Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd and Another (503/2013) [2014] ZASCA 173; 2014 BIP 294 (SCA) (19 November 2014)

Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd and Another (503/2013) [2014] ZASCA 173; 2014 BIP 294 (SCA) (19 November 2014)

The court found that the appellant's trademark 'Robertson Hills' is sufficiently similar to the respondent's marks containing 'Robertson' that its use in relation to wine would likely cause deception or confusion among consumers. The term 'Robertson' had acquired distinctiveness through the respondent's long and exclusive use, and the appellant was not using it as a geographical indicator but as a badge of origin. The court held that the registration of the appellant's mark was wrongly made and should be removed from the register. However, the court determined that the removal should be effective from the date of application for removal, not retrospectively to the date of registration, to...

Citation
[2014] ZASCA 173
Parties
Appellant: Roodezandt Ko-Operatiewe Wynmakery Ltd; Respondent: Robertson Winery (Pty) Ltd; Respondent: Registrar of Trademarks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
19 November 2014
Case Number
503/2013
Procedural Posture
Civil Appeal / Appeal From North Gauteng High Court, Pretoria
Outcome
Appeal dismissed with costs; order of the high court confirmed with amendment regarding the effective date of removal.
Judges
Brand, Maya, Shongwe, Theron, Meyer
Legal Topics
Trademark Rectification, Likelihood of Confusion, Distinctiveness of Geographical Names, Retrospective Effect of Removal, Badge of Origin, Wine of Origin Scheme
Intellectual Property Commercial and Corporate Trademark Rectification Likelihood of Confusion Distinctiveness of Geographical Names Retrospective Effect of Removal Badge of Origin Wine of Origin Scheme

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 6 Authorities cited 13 Party arguments 2 Amounts and remedies 4
Sign in to unlock

Parties

Roodezandt Ko-Operatiewe Wynmakery Ltd

Appellant

Robertson Winery (Pty) Ltd

Respondent

Registrar of Trademarks

Respondent

Procedural Posture

Civil Appeal / Appeal From North Gauteng High Court, Pretoria

Legal Issues

  1. 1 Whether the appellant's trademark 'Robertson Hills' is so similar to the respondent's marks containing 'Robertson' that it is likely to deceive or cause confusion as contemplated by sections 10(12) and 10(14) of the Trademarks Act.
  2. 2 Whether the use of a geographical name such as 'Robertson' can acquire distinctiveness in relation to wine and be protected as a trademark.
  3. 3 Whether the removal of the trademark registration should have retrospective effect from the date of registration or only from the date of application for removal.

Ratio Decidendi

The court found that the appellant's trademark 'Robertson Hills' is sufficiently similar to the respondent's marks containing 'Robertson' that its use in relation to wine would likely cause deception or confusion among consumers. The term 'Robertson' had acquired distinctiveness through the respondent's long and exclusive use, and the appellant was not using it as a geographical indicator but as a badge of origin. The court held that the registration of the appellant's mark was wrongly made and should be removed from the register. However, the court determined that the removal should be effective from the date of application for removal, not retrospectively to the date of registration, to...

Court Disposition

Appeal dismissed with costs; order of the high court confirmed with amendment regarding the effective date of removal.

Orders

  • The appeal is dismissed with costs.
  • Save for the amendment in paragraph (c), the order of the high court is confirmed.