The South African Supreme Court of Appeal (SCA) handed down a number of trade mark judgments late last year. The first of these was in the case of Roodezandt Ko-operatiewe Wynmakery v Robertson Winery (Pty) Ltd and the Registrar of Trade Marks, and the judgment was handed down on 19 November 2014. As the names might suggest, this case involved the South African wine industry, an industry that produces its fair share of trade mark cases. 

This was an application for the removal or cancellation of a trade mark registration. The facts were as follows: Robertson Winery, a long established winery situated in the area of Robertson in the Western Cape, has used the trade mark Robertson Winery & Label since 1941; the company has registrations covering wine for various trade marks – Robertson Winery & Label, Robertson Vineyards and Robertsoner,  the earliest one dating back to 1997; Roodezandt had a 2008 registration for the trade mark Robertson Hills for wine; Robertson Winery claimed that the registration for Robertson Hills  should be cancelled on the basis of its earlier rights – it based its case on the sections of the Trade Marks Act that deal with a likelihood of confusion arising from an earlier registration and from the use of another trade mark, namely sections 10(12) and 10(14).

Judge Brand delivered the judgment. He considered a number of the earlier cases that deal with the issue of confusing similarity, and he made specific reference to the case of Laboratoire Lacharte v Armour Dial 1976 (2) SA 774 (T).  In this case the court made it clear that the issue is not so much whether a judge who has ample time to consider the similarities and differences between two trade marks will be confused, but whether consumers will be.

Judge Brand went on to summarise the principles that have been established in earlier cases: the person claiming that there is a likelihood of confusion does not need to show that all relevant consumers are likely to be confused, but simply that a substantial number might be;   the concept of confusion doesn’t necessarily mean that consumers actually believe that there is a connection between the two products, it  simply means that they are confused about the origin of the goods; the issue of likelihood of confusion must be considered through the eyes of the average consumer; the trade marks must be considered both side-by-side and separately;  the court must remember that consumers have imperfect recollection; the court must bear in mind that consumers will often only remember the dominant features of trade marks.

The judge concluded that there was a likelihood of confusion in this case. Dealing with the issue that Robertson is a geographical area which is significant in the context of wine (the registration for Robertson Vineyards in fact has a disclaimer of Robertson in the geographical sense), Judge Brand said this: ‘Although Robertson is not a constructed or invented word, but the name of a town, this does not necessarily mean that it could never acquire distinctiveness with reference to wine’. In support of this he referred to an example that had been given by Judge Harms in the earlier case of Century City Apartments Property Services CC v Century City Property Owners’ Association 2010 (3)  SA 1 (SCA) - that of Windhoek being both the name of a city in Namibia and a very well-known beer. The judge also pointed out that Roodezandt was not using the word Robertson on its Robertson Hills label with reference to the town, “but in order to distinguish its wines from others, i.e. as a trademark”.

A related issue was the argument that Robertson is the name of a defined production area for wine under the so-called Wine of Origin (WO) scheme. This same point came up in the recent decisions of Groupe LFE (SA) (Pty) Ltd v Swartland Winery (467/09) (2011) ZASCA 4 and Mettenheimer v Zonquasdrift Vineyards 2014 (2) SA 204 (SCA). In those cases the courts examined the relationship between trade marks and the WO scheme, and concluded that they are different and distinct things – a trade mark is a badge of origin for wine, the WO scheme is a badge of origin for the grapes from which the wine is made. The fact that Robertson is the name of a defined production area under the WO scheme was therefore not relevant.

So the registration for Robertson Hills had to be cancelled. This left a final issue – does a cancellation date back to the date on which the trade mark was registered (the registration date), or to the date on which the application for cancellation was lodged? It’s perhaps surprising that there was no authority on this point. The judge therefore referred to the so-called ‘Oudekraal principle’ of administrative law – named after the decision of Oudekraal Estates (Pty) Ltd v Cape Town & Others 2004 (6) 222 (SCA) – which says that, as administrative decisions are often acted upon in the belief that they were validly taken, they are accepted as valid until challenged and set aside by a court of law.

Judge Brand extended this to say that making the cancellation of a trade mark registration retrospective to the registration date could have consequences that might be substantially unfair, especially in the case of a registration that had been used (I imagine that what he had in mind here was that the owner of such a trade mark could suddenly find itself being liable for trade mark infringement, despite the fact that it had genuinely believed that it was entitled to use its registered trade mark). So the judge concluded that a cancellation is effective from the date on which the application for cancellation was brought.

Because this judgment contains a useful summary of the principles involved in determining the likelihood of confusion between trade marks, it’s likely to be very significant.