South Africa: Lucky Fish: Thanking Its Lucky Stars?

Last Updated: 14 July 2016
Article by Gaelyn Scott

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 "natural use".

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 mark..."

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 marks.

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.

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