Not much IP comes out of Grahamstown (not much of anything does!). So it was with some trepidation that I read a recent trade mark judgment of the Eastern Cape High Court. But apart from the odd confusion between infringement and passing off (it could happen to anyone!), and the fact that it's peppered with unwarranted attacks on the Soutie language – the one blue was 'more darker' the other, the two get-ups were 'startling similar' - it's actually not that bad. The facts: a company called Royal Salt has a salt brand called SEEPO. The product's been around since the 1960s, and for most of that time it's been sold in a predominantly orange get-up. The product's particularly big in the Western Cape, where it has a 60-70% market share, and the trade mark registration goes all the way back to 1975.
When this salt of the earth company discovered that some coarse salt seller called Swartkops something or another was selling a competitive product under the name SEESO in a predominantly orange get-up, it... well saw red! Royal Salt sued for trade mark infringement and succeeded – no surprise there, SEEPO and SEESO are tres close, and the argument that SEESO was a contraction of 'see sout', and therefore somehow descriptive, was taken with a hefty pinch of salt. Royal Salt also successfully sued for passing off, with the court finding that the colour did play a major distinguishing role – the court was impressed by the revelation that Royal Salt had, many years ago, tried to move from orange to red, but had quickly reverted to orange when sales plummeted. There was a further aspect – Swartkops had two trade mark registrations, one for the name MARINA SEESO, and another for the name MARINA in an oval logo, and it claimed that it was simply using its trade mark registration for MARINA SEESO. But it wasn't - what Swartkops did was have the name SEESO in very large print, underneath the MARINA in an oval logo. Each of these had an ® symbol alongside it. Which simply reinforced the fact that it was using two separate trade marks, the registered MARINA in an oval logo and the unregistered SEESO, but not the registered trade mark MARINA SEESO. To rub salt in the wounds, the court went on to order that the registration for MARINA SEESO should be cancelled because it had always conflicted with the registration for SEEPO. There are lessons here – colour can be an important distinguishing feature, use your trade marks in the form they're registered, and don't be a smart arse.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.