MATHONSI
JA:
Alleging
trademark infringement, the appellant brought an application to the
High Court (the Court a
quo),
in terms of section 9A(2) of the Trade Marks Act [Chapter
26:04]
against the respondent. What was sought was an interdict against the
use of the offending mark and ancillary relief.
On
23 October 2019 the court a
quo
handed down judgment dismissing the application with costs.
This
appeal is against that whole judgment of the court a
quo.
FACTUAL
BACKGROUND
The
appellant and the respondent are companies registered in Zimbabwe and
involved in the business of producing and marketing food products. In
particular, they are both in an endeavour of packaging and retailing
fruit jam. On 10 October 1995, the appellant successfully registered
the word “SUN” with device of various fruits under it as its
trade mark for fruit jam.
The
certificate of registration issued by the Registrar of trade marks
reads in part;
“The
Trade Mark shown above has been registered in Part A of the Register
in the name of CAIRNS FOODS LIMITED, a Zimbabwean company, of Upton
Road, Ardbennie, Harare, in
Class 29 under No. 1479/95 as of the 10th
October 1995 in respect of jams.
Registration
of this trade mark shall give no right to the exclusive use of the
device of various fruits except in the precise relation and
association on the representation hereon.”
(the underlining is for emphasis)
From
then, the appellant has continued to use the mark on its package of
“sun jam.”
On
9 March 2011, the respondent also successfully registered its own
trade mark which consists merely of the words “ROYAL SUN.” It has
no fruits and sun devise accompanying it.
The
respondent's own certificate of registration reads in relevant part
thus;
“The
Trade Mark shown above has been registered in Part A of the Register
in the name of Netrade Marketing (Private) Limited, a company
incorporation according to the laws of Zimbabwe whose legal address
is No.23 Kenilworth Road, Newlands, Harare Zimbabwe in Class
29 under No. 288/2011 as of the 9th
March 2011 in respect of
meat, fish, poultry and game, meat extracts, preserved, dried and
cooked fruits and vegetables, jellies, jams,
compotes, eggs, milk and milk products, edible oils and fats.
Registration
of this mark shall give no right to the exclusive use of the word
'ROYAL' separately from the mark.”
(The underlining is for emphasis).
In
its business venture, the respondent also packages and markets fruit
jam.
For
purposes of putting that product on the market, the respondent came
up with a logo or appellation containing its trade mark “Royal Sun”
with a variety of fruits under it and the words “Mixed Fruit Jam”
at the bottom of it all.
I
mention in passing that the said logo is not registered as part of
the respondent's trade mark apart from the words “Royal Sun.”
It is however common cause that its mixed fruit jam is marketed under
that logo.
It
is the use of the logo together with the respondent's registered
trade mark “ROYAL SUN” which irked the appellant.
PROCEEDINGS
IN THE COURT A
QUO
The
appellant filed an application in the court a quo on 7 August 2017.
The application was made in terms of section 9A(2) of the Trade Marks
Act [Chapter
26:04]
for an interdict against what it regarded as an infringement of its
trade mark by the respondent. It also sought to interdict the
respondent from passing off its products as those of the appellant by
the use of a trade mark or words nearly resembling the appellant's
trade mark registration number 1479/95.
The
appellant's case was that it has been marketing its fruit jam under
the word “Sun” and the device mark for over fifty (50) years. As
a result, it has secured and acquired reputation and goodwill for its
sun jam. According to the appellant, the respondent started promoting
and selling its fruit jam under the name “ROYAL SUN” thereby
causing confusion.
As
proof of such confusion, the appellant cited a case in which one
wholesaler which distributes the appellant's sun jam product
mistakenly placed the respondent's royal sun jam in its catalogue,
promoting the appellant's sun jam. To the appellant, this was
enough proof that the packaging of the two products is strikingly
similar.
It
is on that basis that the appellant alleged a trade mark
infringement.
Regarding
the delict of passing off, the appellant's case was that its “SUN”
mark is distinctive, has been in use for over fifty (50) years and as
such it is well known to members of the public. Having gained a lot
of goodwill which the respondent is riding on, a case of passing off
was made. In the appellant's view, the use of “ROYAL SUN” is
calculated to deceive the transacting public, cause confusion and
injury to the goodwill.
In
opposing the application, the respondent's case was that having
registered its trade mark in Class 29 under number 288/2011 in
respect of jams and other goods, such registration was of full force
and effect. It entitled the respondent to use the registered trade
mark and as such, it could not be interdicted from doing that which
is permitted by law.
Further,
the respondent insisted that it has been marketing a broad range of
products under its “ROYAL SUN” get up. Its goods are well
recognised throughout the country. Jam was only added into the mix
later as there was no desire to set up a new mark for only jam.
In
any event, so the respondent argued, its mark is distinct from and
cannot possibly be confused with that of the appellant as the visual
get up of its mark is very distinct from and cannot possibly be
confused with that of the appellant. Consumers cannot be deceived or
confused.
The
respondent insisted that there was no likelihood of confusion created
in the mind of customers because, unlike the appellant, it uses its
logo on a wide range of products. The customers are very familiar
with its products and know very well they do not originate from the
appellant.
FINDINGS
OF THE COURT A
QUO
The
court a
quo
undertook a comparison of the two marks. It found that the
respondent's mark is the words “ROYAL SUN” which extends to
jams while that of the appellant is “a representation or a design.”
For that reason, the court
a quo
reasoned;
“… it
is apparent that the parties respective trademarks are far from
identical neither does the respondent's mark so nearly resemble
applicant's registered trademark as to be likely to deceive.
Clearly the applicant's mark is a design while the respondents mark
are the words 'ROYAL SUN.'”
It
was the court a
quo's
finding that the appellant had incorrectly pleaded “its causa”
because there is no trade mark in respect of the word “Sun”
independently of the representation. In the court a
quo's
view, the appellant's trade mark was not the word “Sun”. What
was registered as a trade mark was the representation or device and
not the word “Sun”.
The
court a
quo
concluded that the appellant had failed to establish any infringement
of its trade mark.
Regarding
passing off, the court a
quo
agreed with the respondent that the evidence of the wholesaler who
mistook the respondent's royal sun jam for the appellant's sun
jam could not be introduced in answering affidavit.
It
accordingly found that the appellant had failed to demonstrate any
actionable passing off. That way the application was dismissed with
costs.
PROCEEDINGS
ON APPEAL
The
appellant was riled by the judgment of the court a
quo
and launched the present appeal on five (5) grounds namely:
1.
The court
a quo
erred and grossly misdirected itself in its finding that the
appellant had only registered a representation or device and not the
word SUN when in fact the appellant's mark consists of both the
word SUN and a device/representation of fruits.
2.
The court a
quo
erred at law in failing to consider that the dominant/distinctive
feature of the appellant's mark is the word SUN and the respondent
did not need to reproduce the appellant's trade mark as a whole for
there to be a trade mark infringement, the use of the word SUN in
itself amounted to trade mark infringement.
3.
The court a
quo
erred and grossly misdirected itself in its interpretation of the
disclaimer on the appellant's mark when the appellant's claim
pertained to the unauthorised use of the dominant part of its mark
being the word SUN and not the representation of the fruits which was
disclaimed.
4.
The court a
quo
erred and grossly misdirected itself in its finding that the
appellant had failed to prove that its mark had acquired goodwill and
reputation when in fact the particulars of the reputation and
goodwill were canvased in the appellant's founding affidavit and
were not disputed by the respondent in its opposition.
5.
The court a
quo
grossly misdirected itself in comparing the two logos of the
appellant and the respondent when the appellant's claim was not
about the respondent's logo but the use of the words Royal Sun.
These
grounds of appeal zero in on one main issue for determination in this
appeal. It is whether the court a
quo
erred and misdirected itself in making a finding that the respondent
did not infringe the appellant's trade mark.
Mr
Zhuwarara
for the appellant, submitted that the court a
quo
misdirected itself by not applying the test used to determine the
existence or otherwise of a trademark infringement as set out in the
case authorities made available to it. Instead, so it was argued, the
court a
quo
embarked on an unnecessary forensic examination of how the two
trademarks looked like. In this process the court a
quo
identified six (6) differences in the two thereby arriving at the
erroneous conclusion that there was no infringement.
It
was further submitted on behalf of the appellant that the court a
quo
was under the mistaken view that the word “Sun” was not a
registered trademark and concerned itself with the design
accompanying that word. In counsel's view, the true nature of a
trade mark goes beyond the design but encompasses the word “Sun”
as well.
Mr
Zhuwarara
went on to submit that, regarding passing off, all its requirements
were established in this case. This was more so regard being had that
the same product marketed by the appellant under its registered trade
mark, that is fruit jam, was being sold by the respondent under a
confusing and deceptive banner. The appellant had shown that goodwill
of its product had been acquired over a lengthy period. There was
also evidence of confusion created by the respondent's use of a
strikingly similar name and logo for its own jam.
Per
contra, Mr Girach
for the respondent submitted in the main that the respondent was not
guilty of unauthorised use of a registered trade mark. Quite to the
contrary, the respondent registered its own trade mark and used it
lawfully. Once the “Royal Sun” trade mark was registered the
respondent was lawfully entitled to its use in its business
endeavour.
It
was therefore incompetent, so it was argued, for the appellant to
seek to interdict the use of a registered trade mark because a court
of law cannot interdict what is lawful.
Mr
Girach
suggested that the appellant should have sought the remedy of the
expungement of the offending trade mark from the register of trade
marks. For that reason, the appeal ought to fail.
In
addition, it was argued on behalf of the respondent that the word
“Sun” being generic in nature, cannot be subject of exclusive use
unless it is used in a way that causes confusion. According to Mr
Girach,
the appellant pleaded confusion on the part of customers when the Act
talks of deception before an infringement could be said to exist.
In
any event, there was no evidence of confusion.
It
was submitted for the respondent that the two marks are not similar
and as such the notional customer cannot make a mistake between them.
In counsel's view, the court a quo's decision should be upheld.
THE
LAW
Perhaps
the starting point in examining the law governing trademarks is the
effect of registration itself.
A
trademark is defined in the interpretation provision, namely section
2 of the Trade Marks Act [Chapter
26:04]
(the Act), in the following words:
“trade
mark means a
mark
which is used or proposed to be used in relation to goods or services
for the purpose of:
(a)
indicating a connection in the course of trade between the goods or
services and some person having the right either as proprietor or as
a registered user to use the mark whether with or without any
indication of the identity of that person; and
(b)
distinguishing
the goods or services in relation to which the mark is used or
proposed to be used from the same kind of goods or services connected
in the course of trade with any other persons,
but does not include a certification mark.” (The underlining is for
emphasis)
In
terms of section 5(4) of the Act, the register of trade marks is
prima
facie,
evidence of any matter required or authorised by or under the Act to
be entered therein.
In
resolving the dispute between the parties, therefore, the contents of
and what appears in the register is critical.
The
provision governing infringements of trademarks is section 8(1) of
the Act which reads;
“(1)
Subject to this section and sections ten and eleven, a registered
trade mark shall be infringed by any unauthorised use in the course
of trade, whether
as a trade mark or otherwise of a mark that is identical to the
registered trade mark or so nearly resembling it as is to be likely
to deceive or cause confusion,
where that mark is used in relation to the same or similar goods or
services as those in respect of which the trade mark is registered.”
(underlying is for emphasis).
Subsection
(3) of section 8 makes it clear that the right to the use of a trade
mark given by registration in Part A or Part B of the Register shall
be subject to any conditions or limitations entered on the Register.
The
application before the court a quo was made in terms of section 9A of
the Act. It provides for entitlement to and the nature of civil
remedies for infringement in the following:
“(1)
Subject to this Act, an infringement of a registered trade mark
shall be actionable at the suit of the proprietor and any registered
user of the mark.
(2)
Subject to this Act, in any proceedings for an infringement of a
registered trade mark there shall be available to the plaintiff all
such remedies by way of damages, interdict, attachment, the rendering
of account, the delivery of improperly marked goods or of articles
used or intended to be used for marking goods or otherwise as are
available in respect of the infringement of any other proprietary
right.”
The
provisions relating to trade mark infringement have been the subject
of a number of judicial pronouncements in both this jurisdiction and
South Africa. Generally, authorities are agreed that in infringement
proceedings what the court is required to do is to consider the
notional use to which the party seeking to enforce registration puts
its trade mark and protect the monopoly created by the terms of
registration. See Bata
Ltd v Face Fashions CC & Anor
2001 (1) SA 844 (SCA).
The
test for infringement was eminently stated in Plascon
Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
1984 (3) SA 623 (A) at 640G-641E, relied upon by counsel for the
appellant in advancing the argument that there exists the likelihood
of deception or confusion. The court stated:
“… a
comparison between the mark used by the defendant and the registered
mark and, having regard to the similarities and differences in the
two marks, an assessment of the impact which the defendant's mark
would make upon the average type of customer who would be likely to
purchase the kind of goods to which the marks are applied.
The
notional customer must be conceived of as a person of average
intelligence, having proper eyesight and buying with ordinary
caution. The marks must be viewed as they would be encountered in the
market place and against the background of relevant surrounding
circumstances.
The marks must not only be considered side by side, but also
separately… If
each of the marks contain a main or dominant feature or idea the
likely impact made by this on the mind of the customer must be taken
into account.
As
it has been put, marks are remembered rather by general impressions
or by some significant or striking feature than by photographic
recollection of the whole.” (Underlining added for emphasis).
It
has been accepted that one should not peer too closely at the mark
and the alleged infringement to find similarities or differences but
merely at the dominant impression given by the appearance of the
mark. See Mobil
Oil Zimbabwe (Pvt) Ltd v Travel Forum
1990
(1) ZLR 67; Puma
AG Rudolf Dassier Sport v Global Warming (Pty) Ltd
2010 (2) SA 600 (SCA).
As
for passing off, this court, quoting with approval a number of South
African authorities, succinctly set out the basic principles which
apply to it, in the case of Woolworth
& Co (Zimbabwe) (Pvt) Ltd v The W Store & Anor
1998 (2) ZLR 402 (S) at 404C-G where GUBBAY CJ stated:
“These
principles are lucidly identified, with reference to leading
authorities in Caterham
Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd
1998 (3) SA 938 (SCA) where at 947E-948B, HARMS JA said:
'The
essence of an action for passing off is to protect a business against
a misrepresentation of a particular kind, namely that the business,
goods or services of the representor is that of the plaintiff or is
associated therewith…. in other words, it protects against
deception as to a trade source or to a business connection….
Misrepresentation
of this kind can be committed only in relation to a business that has
goodwill or a drawing power…
Goodwill
is the totality of attributes that lure or entice clients or
potential clients to support a particular business… The components
of goodwill are many and diverse…. Well recognised are the locality
and the personality of the driving force behind the business….
These
components are not necessarily all present in the goodwill of any
particular business. The only component of goodwill of a business
that can be damaged by means of a passing off is its reputation and
it is for this reason that the first requirement for a successful
passing off action is proof of the relevant reputation.”
It
is apparent that passing off seeks to protect a product from the
deceptive tendencies of a competitor who represents its product as
that of the other. As a result of such deception or misrepresentation
there should be injury or damage to reputation. Therefore, proof of
reputation is a pre-requisite for passing off to be established. See
also Zimbabwe
Gelatine (Pvt) Ltd v Cairns Foods (Pvt) Ltd
2003
(1) ZLR 352 (5) at 55G.
APPLICATION
OF THE LAW TO THE FACTS
Earlier
on, I made reference to the specific trade mark registered for
protection against use by any other party by the appellant as appears
on the certificate of registration issued to it by the Registrar. By
virtue of the trademarks register the mark that is registered
consists of the word “SUN”, a depiction of a Sun and various
fruits underneath.
It
is clear from the conditions of registration endorsed on the
certificate that the appellant has no right to exclusive use of the
device of various fruits except when they are used in the precise
relation and association on the representation embodying the entire
mark.
My
understanding of that condition is that, while the various fruits may
be used by any other party, their combination with the word “SUN”
and/or the picture of a sun will constitute an infringement.
This
is so because, by virtue of the definition of trade mark in section 2
of the Act, the mark consisting of the word “SUN”, the picture of
the sun and the fruits device qualifies as the appellant's
registered trade mark. The acceptance of that mark in its form and
the issuance of a certificate of registration triggered the
protection accorded to a registered proprietor by section 8(1) of the
Act.
I
entertain no doubt whatsoever that the court a
quo
fell into grave error in finding that the word “SUN” was not
registered and that what was registered “was the representation or
device and not the word Sun.”
In
fact, such a factual finding could not possibly be made by a court
applying its mind to the facts. It is so grossly unreasonable in its
defiance of logic as to attract interference on appeal. It is
irrational.
Having
said that, it follows that any use of a mark which so nearly
resembles that registered by the appellant or one which is likely to
deceive or cause confusion constitutes an infringement which is
actionable in terms of section 9A.
As
already pointed out, the respondent registered a trade mark
consisting merely of the words “Royal Sun”. It did not register a
device or representation of various fruits or a combination of fruits
and the words “mixed fruit jam”. Therefore, the respondent's
protected mark is only “Royal Sun” and nothing more.
More
than five (5) years after registering its “Royal Sun” trademark,
precisely in December 2016, the respondent commenced using, not just
the trademark, but a combination of it and the various fruits as well
as the words “Mixed Fruit Jam” to sell jam.
The
effect of such invention, if that it may be called, is that the
respondent commenced selling “Royal sun mixed fruit jam” using a
logo which also contains various fruits.
The
question which then arises is whether that was an infringement of a
trade mark as to entitle the appellant to the relief provided for
section 9A.
I
totally agree with Mr
Zhuwarara
that the court a
quo
misdirected itself by undertaking a forensic audit of the two marks.
The
law does not require the court to closely peer at the mark and the
offending mark to find similarities and differences.
The
proper test to be applied is an assessment of the impact which the
respondent's mark would have on the average customer leisurely
doing shopping at a supermarket, for instance. Would such a customer
likely know the difference? This is so because marks are generally
remembered by their general impression and not the details the court
a
quo
looked for.
It
occurs to me that had the court a quo applied the proper test, it
would no doubt have come to the conclusion that the notional customer
encountering Royal Sun Mixed fruit jam with the visual get up of the
mark used on the respondent's logo would be deceived or confused
into believing it is that of the appellant.
Deception
or confusion is a matter of first impression not an outcome of a
study.
The
respondent cannot in all fairness suggest that the use of the words
“Royal Sun” in conjunction with the various fruits and the words
“Mixed fruit jam” was a mere coincidence.
Regarding
the reputation of the appellant's product, it was not disputed that
it has been on the market for a lengthy period, it was well known by
consumers and has acquired reputation. The word Sun has nothing to do
with fruit jam. It was already in use in that class of products when
the respondent chose to deploy it for the sale of jam as well.
While
no case was made for expunging the respondent's trade mark from the
register, the evidence before the court a
quo
established both an infringement and passing off in the use of its
trade mark with the fruits and the words mixed fruit jam on the logo.
To
that extent, the relief provided for section 9A(2) which inter
alia
is an interdict against the use of the logo and its delivery was
available and should have been afforded the appellant. I am aware
that the respondent's trade mark is used in respect of other
products. That is well and good, but an infringement was established
only in the category of jams.
DISPOSITION
The
law protects the proprietor of a registered trade mark against the
use of a mark similar to or closely resembling the proprietor's
trademark.
The
combination of the respondent's registered trade mark with other
objects was actionable at the instance of the appellant.
The
appellant was entitled to interdict the use of the logo because it
creates a deception or confusion between the appellant's jam
product and that of the respondent.
The
appeal has merit and should be upheld but the relief to be accorded
to the appellant should be limited firstly to jam products and
secondly to the offending logo and not the trade mark per
se.
Regarding
the issue of costs, the appellant has been substantially successful.
It is entitled to its costs in the usual way wherein costs follow the
result.
In
the result, it be and is hereby ordered as follows:
1.
The appeal succeeds with costs.
2.
The judgment of the court a
quo
is set aside and substituted with the following;
“(a)
The respondent be and is hereby interdicted and restrained from
infringing the applicant's Trade Mark Number 1479/95 in Class 29 by
the use of a logo with a combination of the words 'ROYAL SUN'
together with a device or representation of various fruits and the
words 'Mixed Fruit Jam' or any other words which nearly resemble
the appellant's Trade Mark Number 1479/95 for its jam product to
deceive or cause confusion in relation to the appellant's sun jam
products.
(b)
The respondent be and is hereby interdicted and restrained from using
any mark, trade name, label or get up likely to result in its jam
products being taken to be those of the applicant without clearly
distinguishing such jam products from those of the applicant.
(c)
The respondent be and is hereby interdicted from passing off its jam
products as those of the applicant registered under Trade Mark Number
1479/95.
(d)
The respondent shall deliver to the applicant or the Sheriff for
destruction all packaging, labels, posters, wrapping, advertising
matter, documents and other material in its possession bearing the
ROYAL SUN MIXED FRUIT JAM which resembles the applicant's
registered trade mark.
(e)
The respondent shall bear the costs of the application.”
CHIWESHE
JA: I
agree
CHITAKUNYE
JA:
I agree
B
Matanga IP Attorneys,
appellant's legal practitioners
Matizanadzo
& Warhurst,
respondent's legal practitioners
