Getting to the ‘soul’ of trademark infringement

May 1st, 2023
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Golden Fried Chicken (Pty) Ltd v Vlachos and Another (SCA) (unreported case no 497/2021, 3-11-2022) (Gorven JA (Petse AP, Makgoka and Mabindla-Boqwana JJA and Basson AJA concurring))

The mark/phrase ‘soul’ finds itself, yet again, in another trademark litigation. On the 3 November 2022, the Supreme Court of Appeal (SCA) passed down the most interesting judgment considering the trademark questions as it relates to the mark ‘soul’, which happens to be controversial and catches fire all the time when it is talked about under trademark subjects. Does this judgment set precedent for all upcoming and/or underway trademark applications with the trademark trading name ‘soul’ and does this mean that the trademark applications on this trademark name ‘soul’ is bound to fail subsequent to this judgment? This is definitely not the easiest judgment to follow but it is worth taking note especially if you are trading using the trademark ‘soul’ or plan to incorporate the mark ‘soul’ in your trading business name. This judgment will guide you accordingly.

The issue before the SCA

On 3 November 2022, the SCA was tasked to deliver a judgment on appeal on whether the ‘notional customers would associate restaurant services called “Soul Souvlaki” with those of the Appellant if the latter was trading in the same market and selling Greek cuisine under the name “Soul”’. Or put differently, ‘would the use of the mark “Soul Souvlaki” be likely to lead to deception or confusion in the minds of a substantial number of customers?’

Background

In this case, Golden Fried Chicken (Pty) Ltd (the appellant) trading as ‘Chicken Licken’ brought an interdict application against Dino Vlachos and Soul Souvlaki (Pty) Ltd (the respondents) for ‘infringing’ its trademark by trading as ‘Soul Souvlaki’ in the food and restaurant sectors. The appellant had registered the words ‘Soul’ and ‘Soul Food’ under classes 29, 30, 35 and 43, as evidenced by the number of years it has been trading. The second respondent (Soul Souvlaki) trading since 2012, conversely had applied to register its trading name under classes 35 and 43. This is where most of the disagreement and dispute arose, under class 43, on which the majority judgment solely ruled on.

The appellant argued and contended in the SCA that the use of the second respondent’s trading name ‘Soul Souvlaki’ is infringing and will continue to infringe the appellant’s mark (‘Soul’). This is where the court had to decide whether the mark ‘Soul’ as used by the respondents is likely to create confusion on the part of the consumers. The appellant further abandoned all other classes in which it had registered its trademark but sought relief under class 43 of the Act wherein the appellant did not intend to seek relief on the mark ‘Soul Food’ but limited its infringement on ‘Soul’.

Judgment

Since both the appellant’s and respondent’s trademarks are registered in relation to food services in the same class, the question before the court was whether the respondent’s registered trademark causes or is likely to cause deception in the eyes of the public. The court relying on several cases thus determined that the names ‘Soul’ and ‘Soul Souvlaki’ were not identical marks in that, while the mark ‘Soul’ existed in the respondent’s mark, ‘Souvlaki’ was not common to it. The judge further held that ‘the word “Souvlaki” is at least as significant as the word “Soul”. … When the marks are compared side by side, the word “Souvlaki” clearly distinguishes the respondents’ mark from Soul.’ The judge continued to hold that ‘in my estimation, the likelihood of deception or confusion is far more remote than in the case of “Pepsi Twist” as compared to “Lemon Twist” or “Diet Twist”.’ The judge went on to conclude that ‘it is unlikely that the notional restaurant customer would confuse it with a restaurant called “Soul”.’ As a result, a direct comparison of the marks reveals no possibility of deception or confusion. In light of the foregoing, the judge did not believe the respondent’s mark is sufficiently similar to the appellants to deceive or confuse. As a result, in the restaurant and food sectors, the mark ‘Soul Souvlaki’ sufficiently distinguishes the respondent’s services from those of the appellant. Having said that, ‘the appellant failed to establish infringement under the provisions of s 34(1)(a) of the Act.’

Conclusion

In this case, the SCA opined that the appellant did not establish a case of trademark infringement under s 34(1)(a) of the Trade Marks Act 194 of 1993 in that the appellant failed to prove beyond a reasonable doubt how the mark ‘Soul’ in its trading name would confuse or was likely to cause deception in the eyes of the public when used or compared against ‘Soul Souvlaki’. This case emphasises the critical importance of trademark names used by companies in their trading names, as well as the fact that the likelihood of deception in the eyes of the public is not always the case ‘when the marks are compared side by side’, as highlighted and held in both this case and Century City Apartments Property Services CC and Another v Century City Property Owners’ Association [2010] 2 All SA 409 (SCA).

Lusapho Yaso LLB (UWC) is a candidate legal practitioner in Johannesburg.

This article was first published in De Rebus in 2023 (May) DR 36.

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