Member Article

A judgment “peppad” with advice

A recent South African court decision neatly summarises some of the major issues that need to be considered when comparing trade marks in South Africa.

In the case of Dinnermates (Tvl) CC v Piquante Brands International (Pty) Ltd and Another, the facts were that a company applied to register the trade mark PEPPAMATE and a device depicting a pepper with a stalk in classes 29, 30 and 31. The application was opposed on the basis of an earlier registration for the trade mark PEPPADEW and a very similar device for the same goods. The first court found that the trade marks were confusingly similar and it upheld the opposition. This decision was taken on appeal.

Judge Mothle delivered the judgment on behalf of a three-judge appeal panel. The judge started by saying that there is “no dispute between the parties that the word ‘peppa’ used in the context of both trade marks denotes ‘pepper’”.

The judge then considered a number of earlier decisions regarding confusing similarity and made the following points:

· the likelihood of confusion “must be appreciated globally or holistically. The average consumer perceives a mark as a whole and does not analyse its various details”;

· the court is required to “transport itself, notionally, [from] the court room to the marketplace and consider the marks, as they will be seen, if they are both in fair and commercial use, as a hypothetical consumer of the goods concerned”;

· there must be “consideration of the main or dominant features of the marks in question … as they would likely impact on the mind of the consumer”;

· there should be recognition of “the possibility that the consumer may encounter … one mark with an imperfect recollection of the other”;

· there must also be “consideration of the marks as a whole and the overall impression created by the marks”.

The judge also referred to the recent Supreme Court of Appeal (“SCA”) decision in the case of Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd. In that case, the SCA found that the trade marks “YUPPIECHEF” and “YUPPIE GADGETS” were not confusingly similar because of the non-distinctive nature of the word “yuppie”, and the differences between the words “chef” and “gadgets” (the Yuppiechef judgment is discussed in a separate article in this week’s ENSight). The judge quoted these words on confusing similarity from the Yuppiechef judgment:

“What is required is a value judgment on the question of the likelihood of deception or confusion based on a global appreciation of the two marks and the overall impression that they leave in the context of the underlying purpose of a trademark, which is that it is a badge of origin. The value judgement is largely a matter of first impression and there should not be undue peering at the two marks to find similarities and differences.”

The judge, however, went on to distinguish the present matter from the Yuppiechef case. The judge said that, although the words “dew” and “mate” are quite different, there are significant similarities between the trade marks. For starters, both trade marks contain the prefix “peppa”. Although this word is clearly derived from “pepper” and therefore of limited distinctiveness, the important thing is that “aurally the two trademarks are similar as both have a two syllable compound name ‘peppadew’ and ‘peppamate’.’’ Also, both trade marks have a device of a side view of a pepper with a stalk.

In fact, it is the device that seems to have swung this case in favour of the owner of Peppadew. The judge said this:

“The inclusion of the device, in the form of a side view of a round pepper with a stalk as part of both trademarks, is the most visible feature common to both marks. It stands out strikingly as the main or dominant feature of the marks and is consistent with the condiment of pepper traded by both parties. It is, in my view, likely to impact on the mind of the consumer. Therefore the consumer’s impression, struck by the common word ‘peppa’ and the presence of the device, looking at them as a whole in the marketplace is, in my view, likely to be deceived and confused.”

This decision is perhaps a reminder that a strong device can sometimes compensate for a weak word in a trade mark.

Tanith Robertson

IP associate

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cell: +27 72 608 6088