The matter started when GFC noticed that a restaurant had opened in Melville, Johannesburg and branded itself SOULSA. As the letters “SA” in the South African context generally signify the abbreviated form of the country name “South Africa” this use was identified by journalists as “the soul of SA” and, obviously, tolerating the use would undermine GFC’s rights in its SOUL trade marks. GFC accordingly called upon the restaurant to change its name, which it refused to do, asserting that no-one may own rights in a dictionary word and embarking on a media campaign to demonize GFC for enforcing its registered trade mark. GFC therefore applied to court for an order interdicting (enjoining) SOULSA CC (“respondent”) from infringing its trade mark SOUL, in class 42 (now class 43), by using the mark SOULSA in relation to restaurant services.  GFC relied upon section 34(1)(a) of the Trade Marks Act, 1993, which deals with use of a deceptively or confusingly similar mark to a registered trade mark, as a trade mark and in the course of trade, for goods or services for which the registered trade mark is registered.

GFC uses the trade mark SOUL on its menus, serviettes and promotional material, and as the main theme of its advertising, but does not actually operate a restaurant called SOUL. The fact is that SOUL is a subsidiary mark to CHICKEN LICKEN in much the same way as “THE COLONEL” is a subsidiary mark to KFC or WOPPER is to BURGER KING.

The respondent sought to base its argument on two basic tenets – first that there had been a period of trading when both marks were used in commerce and there was no evidence presented of any actual confusion in the trade, because the SOULSA restaurant was aimed at a different market to the CHICKEN LICKEN franchise and, second, that “soul food” was descriptive of a particular cuisine in US parlance and, therefore, SOUL was non-distinctive. Without commenting on the merit or otherwise of these arguments in the context of the case, the fact is that they are arguments which, if established, would be pertinent to a common law “passing off “ case, but not to a case of statutory infringement. This is because the starting point is different. In a “passing off” case, there is no inherent right in the “common law mark” at all, it is a right in the overall goodwill of the business of which the mark is only one of the identifiers. The owner of the goodwill is entitled to relief only if there is an unlawful impingement upon the goodwill. This is measured by actual or very likely real world likelihood of damage to the goodwill for which there is no lawful excuse because, in the South African law – which is Roman-Dutch – the action is Aquilian* and unlawfulness, negligence or intent and a likelihood of patrimonial loss are all critical elements of the action.

In the case of infringement of a registered trade mark, the right resides in the trade mark itself in the context of the goods or services for which it is registered. It is not an absolute right in the mark itself, but in the mark within the parameters of the registration. What the respondent could not escape was that SOUL is a registered trade mark for, among other things, restaurant services. In an infringement case the comparison is between the registered trade mark and the allegedly infringing mark, each as such and ignoring material factors beyond the mark itself such as the actual use environment. The registered proprietor has the right to use the registered trade mark in a normal and fair manner on any goods or services for which it is registered, even if, at the date of infringement it has not used the mark on the particular goods or services upon which the infringer is using. In that event, the use by the proprietor is notional – what would be the effect on consumers if the proprietor were to use the registered mark on the same goods or services as the alleged infringer? This would be the case even if the proprietor had made no use at all of the registered mark by the date of the infringement.

Thus, the question for the court to determine was whether or not, assuming two restaurants of a similar nature, one branded SOUL and the other SOULSA, deception or confusion was likely? The leading case on the assessment of the likelihood of deception or confusion, invariably quoted in infringement cases in South Africa is Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) where at 641 B – E it is remarked that the comparison must have 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.  This notional customer must be conceived of as a person of average intelligence, having proper eyesight and buying with ordinary caution.  The comparison must be made with reference to the sense, sound and appearance of the marks.  The marks must be viewed as they would be encountered in the marketplace and against the background of relevant surrounding circumstances.  The marks must not only be considered side by side, but also separately.  It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant’s mark, with an imperfect recollection of the registered mark and due allowance must be made for this.  If each of the marks contains 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 a photographic recollection of the whole.  And finally consideration must be given to the manner in which the marks are likely to be employed as, for example, the use of name marks in conjunction with a generic description of the goods”.

This test was further refined in the case of service marks by the Supreme Court of Appeal (“SCA”) in the case of PPI Makelaars & Another v Profession Provident Society of SA 1998 (1) SA 595 (SCA) where, after a consideration of the principles set out in Plascon-Evans above,  Judge of Appeal Harms commented:

“This dictum deals with goods and not service marks, the subject of the present case.  The latter marks are inherently different:  services are ephemeral;  they are often concerned with the provisions of trade-marked products of third parties;  they are not often side by side enabling customers to make instant comparison;  quality control is difficult, if not absent.  In addition, service marks such as those relating to vague topics like financial services are more indefinite than goods marks relating to, say, clothing.  For these reasons, it seems to me, that it is fair to assume that, in a case like this, the likelihood of confusion may be more easily established than in a comparable goods mark case”.

The case was heard by one of the senior judges of the TPD, Southwood J, who has had considerable experience in Intellectual Property matters and who has served in an acting capacity on the bench of the SCA. His judgment was short and concluded that:

 “the word SOUL is a word in common use and, for the most part, has a readily understood and straightforward meaning. The respondent’s name incorporates the whole word SOUL with the additional letters SA.  Notwithstanding the fact that the applicant’s trade mark and the respondent’s restaurant name are not identical, the fact is that both words have a similar sense and appearance.  The dominant feature is the applicant’s trade mark.  To sum up, if allowance is made for imperfect recollection, then the  respondent’s name SOULSA is deceptively similar to the applicant’s trade mark SOUL and deception or confusion will occur.”

There had been some doubt about the approach of the South African courts to infringement where the allegedly infringing mark contains the whole of the registered trade mark after the finding in Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (A) which, at first glance, was fairly surprising. The Applicant had claimed that its registered trade marks, which consisted of the word POWER both as a word mark in plain block capitals and as a combination with a logo, were infringed by the Respondent’s use of POWERHOUSE.  The appeal court, having examined the facts, concluded that confusion was unlikely given that the word “power” was in common use in relation to clothing, and that the addition of “house” was sufficient to differentiate the two in the consumer’s mind. This disturbed a long held view here that, where a later mark contained an earlier registered mark – which was thus presumably “distinctive” – in its entirety, infringement could be expected to follow. Instead, it now seems that each case will turn on its own facts. The decision in SOULSA is in line with recent decisions of the European Court of First Instance which have recently found marks such as FOCUS RADIO and FOCUS MILENNIUM confusingly similar and held that the word FUN is distinctive of cars.

The decision underscores the value of a registered trade mark and the importance of conducting searches before adopting new marks so as to avoid conflict with marks which might be registered but not yet in use. As a means of providing reasonable certainty to proprietors and potential infringers alike, the registered trade mark has an important role to play even if absolute certainty remains elusive.

Ron Wheeldon