Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others (164/2015) [2016] ZASCA 77; 2017 (2) SA 588 (SCA); 2016 BIP 180 (SCA) (27 May 2016)

Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others (164/2015) [2016] ZASCA 77; 2017 (2) SA 588 (SCA); 2016 BIP 180 (SCA) (27 May 2016)

The court held that the appellant failed to establish that the respondents' marks 'Lucky Fish' and 'Lucky Fish and Chips' were so similar to the appellant's registered 'Lucky Star' trade marks as to be likely to deceive or cause confusion. The dominant elements of the marks ('Star' versus 'Fish') were sufficiently...

Source-derived case information.

Citation
[2016] ZASCA 77
Parties
Appellant: Lucky Star Limited; Respondent: Lucky Brands (Pty) Ltd; Respondent: Michael Russell Townsend NO; Respondent: Marie Hockly NO; Respondent: Merinda Meintjies NO; Respondent: Michael Russell Townsend; Respondent: Harbour House Holdings (Pty) Ltd; Respondent: Harbour House Restaurant (Pty) Ltd; Respondent: Lucky Fish and Chips – Muizenberg; Respondent: Lucky Fish Muizenberg CC; Respondent: Lucky Fish and Chips – Bree Street; Respondent: Lucky Fish Bree Street (Pty) Ltd; Respondent: Lucky Fish and Chips – Sea Point; Respondent: Lucky Fish Regent Street (Pty) Ltd; Respondent: Lucky Fish and Chips – Long Street; Respondent: Lucky Fish Long Street (Pty) Ltd; Respondent: Lucky Fish 5 (Pty) Ltd; Respondent: Commissioner of the Companies and Intellectual Property Commission
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
27 May 2016
Case Number
164/2015
Procedural Posture
Civil Appeal / Appeal From Western Cape Division of the High Court, Cape Town
Outcome
Appeal dismissed with costs.
Judges
Ponnan, Petse, Swain, Dambuza, Kathree-Setiloane
Legal Topics
Trade Mark Infringement, Likelihood of Confusion, Company Name Dispute, Distinctiveness of Marks, Dilution of Trade Mark, Companies Act Section 11
Intellectual Property Commercial and Corporate Trade Mark Infringement Likelihood of Confusion Company Name Dispute Distinctiveness of Marks Dilution of Trade Mark Companies Act Section 11

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Summary, issues, holding and outcome

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Parties

Lucky Star Limited

Appellant

Lucky Brands (Pty) Ltd

Respondent

Michael Russell Townsend NO

Respondent

Marie Hockly NO

Respondent

Merinda Meintjies NO

Respondent

Michael Russell Townsend

Respondent

Harbour House Holdings (Pty) Ltd

Respondent

Harbour House Restaurant (Pty) Ltd

Respondent

Lucky Fish and Chips – Muizenberg

Respondent

Lucky Fish Muizenberg CC

Respondent

Lucky Fish and Chips – Bree Street

Respondent

Lucky Fish Bree Street (Pty) Ltd

Respondent

Lucky Fish and Chips – Sea Point

Respondent

Lucky Fish Regent Street (Pty) Ltd

Respondent

Lucky Fish and Chips – Long Street

Respondent

Lucky Fish Long Street (Pty) Ltd

Respondent

Lucky Fish 5 (Pty) Ltd

Respondent

Commissioner of the Companies and Intellectual Property Commission

Respondent

Procedural Posture

Civil Appeal / Appeal From Western Cape Division of the High Court, Cape Town

Legal Issues

  1. 1 Whether the respondents' use of 'Lucky Fish' and related marks infringes the appellant's registered 'Lucky Star' trade marks under s 34(1)(a), (b), and (c) of the Trade Marks Act.
  2. 2 Whether the company names of the respondents are confusingly similar to the appellant's registered trade marks and company names under s 11(2) of the Companies Act.
  3. 3 Whether there is a likelihood of deception or confusion arising from the use of the marks and company names.

Ratio Decidendi

The court held that the appellant failed to establish that the respondents' marks 'Lucky Fish' and 'Lucky Fish and Chips' were so similar to the appellant's registered 'Lucky Star' trade marks as to be likely to deceive or cause confusion. The dominant elements of the marks ('Star' versus 'Fish') were sufficiently distinct, and the shared use of the word 'Lucky' was of minor significance given its generic nature. The court found no likelihood of deception or confusion among consumers, even considering notional use of the registered marks. The appellant's claims under s 34(1)(a), (b), and (c) of the Trade Marks Act were rejected. Similarly, the court found that the respondents' company...

Court Disposition

Appeal dismissed with costs.

Orders

  • The appeal is dismissed with costs.