Pepsico Inc v Atlantic Industries (983/2016) [2017] ZASCA 109; 2017 BIP 122 (SCA) (15 September 2017)

Pepsico Inc v Atlantic Industries (983/2016) [2017] ZASCA 109; 2017 BIP 122 (SCA) (15 September 2017)

The court found that the respondent's marks TWIST, LEMON TWIST and DIET TWIST are not purely descriptive but are inherently capable of distinguishing Atlantic's soft drinks from those of other producers. The word 'twist' does not describe the goods in a manner that other traders would legitimately wish to use, and its use is arbitrary in this context. The evidence showed extensive use and recognition of the TWIST mark by Atlantic. Regarding the appellant's proposed marks, the court held that the incorporation of 'TWIST' as the sole distinctive feature of Atlantic's marks into Pepsico's proposed PEPSI TWIST marks, for identical goods and similar trade channels, creates a likelihood of...

Citation
[2017] ZASCA 109
Parties
Appellant: Pepsico Inc; Respondent: Atlantic Industries
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
15 September 2017
Case Number
983/2016
Procedural Posture
Civil Appeal / Appeal From a Full Court of the Gauteng Division of the High Court, Pretoria, Sitting on Appeal From a Single Judge
Outcome
The appeal is dismissed with costs, including the costs of two counsel.
Judges
Lewis, Cachalia, Petse, Lamont, Rogers
Legal Topics
Trade Mark Registration, Distinctiveness of Marks, Likelihood of Confusion, Expungement of Trade Marks, Sub Branding, Comparative Mark Analysis
Intellectual Property Commercial and Corporate Trade Mark Registration Distinctiveness of Marks Likelihood of Confusion Expungement of Trade Marks Sub Branding Comparative Mark Analysis

Case Brief

Summary, issues, holding and outcome

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Parties

Pepsico Inc

Appellant

Atlantic Industries

Respondent

Procedural Posture

Civil Appeal / Appeal From a Full Court of the Gauteng Division of the High Court, Pretoria, Sitting on Appeal From a Single Judge

Legal Issues

  1. 1 Whether the respondent's registered marks TWIST, LEMON TWIST and DIET TWIST are inherently capable of distinguishing its soft drinks and are not purely descriptive.
  2. 2 Whether the appellant's proposed marks PEPSI TWIST are likely to deceive or cause confusion due to similarity with the respondent's marks.
  3. 3 Whether the expungement application against the respondent's marks should succeed.

Ratio Decidendi

The court found that the respondent's marks TWIST, LEMON TWIST and DIET TWIST are not purely descriptive but are inherently capable of distinguishing Atlantic's soft drinks from those of other producers. The word 'twist' does not describe the goods in a manner that other traders would legitimately wish to use, and its use is arbitrary in this context. The evidence showed extensive use and recognition of the TWIST mark by Atlantic. Regarding the appellant's proposed marks, the court held that the incorporation of 'TWIST' as the sole distinctive feature of Atlantic's marks into Pepsico's proposed PEPSI TWIST marks, for identical goods and similar trade channels, creates a likelihood of...

Court Disposition

The appeal is dismissed with costs, including the costs of two counsel.

Orders

  • The appeal is dismissed with costs, including those attendant on the employment of two counsel.