When is a descriptive mark not a descriptive mark?

The issue of when is a descriptive mark not a descriptive mark is currently before the Supreme Court of Appeal in the matter between Dinnermates (Tvl) CC and Piquante Brands International (Pty) Ltd & Peppadew International (Pty) Ltd. This matter is an appeal against the decision of the Full Court upholding an opposition in terms of section 10(14) of the Trade Marks Act 194 of 1993, to the registration of the Appellant's trade mark applications for the mark PEPPAMATES (device) in the face of the Respondent's PEPPADEW (device) trade mark.

Section 10(14) deals with marks which are identical or similar to an existing trade mark registration, filed in respect of the same or similar goods or services, which are likely to deceive or cause confusion in the marketplace.

Prior to the PEPPAMATES hearing in February 2018, the SCA handed down its ruling in the matter of Cochrane Steel Products (Pty) Ltd and M-Systems Group [2017] ZASCA 189 in December 2017, in which the Court had to deal with disclaimers and admissions in respect of the misspelling of descriptive words such as VIEW and VU.

The Appellant brought the above ruling to the Court's attention, in particular paragraph [21], which reads:

"[21] Returning to the facts of the present case, the 'VU' in the composite mark 'CLEARVU', is a deliberate misspelling of the ordinary word 'view' and is understandable in light of the nature of the product and what it intends to convey. To state, as Cochrane does, that it does not embody a misspelling of the ordinary English word 'view', but that it is a coined word which just happens to be the phonetic equivalent of the ordinary English word 'view' is to strain to avoid the implication that commonly, admissions are entered when there is a misspelling of a word and to seek a monopoly that extends beyond that which is acceptable. Moreover, as pointed out above in para 14, with reference to Webster and Page, the phonetic equivalent of a non-distinctive word is itself non-distinctive and it would seem to follow that if the word itself is one that ought to be disclaimed then its phonetic equivalent should also be disclaimed."

The above judgment supports the Appellant's contention that the word PEPPA, being in common use, is simply a variation of the word "pepper" and is not distinctive or invented in respect of foodstuffs in general.

The Respondents argued that the facts in the Cochrane case differed from the matter at hand, and were based on different sections of the Trade Marks Act, namely sections 9(1) and 10(2)(a) of the Act, i.e. where a mark cannot be registered when it is not capable of distinguishing and where it consists exclusively of an indication which may serve in trade to designate the kind, quality, intended purpose or other characteristics of the particular goods/services respectively.

A second aspect of the case that the Respondents argued is that their device also makes their trade mark distinctive, and that the Appellant had copied its device. The device complained of, however, is merely a descriptive rendering of a piquante pepper. This would be tantamount to, for example, a supplier of grapes not being able to use a device of a bunch of grapes alongside its name and trade mark on its packaging/cartons.

The SCA's awaited judgment in the PEPPAMATES v PEPPADEW matter is therefore of great interest as to whether a single trader can obtain a monopoly in respect of a descriptive word coupled with a descriptive device.

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.