Thabana Li Meli (Pty) Ltd v Thabani Wine (Pty) Ltd and Another (A552/2008) [2009] ZAWCHC 142 (28 August 2009)

Thabana Li Meli (Pty) Ltd v Thabani Wine (Pty) Ltd and Another (A552/2008) [2009] ZAWCHC 142 (28 August 2009)

The court found that the second applicant registered the trade mark for the benefit of the first applicant, with no evidence of mala fide intent or adverse conduct. The use of 'Thabani' alone did not substantially affect the identity of the registered mark, as the descriptive words 'Vineyards & Winery' were not distinctive. The respondent's use of 'Thabana Li Mele' was likely to cause confusion among consumers, given the prominence of 'Thabana' and the lack of distinction for the average consumer. The respondent failed to establish acquiescence or tacit consent, as there was no unequivocal acceptance or communication of such consent. The interdict granted by the court a quo was too broad...

Citation
[2009] ZAWCHC 142
Parties
Appellant: Thabana Li Meli (Pty) Ltd; Respondent: Thabani Wine (Pty) Ltd; Respondent: Jabulani Ntshangase
Court
Western Cape High Court, Cape Town
Jurisdiction
South Africa
Judgment Date
28 August 2009
Case Number
A552/2008
Procedural Posture
Civil Appeal / Appeal Against Judgment and Order of Court a Quo
Outcome
Appeal dismissed. The interdict is limited to goods and services in Class 33 under the Trade Marks Act. Costs awarded against the respondent.
Judges
Allie, Blignault, Erasmus
Legal Topics
Trade Mark Infringement, Expungement of Trade Mark, Proprietorship of Trade Mark, Likelihood of Confusion
Intellectual Property Commercial and Corporate Trade Mark Infringement Expungement of Trade Mark Proprietorship of Trade Mark Likelihood of Confusion

Case Brief

Summary, issues, holding and outcome

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Parties

Thabana Li Meli (Pty) Ltd

Appellant

Thabani Wine (Pty) Ltd

Respondent

Jabulani Ntshangase

Respondent

Procedural Posture

Civil Appeal / Appeal Against Judgment and Order of Court a Quo

Legal Issues

  1. 1 Whether the registration of the trade mark by the second applicant was bona fide and for the benefit of the first applicant.
  2. 2 Whether the use of 'Thabani' alone substantially affects the identity of the registered trade mark 'Thabani Vineyards & Winery'.
  3. 3 Whether the appellant's mark 'Thabana Li Mele' infringes the respondent's registered trade mark.

Ratio Decidendi

The court found that the second applicant registered the trade mark for the benefit of the first applicant, with no evidence of mala fide intent or adverse conduct. The use of 'Thabani' alone did not substantially affect the identity of the registered mark, as the descriptive words 'Vineyards & Winery' were not distinctive. The respondent's use of 'Thabana Li Mele' was likely to cause confusion among consumers, given the prominence of 'Thabana' and the lack of distinction for the average consumer. The respondent failed to establish acquiescence or tacit consent, as there was no unequivocal acceptance or communication of such consent. The interdict granted by the court a quo was too broad...

Court Disposition

Appeal dismissed. The interdict is limited to goods and services in Class 33 under the Trade Marks Act. Costs awarded against the respondent.

Orders

  • The respondent is interdicted and restrained within the Republic of South Africa from using in the course of trade the trade mark 'Thabani Vineyards & Winery' or the mark 'Thabana', 'Thabana Wines' or any mark similar to 'Thabani Vineyards & Winery' that so nearly resembles it as to be likely to deceive or cause...
  • The respondent is ordered to pay the costs in the appeal.