We wrote about the Peppadew trade mark case back in 2017. At that stage, a three-judge court had handed down an appeal judgment in a trade mark opposition. Since then, the matter has gone on to the Supreme Court of Appeal (“SCA”), which handed down its judgment on 28 March 2018, Dinnermates (TVL) CC v Piquante Brands International & Another
The facts are that a company applied to register the trade mark Peppamate and a device of a pepper with a stalk – the applications were filed in classes 29, 30 and 31 (foodstuffs). These applications were opposed on the basis of earlier registrations for the trade mark Peppadew and a similar device for the same goods. The opposition succeeded on the basis that the trade marks were confusingly similar.
This first appeal court upheld the finding. The judge who handed down the judgment referred in detail to the SCA’s recent judgment in the Yuppiechef case (details at the foot of the article), where the court found that the trade marks Yuppiechef and Yuppie Gadgets were not confusingly similar because of the non-distinctive nature of the word “yuppie”, and the differences between the suffixes “chef” and “gadgets”. But the judge felt that the Peppadew case was distinguishable.
What made the Peppadew case so different from the Yuppiechef case? Well, that’s not easy to follow. The judge who handed down the first appeal judgment accepted that the common word “peppa” was weak given that it was obviously derived from “pepper”. The judge also accepted that the suffixes “dew” and “mate” were very different. But the judge held that “aurally the two trademarks are similar as both have a two syllable compound name, ‘peppadew’ and ‘peppamate’”. In addition, the judge was of the view that the similarity of the devices played an important role.
The SCA came to a different conclusion. It decided that there was no likelihood of confusion as the trade marks were visually, phonetically and conceptually dissimilar. The judge who handed down the judgment held that a major consideration was the fact that the word “peppa” has very little distinctiveness. In the words of the judge, the opponents were “in essence asserting a monopoly in the use of the word ‘peppa’”. The judge also held: “If a monopoly is granted in respect of Peppa it is hard to see how it would not extend to the use of pepper as a prefix, as in pepperoni.... one cannot monopolise the commons of the English language in that way.
The judge went on to say that the distinctive features of the trade marks were the words “dew” and “mates”, and these were clearly distinguishable, as were the devices that were used with the words.
The SCA has handed down a number of trade mark judgments over the past few years and, not surprisingly, this latest judgment refers to these judgments, including:
- Orange Brand Services Limited v Account Works Software (Pty) Ltd
- Yuppiechef Holdings (Pty) Ltd v Yuppie Gadget Holdings (Pty) Ltd
- Lucky Star Ltd v Lucky Brands (Pty) Ltd
The Peppadew judgment also refers to a number of SCA judgments that are by now regarded as classics, such as:
- Plascon Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
- Cowbell AG v ICS Holdings Ltd
- Century City Apartment Property Services CC & Another v Century City Property Owners’ Association
These judgments remind us of the many considerations (sometimes seemingly contradictory) that need to be taken into account in enquiries of this nature.
The older cases tell us that we need to take account of many things, including:
- the likelihood of confusion is to be appreciated globally;
- it must take account of all relevant factors, and it must be judged through the eyes of the average consumer, in other words, a person who is reasonably informed, circumspect and observant, but who also has imperfect recollection;
- the average consumer perceives a trade mark as a whole without considering its individual elements; and
- the visual, aural and conceptual similarities of the trade marks must be assessed with reference to overall impressions.
The newer cases seem to have added further considerations, for example:
- likelihood of deception is a question of fact and there is little assistance to be derived from prior decisions;
- the decision of whether or not there is a reasonable likelihood of confusion as to origin is a value judgment; and
- the value judgment is largely a matter of first impression and there “should not be undue peering at the two marks to find similarities or differences”.
If you’ve ever felt that trade mark attorneys tend to hedge their bets, now you know why!