Distell Limited v KZN Wines and Spirits CC (20291/2014) [2016] ZASCA 18; 2016 BIP 134 (SCA) (15 March 2016)

Distell Limited v KZN Wines and Spirits CC (20291/2014) [2016] ZASCA 18; 2016 BIP 134 (SCA) (15 March 2016)

The court held that the marks BLACK KNIGHT and KNIGHTS/KNIGHT’S GOLD are sufficiently distinct in their sound, sense, and appearance, with 'black' and 'gold' being significant distinguishing features. The likelihood of confusion must be assessed globally, considering the overall impression on the average consumer. There was no evidence of actual confusion despite years of concurrent trading, and the circumstances of purchase did not support a finding of likely deception. Consequently, the use of BLACK KNIGHT did not infringe Distell's registered trademarks under s 34(1)(a) of the Trade Marks Act, nor did it amount to passing off. The appeal was dismissed.

Citation
[2016] ZASCA 18
Parties
Appellant: Distell Limited; Respondent: KZN Wines and Spirits CC
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
15 March 2016
Case Number
20291/2014
Procedural Posture
Civil Appeal / Appeal From the Kwa Zulu Natal Division of the High Court, Durban
Outcome
Appeal dismissed with costs of two counsel where so employed; respondent to pay costs occasioned by postponement of hearing on 10 September 2015.
Judges
Lewis, Cachalia, Wallis, Saldulker, Zondi
Legal Topics
Trade Mark Infringement, Likelihood of Confusion, Passing Off, Trade Marks Act, Comparison of Marks
Intellectual Property Commercial and Corporate Trade Mark Infringement Likelihood of Confusion Passing Off Trade Marks Act Comparison of Marks

Case Brief

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Parties

Distell Limited

Appellant

KZN Wines and Spirits CC

Respondent

Procedural Posture

Civil Appeal / Appeal From the Kwa Zulu Natal Division of the High Court, Durban

Legal Issues

  1. 1 Whether the use of the mark BLACK KNIGHT for whisky infringes Distell's registered trademarks KNIGHT’S GOLD and KNIGHTS under s 34(1)(a) of the Trade Marks Act.
  2. 2 Whether there is a likelihood of confusion or deception among consumers between the marks BLACK KNIGHT and KNIGHTS/KNIGHT’S GOLD.
  3. 3 Whether the respondent's conduct amounts to passing off its whisky as that of Distell.

Ratio Decidendi

The court held that the marks BLACK KNIGHT and KNIGHTS/KNIGHT’S GOLD are sufficiently distinct in their sound, sense, and appearance, with 'black' and 'gold' being significant distinguishing features. The likelihood of confusion must be assessed globally, considering the overall impression on the average consumer. There was no evidence of actual confusion despite years of concurrent trading, and the circumstances of purchase did not support a finding of likely deception. Consequently, the use of BLACK KNIGHT did not infringe Distell's registered trademarks under s 34(1)(a) of the Trade Marks Act, nor did it amount to passing off. The appeal was dismissed.

Court Disposition

Appeal dismissed with costs of two counsel where so employed; respondent to pay costs occasioned by postponement of hearing on 10 September 2015.

Orders

  • The appeal is dismissed with the costs of two counsel where so employed.
  • The respondent shall pay the costs occasioned by the postponement of the hearing of the appeal on 10 September 2015.