The decision of the KZN High Court in the case of Distell v KZN
Wines & Spirits is interesting. The facts - Distell had a trade
mark registration covering whisky for the mark Knight's
Gold (with disclaimers of exclusive rights to the surname
'Knight' and the word 'Gold'), and another for a
label featuring the name Knight's, whereas KZN Wines sold a
whisky called Black Knight. Distell sued for trade mark
infringement and passing off.
The court decided that there was no trade mark infringement. The
judge accepted the argument that whisky drinkers are a discerning
lot who are not easily fooled. Said the judge: 'Counsel
for the applicant submitted that both products are sold in a bar or
crowded lounge, and if ordered verbally, the noise would be such
that when a customer articulates the applicant's whisky, the
barman or waiter as the case may be, would be deceived or confused
into believing that the customer is asking for the respondent's
whisky. I do not share these sentiments. In my view, counsel for
the respondent is correct in stating that even though whisky is a
popular drink, it is not a cheap drink. Consequently, a consumer is
likely to exercise circumspection and a greater degree of care in
making a purchase. It is not an overstatement that whisky drinkers
take pride in the product and assimilate in it such that they are
able to distinguish whether it is single malt or blended as well as
a source of origin...I am inclined to find that it is unlikely that
the notional purchaser of the applicant's whisky, even with an
imperfect recollection or perception, when confronted with BLACK
KNIGHT, would focus attention only on the word KNIGHT and ignore
the word BLACK. To my mind, the whole mark BLACK KNIGHT serves to
distinguish the respondent's whisky from that of the
Even if you don't agree with the conclusion - and I
don't because I think 'Knight' is a strong mark
for whisky and bar-room confusion is likely - the judgment does
remind us that the nature of the product and the likely consumer
must be considered when it comes to deciding the likelihood of
The court also held that there was no passing off. An unusual
feature of the case was that Black Knight had been on the market
since 2002, and the judge said that Distell had made the error of
proving that it had a reputation at the date when the proceedings
were instituted but not at the date when Black Knight first made
its appearance. The court said that there were significant
differences in the get-ups – a major difference between trade
mark infringement and passing off is that in passing off cases the
surrounding elements (get-up) can be considered. And the court said
that it was very relevant that Distell had been unable to prove a
single instance of actual confusion in 11 years.
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