manner
Pioneer Foods (Pty) Limited v Bothaville Milling (12 March 2014) (The “WHITE STAR” Case)
AND
Societe Des Produits Nestle SA and Another v International Foodstuffs Co and Others (27 November 2014)
(The “KIT KAT” Case)
i.e. the borderline cases…
EVOLYM vs. EVOLVE
Yair Shimansky and Another v Browns the Diamond Store Proprietary Limited (1 December 2014)
KNIGHT’S GOLD
KNIGHTSvs. BLACK KNIGHT
Distell Limited v KZN Wines and Spirits CC(15 March 2016)
Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others (27 May 2016)
LUCKY STAR vs. LUCKY FISH
LUCKY FISH AND CHIPS
Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd (15 September 2016)
YUPPIECHEF vs. YUPPIE GADGETS
Pepkor Retail (Proprietary) Limited v Truworths Limited (30 September 2016)
THE LOOK vs. THE LOOK FOR LESS
Pepsico Inc v Atlantic Industries (15 September 2017)
PEPSI TWISTTWIST
LEMON TWIST
DIET TWIST
Trade Mark Value Judgments
“They require empathetic insightful evaluations to be made…Simply put, trade marks are much more than the bold words, graphics or symbols reflected in two-dimensions on registration certificates...” “… in understanding and considering the nature of trade marks, regard should be had to commercial realities…the unconscious power of brands and their asset value.”
– Book of Job
Q&A