According to an old Arabian proverb, “a chameleon does not leave one tree until he is sure of another”and, following a recent Western Cape High Court judgment in a dispute concerning Jordan Winery’s CHAMELEON trade marks, it is clear that at least one chameleon will not be moving to its neighbour’s trees.

Jordan Winery, who has been using the word and depiction of a chameleon on its award-winning wines since 1993, approached the court for an urgent interdict to restrain its neighbour, Lovane, from infringing its registered CHAMELEON trade marks. During 2007, Jordan Wines discovered that Lovane had put up signboards outside its farm and marketed its Lovane wines with a label featuring a chameleon.

Given the extent of Jordan Wine’s use and the fact that no other wine producers have used a chameleon trade mark, the court concluded that Jordan Wines had well established rights in the mark and could therefore prevent Lovane from using either the word or depiction of a chameleon in relation to wine.

This is not the only dispute in the liquor industry where exclusive trade mark claims to animals have caused consternation. The use of leopards, elephants, lions and other animals on labels have also given rise to heated debate as to whether or not animals could be monopolised for trade mark purposes. In the Jordan Winery case, it was pointed out that there were many chameleons on Lovane’s Farm and would it therefore not be unreasonable to deprive Lovane of the right to use chameleons as part of its logo?

In essence, the Jordan Wines judgment confirms that it is possible to claim exclusivity in respect of a particular kind of animal as a trade mark in relation to wine. To give an example: If only one wine producer uses an aardvark* on its wines and no prior applications or registrations of this animal exist on the Trade Marks Register, other producers may well be prevented from using an aardvark on their wines. However, if there are a number of aardvarks on the Register, or if the use of an aardvark has become widespread amongst wine producers, a monopoly of this animal would not be possible.

The judgment is also interesting with regard to the extent to which a translation, albeit a distorted version, of a registered mark can be used by another producer. The mark LOVANE is derived from the Xhosa word “uluvane”, which means chameleon. Jordan Wines took the view that the use of this mark also infringed its CAMELEON in that consumers may find the marks confusingly similar.

The court confirmed that in testing whether the marks are confusingly similar, they should be viewed through the eyes of the average consumer of the goods in question. The court accepted that in a multi-lingual society such as ours, the "idea" conveyed by a mark is extremely important when comparing word marks in different languages, particularly if one is a translation, or near translation, of the other.

In this regard, the court remarked that only Xhosa-speaking people, who constitute a relatively small proportion of the overall population, might make a connection between the marks, but even this group would be unlikely to link the words in the absence of a chameleon depiction in close proximity to the word LOVANE. The court then pointed out that Lovane had in any event agreed to remove the chameleon from its products and concluded that there was no likelihood of confusion between the marks CHAMELEON and LOVANE.

The judgment leaves us with a few unanswered questions. One would assume that the Afrikaans version, VERKLEURMANNETJIE, would not have been tolerated. However, would the decision have been different had the correct Xhosa translation, ULUVANE, been used? And what about those intrepid few who are using cheeky puns on well-known French wines, such as Fairview’s Goats do Roam (Côtes du Rhône)?

Therefore, the use of translated, or transliterated, versions of registered trade marks can be a thorny issue and are, perhaps, best avoided.