I’m happy to report that the finest
trade mark judgement of 2014 originates in my back yard in the Western Cape! We took a while, but as with our wine, good things
come to those who wait.
In Lucky Star Ltd v
Lucky Brands (Pty) Ltd and others, Judge Owen Rogers, of the High
Court at the foot of a mountain, deftly dealt with a claim of primary trade
mark infringement, as well as dilution, of the applicant’s iconic LUCKY STAR word as well as device marks registered
in respect of, amongst others, fish products, fresh salads and retail services. The applicant’s mark is of course well-known
in South Africa in respect of canned seafood products, especially its
pilchards. 
The respondent entities conduct business under the LUCKY FISH brand as a seafood
restaurant and takeaway chain.
Incidentally, the chain is part of the same restaurant group as the unique
Harbour House in Kalk Bay, where just
yesterday this writer enjoyed (perhaps too much) chardonnay and yellow
tail whilst observing some seals playfully unaware of the trade mark carnage
afoot on their doorstep. The applicant
relied on the traditional likelihood of confusion / deception ground, as well
as dilution, in an application for an interdict as well as an order declaring
the respondents’ company names incorporating LUCKY FISH and LUCKY BRANDS in
violation of section 11(2) of the
Companies Act for being confusingly similar to the applicant’s
registered mark.
I particularly liked this
statement that tends to justify all those sophisticated principles us trade
mark lawyers like to rely on in cases where others may think it’s simply a matter
of common sense:
“It has been said
that the question of confusing or deceptive similarity is very much a matter of
‘first impression’…Since the judge may not be representative of all the classes
of persons who consume the relevant product or service, and since the judge
will be seeing the marks as set out in court papers rather than in the market
place, the judge will naturally need to test his or her first impression in
accordance with the principles set out in the cases.”
Ultimately Judge Rogers found
no likelihood of confusion or deception, having regard to the differences
between the marks on the one hand and the goods and services on the other. The following findings are noteworthy.
First, the Court considered the
debate regarding the applicability of the doctrine of notional use to a
defendant’s conduct in infringement matters.
Essentially, there has been some debate in our courts whether the way in
which a defendant might notionally use its allegedly infringing mark (as
opposed to the way in which it actually uses it) is relevant in an infringement
matter (see para 12.8.4 in Webster & Page). The Appellate Division in the Plascon-Evans
matter commented obiter that the doctrine should not apply. In this case the court however seemed to
decide the issue, expressly rejecting the doctrine’s application to the
defendant’s mark.
Secondly, the Court adopted
an approach similar to that of the Court of Justice of the European Union in
the Specsavers v Asda
saga. There the court considered the
fact that the claimant had made use of its registered mark in a particular way that
differed to the form in which it was registered, as relevant to the likelihood
of confusion assessment (as opposed to simply relying on the mark purely in the
form in which it was registered). In
this case, the court considered the fact that the applicant always uses the
LUCKY STAR mark in conjunction with other device elements as relevant, relying
on this to distinguish the applicant’s mark further from that of the respondents (see para 46). This approach does seem
to be at odds with the traditional approach of comparing the mark as used by the
defendant with the mark as registered by the claimant, and suggests an approach
more akin to passing-off. Perhaps,
however, where the particular form in which the claimant has actually used its
mark has become ingrained in the minds of the public, this should be taken into
account so as to align trade mark law with the reality on the ground. It is to be noted that the court in the recent
EVOLYM
matter adopted a similar approach (see para 22) – as pointed out to this writer
by local trade mark sage Faan Wolvaardt. Of course there’s a fine line between this
approach and diluting the value of registered rights by allowing extraneous matter
to be considered, a line which I’m glad I don’t have to decide on!
I know most of you will skip
right past the company name objection bit, but on the off chance that you’re
interested, here goes. The court indicated (in para 73) that when a company
name objection is considered (at least in circumstances analogous to this case),
the relevant public are not ordinary consumers, who do not generally see the
company name as it appears on invoices, letterheads and the like, but those in
the trade who do business with the company (landlords, bankers, suppliers etc)
who are more knowledgeable of that particular industry and thus less likely to
be confused. I have my doubts about this
as a general proposition for company name objections – yes, company names are
very often different to the parties’ actual trading names, but they are
likewise very often the same. In this
sense, company name objections are akin to trade mark opposition proceedings (where
the notional use doctrine does apply to the defendant trade mark applicant’s mark)
and regard should be had to how the defendant might use its company name if its
registration is permitted. I’d love to
hear your thoughts on this, all three of you!
