Southern Liquer Company Ltd v SLD Liquor Manufacturers Ltd (19693/08) [2011] ZAWCHC 268 (15 June 2011)

Southern Liquer Company Ltd v SLD Liquor Manufacturers Ltd (19693/08) [2011] ZAWCHC 268 (15 June 2011)

The court found that the applicant's 'Amarula' trade mark had acquired distinctiveness through extensive use and advertising, qualifying it for continued registration despite its descriptive element. The respondent's use of 'Marula' on its product labels was not bona fide descriptive use but was designed to take unfair advantage of the reputation and distinctive character of the 'Amarula' mark. The respondent's labelling practices diluted its own trade mark 'Black Horse' and gave undue prominence to 'Marula', creating a likelihood of confusion among consumers as to the origin of the goods. The respondent failed to unequivocally distinguish its product from that of the applicant, and its...

Citation
[2011] ZAWCHC 268
Parties
Applicant: Southern Liqueur Company Limited; Respondent: SLD Liquor Manufacturers Limited; Applicant: SLD Liquor Manufacturers (Pty) Ltd; Respondent: Southern Liqueur Company Limited; Respondent: Registrar of Trade Marks
Court
Western Cape High Court, Cape Town
Jurisdiction
South Africa
Judgment Date
15 June 2011
Case Number
19693/08
Procedural Posture
Civil Application / Judgment
Outcome
Application granted; respondent's counter-application dismissed with costs.
Judges
Goliath
Legal Topics
Trade Mark Infringement, Passing Off, Distinctiveness, Bona Fide Use, Removal of Trade Mark, Trade Mark Registration
Intellectual Property Commercial and Corporate Trade Mark Infringement Passing Off Distinctiveness Bona Fide Use Removal of Trade Mark Trade Mark Registration

Case Brief

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Parties

Southern Liqueur Company Limited

Applicant

SLD Liquor Manufacturers Limited

Respondent

SLD Liquor Manufacturers (Pty) Ltd

Applicant

Southern Liqueur Company Limited

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Civil Application / Judgment

Legal Issues

  1. 1 Whether the respondent's use of the mark 'Marula' constitutes unauthorized trade mark use or bona fide descriptive use.
  2. 2 Whether the applicant's trade mark 'Amarula' is distinctive and capable of distinguishing its goods.
  3. 3 Whether the respondent's conduct amounts to trade mark infringement under section 34(1) of the Trade Marks Act.

Ratio Decidendi

The court found that the applicant's 'Amarula' trade mark had acquired distinctiveness through extensive use and advertising, qualifying it for continued registration despite its descriptive element. The respondent's use of 'Marula' on its product labels was not bona fide descriptive use but was designed to take unfair advantage of the reputation and distinctive character of the 'Amarula' mark. The respondent's labelling practices diluted its own trade mark 'Black Horse' and gave undue prominence to 'Marula', creating a likelihood of confusion among consumers as to the origin of the goods. The respondent failed to unequivocally distinguish its product from that of the applicant, and its...

Court Disposition

Application granted; respondent's counter-application dismissed with costs.

Orders

  • The respondent is interdicted and restrained from infringing the applicant's registered trade mark 'AMARULA' in Class 33 by using, in the course of trade, in relation to alcoholic beverages, the mark 'MARULA', or any other mark so similar to the 'AMARULA' mark as to be likely to deceive or cause confusion.
  • The respondent is interdicted and restrained from infringing the applicant's registered trade mark 'AMARULA' in Class 33 (being a well-known mark) by using, in the course of trade, in relation to alcoholic beverages, the mark 'MARULA', where such use would be likely to take unfair advantage of, or be detrimental to,...