Most Read Contributor in South Africa, September 2016
We've previously touched on the case of
Lucky Star Ltd v Lucky Brands (Pty) Ltd. This litigation
recently came to an end when the Supreme Court of Appeal
("SCA") upheld the first court's
finding (Lucky Star Ltd v Lucky Brands (Pty) Ltd).
In this case, a company that sells tinned fish and has
registrations for its trade mark Lucky Star in respect of
foodstuffs and retail services, sued a company that runs a number
of seafood restaurants and takeaway outlets called Lucky Fish for
trade mark infringement. In a long and complex judgment, the
Western Cape High Court held that there was no infringement.
This finding was taken on appeal, and the SCA handed down a
short, sharp judgment that runs to a mere 13 pages. A reading of
this judgment creates the impression that the SCA felt that South
African courts have, of late, been all over the place when it comes
to issues of trade mark infringement, and that it was time to
clarify these issues.
The court discussed the three different types of trade mark
infringement, all of which had been raised in this case. Judge
Swain went back to basics and considered section 34(1)(a)
of the Trade Marks Act, 1993, which deals with the most obvious or
blatant form of infringement – the use of goods covered by
the registration of a trade mark that is identical to the
registered trade mark, or one that so nearly resembles it as to be
likely to deceive or cause confusion.
The judge reminded us that, when it comes to trade mark
infringement, it's a matter of comparing what has been
registered to what the alleged infringer is actually using.
Extraneous matter is disregarded, which, in this case, meant that a
comparison of Lucky Star and Lucky Fish was all that was required,
and logos and other extraneous matter had to be ignored.
The judge also reminded us that a court is entitled to consider
the notional use that the trade mark owner might want to make of
its registered trade mark within the confines or legal limitations
of its registration. The judge referred to this notional use as
The judge went on to hold that there was no likelihood of
deception or confusion between the trade marks Lucky Star and Lucky
Fish. In the process, he made some unfortunate statements about the
word "fish", including: "In my view the common
element of the ... marks being the word 'lucky' is of minor
significance when the marks are looked at as a whole ... the word
'fish' as opposed to the word 'star' is distinctive
and cannot be ignored."
The judge also said: "When the marks are compared side by
side and the main or dominant features of the marks are considered,
namely the words 'star' and 'fish', there is no
likelihood of deception or confusion."
The judge added: "The appellant submits that the
distinctiveness of the word 'fish' is diminished because it
is used in the context of the sale of fish ... . I disagree, the
distinctiveness of this word is not diminished simply because it
also serves to describe the product sold ... the words
'star' and 'fish' are at least as equally
significant as the word 'lucky'".
And finally, the judge said this: "The overall impression
which is created is that the marks do not resemble each other
closely and the average customer would not be confused or deceived
into believing that respondent's restaurants bearing the Lucky
Fish mark are in any way associated with the appellant."
Having found that the trade marks Lucky Star and Lucky Fish were
not likely to be confused, the judge quickly dismissed the other
two forms of infringement. The first of these is an identical or
confusingly similar trade mark and similar goods (section
34(1)(b)). The second is what is loosely referred to as
"dilution" – the use of an identical or similar
trade mark in respect of any goods in circumstances where the
registered trade mark is well-known, and the unauthorised use will
take unfair advantage of, or is detrimental to, the distinctive
character or repute of the registered trade mark, even if there is
no confusion (section 34(1)(c)). The reason is that both
of these forms of infringement depend on the trade marks being
confusingly similar. For the same reason, the court dismissed a
claim that the company name Lucky Brands contravened section 11(2)
of the Companies Act, 2008, which provides that "the name of a
company must ... not be confusingly similar to a name, trade
The result may not be too controversial, but some of the remarks
about the distinctiveness of the word "fish" are
regrettable. It's likely that these remarks will be seized upon
gleefully by companies that wish to register or enforce weak trade
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