Atlantic Industries v Pepsico Inc. (A479/2014) [2016] ZAGPPHC 514; 2016 BIP 169 (GP) (26 May 2016)

Atlantic Industries v Pepsico Inc. (A479/2014) [2016] ZAGPPHC 514; 2016 BIP 169 (GP) (26 May 2016)

The court found that Atlantic's TWIST marks are inherently adapted to distinguish, and even if not, have acquired distinctiveness through extensive use and market recognition, as evidenced by survey results and substantial sales figures. Pepsico failed to discharge the onus of proving that Atlantic's marks are merely descriptive or incapable of distinguishing. The visual and aural similarity between Atlantic's TWIST marks and Pepsico's PEPSI TWIST marks is such that there is a likelihood of confusion or deception among the relevant class of consumers, which includes a broad spectrum of the public. The court a quo erred in granting Pepsico's trade mark applications and in finding no...

Citation
[2016] ZAGPPHC 514
Parties
Appellant: Atlantic Industries; Respondent: Pepsico Inc.
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
26 May 2016
Case Number
A479/2014
Procedural Posture
Civil Appeal / Appeal and Cross Appeal From High Court Decision on Trade Mark Registration and Removal
Outcome
Atlantic's appeal is upheld; Pepsico's trade mark applications are refused; Pepsico's cross-appeal for removal of Atlantic's marks is dismissed.
Judges
J W Louw, Prinsloo, Meyer
Legal Topics
Trade Mark Registration, Distinctiveness, Likelihood of Confusion, Rectification of Register, Trade Mark Infringement
Intellectual Property Commercial and Corporate Trade Mark Registration Distinctiveness Likelihood of Confusion Rectification of Register Trade Mark Infringement

Case Brief

Summary, issues, holding and outcome

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Parties

Atlantic Industries

Appellant

Pepsico Inc.

Respondent

Procedural Posture

Civil Appeal / Appeal and Cross Appeal From High Court Decision on Trade Mark Registration and Removal

Legal Issues

  1. 1 Whether Atlantic's TWIST trade marks are inherently or through use capable of distinguishing their goods from others.
  2. 2 Whether Pepsico's PEPSI TWIST marks are so similar to Atlantic's TWIST marks that their use would likely cause deception or confusion.
  3. 3 Whether Atlantic's TWIST marks should be removed from the register for being descriptive or incapable of distinguishing.

Ratio Decidendi

The court found that Atlantic's TWIST marks are inherently adapted to distinguish, and even if not, have acquired distinctiveness through extensive use and market recognition, as evidenced by survey results and substantial sales figures. Pepsico failed to discharge the onus of proving that Atlantic's marks are merely descriptive or incapable of distinguishing. The visual and aural similarity between Atlantic's TWIST marks and Pepsico's PEPSI TWIST marks is such that there is a likelihood of confusion or deception among the relevant class of consumers, which includes a broad spectrum of the public. The court a quo erred in granting Pepsico's trade mark applications and in finding no...

Court Disposition

Atlantic's appeal is upheld; Pepsico's trade mark applications are refused; Pepsico's cross-appeal for removal of Atlantic's marks is dismissed.

Orders

  • The appellant's appeal against the granting of the respondent's trade mark applications 2002/09809 PEPSI TWIST and 2002/09810 PEPSI TWIST label is upheld with costs.
  • Orders 1, 2 and 3 of the court a quo are set aside and replaced with the following orders: 1. The respondent's trade mark application 2002/09809 PEPSI TWIST is refused. 2. The respondent's trade mark application 2002/09810 PEPSI TWIST label is refused. 3. The respondent is ordered to pay the opponent's costs of the...