A while back, we discussed a South African trade mark judgment involving the term Soul. The South African Supreme Court of Appeal ("SCA") recently had to consider another "Soul" trade mark case.
Golden Fried Chicken v Vlachos
Golden Fried Chicken, which trades as Chicken Licken, has many outlets and it has a significant interest in the terms Soul and Soul Foods. It has trade mark registrations for these marks in the food classes (29 and 30), as well as in certain service classes (35 and 43).
Vlachos, on the other hand, has been operating two Greek food outlets under the term Soul Souvlaki since 2021. Golden Fried Chicken sued Vlachos for trade mark infringement. The issue here was this: is use of the trade mark Soul Souvlaki in respect of restaurants an infringement of the trade mark registrations for Soul and/or Soul Foods?
The SCA's judgment
Judge Gorven made a number of findings and observations:
The test to be applied
The judge referred to a number of important South African trade mark judgments,. He went on to say that this is the test to be applied:
"The onus can be discharged by showing that there is a likelihood that a substantial number of people who are interested in restaurants will be confused as to whether the respondent's restaurants are the restaurants of the appellant, or as to the existence or non-existence of a material connection between the respondent's restaurants and the appellant as operator of the restaurant."
The concept of notional use
In considering whether such a likelihood exists, the judge referred to the Century City case, where the court said this:
"This means that one has to assume reasonable notional use by a trade mark owner of the name Century City for purposes of providing services for reserving and maintaining accommodation apartments. The appellant's use of Century City Apartments would to my mind have given rise to the likelihood of confusion."
The marks are not identical
The judge said that the marks Soul and Soul Souvlaki are not identical. Referring again to the Century City case he said this:
"In Century City this court found that the marks Century City and Century City Apartments were not identical. This applies equally to the comparison between 'Soul' and 'Soul Souvlaki'. The marks are not identical."
The word Soul is distinctive?
The judge said that '''Soul; is inherently distinctive... this is despite the word 'soul' being in common, everyday use."
More case law
The judge referred to the famous Twist case (Pepsico), where there was a dispute involving the marks Twist and Lemon Twist on the one hand, and a new application for Pepsi Twist on the other. In that case, the SCA said that Twist is distinctive - it is "non-descriptive and thus has the same ability as the made-up word Pepsi to be memorable and distinguishing."
The judge also referred to the Power case (Bata) where there were a number of registrations incorporating the word "Power". When the owner sued an alleged infringer for using "Power House" the court said this use of the word of "power": "it is an ordinary word in everyday use, as distinct from an invented or made-up word, and it cannot follow that confusion would probably arise if it is used in combination with another word.The word 'house' is as significant as the word 'power' and the two words used together sufficiently distinguish the first respondent's clothing from that of the appellant."
The judge said that the word Souvlaki is as significant as Soul, in fact it is the more dominant. It clearly distinguishes the mark Soul Souvlaki from the mark Soul. There is nothing to suggest that the word "functions as descriptive without evidence of widespread knowledge of the word among South African restaurant customers. It is not used in the mark to describe the services of the respondents since a range of Greek dishes and not only souvlaki is on offer at their outlets. It certainly does not function as descriptive on the same level as do 'lemon' or 'diet'."
Referring to previous cases, the judge said that confusion between Soul and Soul Souvlaki was less likely than confusion between Pepsi Twist and Lemon Twist, or between Power House and Power.
There was no likelihood of deception or confusion, and therefore no infringement.
This is an unusual judgment and not everyone will agree with it. Some will argue that "Souvlaki" is a purely descriptive word and that the message that Soul Souvlaki sends out is that it is the Greek food offering of the Soul restaurant chain. It will certainly get people talking!
A number of important trade mark judgments are referred to in the judgment, including:
- Century City Century City Apartments Property Services CC v Century City Property Owners
- PepsiCo v Atlantic Industries
- Bata Ltd v Face Fashion CC and another
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