Grupo Bimbo S.A.B. v Takis Biltong (293/2022) [2023] ZASCA 175; 2023 BIP 9 (SCA) (14 December 2023)

Grupo Bimbo S.A.B. v Takis Biltong (293/2022) [2023] ZASCA 175; 2023 BIP 9 (SCA) (14 December 2023)

The court found that the dominant and distinctive element in both marks is the invented word 'TAKIS', which is not descriptive and confers inherent distinctiveness. The addition of secondary words such as 'FUEGO' or 'biltong' does not serve to distinguish the marks. Both marks are visually, aurally, and conceptually similar, and are used on snack foods sold through identical trade channels to the same consumers. The respondent's TAKIS LOGO mark enjoys a protectable reputation in South Africa for biltong and related products. The applicant conceded the similarity of goods and the respondent's reputation. The court held that the impugned mark was wrongly entered in the register as it is...

Citation
[2023] ZASCA 175
Parties
Appellant: Grupo Bimbo S.A.B. DE C.V.; Respondent: Takis Biltong (Pty) Ltd
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
14 December 2023
Case Number
293/2022
Procedural Posture
Special Leave to Appeal / Reconsideration of Dismissal of Application for Special Leave to Appeal
Outcome
Application for reconsideration of the order dismissing special leave to appeal is dismissed with costs.
Judges
Molemela, Nicholls, Meyer, Koen, Kathree-Setiloane
Legal Topics
Trade Mark Expungement, Likelihood of Confusion, Distinctiveness, Unfair Advantage, Reputation in Trade Mark
Intellectual Property Commercial and Corporate Trade Mark Expungement Likelihood of Confusion Distinctiveness Unfair Advantage Reputation in Trade Mark

Case Brief

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Parties

Grupo Bimbo S.A.B. DE C.V.

Appellant

Takis Biltong (Pty) Ltd

Respondent

Procedural Posture

Special Leave to Appeal / Reconsideration of Dismissal of Application for Special Leave to Appeal

Legal Issues

  1. 1 Whether the marks TAKIS FUEGO and TAKIS LOGO are so similar that there is a likelihood of deception or confusion arising in the marketplace.
  2. 2 Whether the goods covered by the respective marks are similar for the purposes of the Trade Marks Act.
  3. 3 Whether the respondent enjoys a protectable reputation in its registered TAKIS LOGO mark.

Ratio Decidendi

The court found that the dominant and distinctive element in both marks is the invented word 'TAKIS', which is not descriptive and confers inherent distinctiveness. The addition of secondary words such as 'FUEGO' or 'biltong' does not serve to distinguish the marks. Both marks are visually, aurally, and conceptually similar, and are used on snack foods sold through identical trade channels to the same consumers. The respondent's TAKIS LOGO mark enjoys a protectable reputation in South Africa for biltong and related products. The applicant conceded the similarity of goods and the respondent's reputation. The court held that the impugned mark was wrongly entered in the register as it is...

Court Disposition

Application for reconsideration of the order dismissing special leave to appeal is dismissed with costs.

Orders

  • The application for the reconsideration of the order of this Court granted on 8 March 2022 dismissing the applicant’s application for special leave to appeal is dismissed with costs.