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

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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