Amarula liqueur is said to be the second most popular cream liqueur in the world, after Baileys Irish Cream, and understandably, there is a temptation to adopt a trade mark that would reap some of the benefits of the reputation established by the proprietor. This is exactly what occurred in a decision of the Western Cape High Court in Southern Liqueur Company Limited v SLD Liquor Manufacturers Limited. The Southern Liqueur Company (the applicant) had a trade mark registration for Amarula. SLD (the respondent) used the trade mark "Black Horse Marula Cream Liqueur", with the word "marula" very prominently.  The respondent attacked the Amarula registration, amongst others, on the basis of it being descriptive. In order to prevent the expungement of its mark, the applicant agreed to a so-called admission to be entered against its mark, in the format of "Registration of this mark shall not debar others from the bona fide descriptive use in the ordinary course of trade of the word 'Marula'".  Use of such a word could in given circumstances still amount to infringement.  In cases where a registrant is prepared to make concessions in order to still obtain registration, a so-called "disclaimer" can also be entered. That would imply that exclusive rights to a particular word are disclaimed. Use of that word, in general, would then not amount to infringement then and this is a significant difference.

The applicant relied on the infringement provisions of the Trade Marks Act, as well as the common law remedy of passing off.  he applicant argued that the respondent's use of Black Horse was sub-ordinate to its use of Marula.  The evidence, for instance, indicated that "Marula" appears on the neck label of the respondent's product in bold red capital letters measuring 8mm and "Black Horse" measuring 2mm in fine black font.  Its use was also said to be for an ulterior motive, so as to derive a commercial advantage from the extensive reputation of the Amarula trade mark. The applicant, in fact, alleged that the mark was well-known as envisaged in the Trade Marks Act. The respondent argued that the word 'marula' was of a descriptive nature. Hence, the purchasing public will see the word "Marula" on its product as a flavour and not as a trade mark.

It was common cause that the success of the applicant's "Amarula Cream Cocktail" has resulted in a number of cream-based alcoholic beverages being marketed in competition with the applicant's product.  The applicant also conceded that "Marula" is a fruit and that third parties may make bona fide descriptive use thereof. It was, therefore, not disputed that all competitors, including the respondent, are entitled and have used the word "Marula" to describe the contents or flavour of their product.  The court considered the manner of use of the word "Marula" in order to form a general impression of how consumers would be likely to perceive the product.  It noted, amongst others, the size of the lettering, and specifically stated that regard may be had to the trade mark "Black Horse". This was stated in the context of the determination of whether "Marula" was use of a bona fide description and if the use on the label was consistent with fair practice. Such use would be a defence in terms of the Trade Marks Act. 

The court held that the flavour variant of the respondent's Marula product is reflected in such a position on its labels that the principal trademark becomes irrelevant and invisible. It mentioned that there are several ways to draw the consumer's attention to the fact that the product's flavour is "Marula". However (own emphasis):

"Respondent chose to do so by using the word "Marula" in red bold capital letters and bold gold capital letters which bore a deceptive resemblance to applicant's trade name. The only distinctive feature on the Marula product that is given the word "Marula". Furthermore, by reducing the size of the Marula label, in comparison with its strawberry label, the respondent effectively gave more prominence to the word "Marula" on the Marula product."

The respondent's use of the mark "Marula" was therefore held not to constitute the use of a bona fide description of the flavour or content of its product.  In reaching its conclusion that there was statutory infringement, the court also had regard to the fact that both parties had an African theme. This is, however, an irrelevant consideration in infringement proceedings. The court also held that passing off was committed, a context within which such a consideration can feature.

The decision is not a model of clear analysis.  However, the outcome, at least on the passing off leg, is correct.  The overall issue in passing off proceedings is the likelihood of confusion.  Where a trade mark that is based on a distinctive word somehow does acquire distinctiveness, such an interest should be protected. Even the use of a descriptive word, depending on the specific facts of a matter, can amount to passing off. In the case of the infringement action, it would have been appropriate to enter a disclaimer, not an admission, a point that would not have made a difference in the end though.

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