Late last year, the South African Supreme Court of Appeal (“SCA”) handed down an important trade mark judgment in Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd. The case dealt with that thorny issue that bedevils so many trade mark cases – confusing similarity.

The facts were fairly straightforward. Yuppiechef is an online retail business that specialises in kitchen and household goods. The company has various South African trade mark registrations for the name YUPPIECHEF, and these registrations are in classes 8, 11 and 21 and cover a range of goods. When a rival online retailer that specialises in so-called “novelty items” changed its name from Urban Gadgets to Yuppie Gadgets, Yuppiechef sued for trade mark infringement.

The problem, however, is that Yuppiechef’s trade mark registrations cover various goods, whereas the name Yuppie Gadgets appears to be used for retail services. This was indeed one of the issues raised by Yuppie Gadgets, which argued that there can be no question of primary infringement (same goods or services) when the registrations are for goods and the allegedly infringing use is in respect of services.

The SCA felt that the objection had merit. Judge Wallis dealt with this issue in some detail, making the point that a person who buys goods from a physical or online retailer does not expect the goods to actually emanate from that retailer. The judge also said that Yuppie Gadgets did not use its trade mark in “physical or other relation” to goods. The judge queried why Yuppiechef had not obtained a registration in class 35 for retail services.

The judge also went on to say that, even if Yuppiechef had registered in class 35, it still would have had no case because the trade marks YUPPIECHEF and YUPPIE GADGETS aren’t confusingly similar. The judge made a number of points on this issue.

The judge spent some time discussing the origin and meaning of the common feature, the word “yuppie”. He pointed out that the word first cropped up in the 1980s as an acronym for “young, urban or upwardly mobile professional person”, and that it subsequently fell into disuse, but has, of late, made something of a come-back.

The judge then went on say this: “There are many cases in which it has been said that it is not the purpose of trade marks or copyright to enable people to secure monopolies on the commons of the English language … yuppie is an ordinary word in common use.”

Moving on to the additional words “chef” and “gadgets”, the judge said that “one cannot simply disregard” them, describing them as “an integral part of the two marks”. He also said that the two words “are incapable of being confused”.

As for the composite trade marks, he concluded that “[b]oth visually and aurally the two marks are different. … The one consists of a single syllable, the other of two. In addition the concepts conjured ... are worlds apart.”

Moving on to the issue of possible secondary infringement (similar goods/services), the judge wasn’t convinced that the retail service of selling goods that are the same as those for which the trade mark is registered makes the goods/services similar. He described this claim as follows: “It appears to be an attempt to bridge the gap between a goods mark and a services mark. … It is unclear to me that those, or any other, services could ever be ‘similar’ to goods. The intrinsic nature of goods is wholly different from the intrinsic nature of services and vice versa.”

The judge then considered the issue of online retail and made the point that people who buy online are generally internet savvy, being able to distinguish adverts and other listings, and are familiar with things like drop-down menus. Moreover, the security features built into the online purchasing process (which often require the confirmation of details) reduce the likelihood of confusion. As the judge said: “The shopping process always provides time for reflection.”

There are a number of interesting aspects to this judgment. It is worth remembering that the mere fact that a word appears in a dictionary does not mean that it is non-distinctive – the issue really is whether the word has any relevance insofar as the particular goods or services are concerned. It’s also perhaps arguable whether the word “yuppie” still has much relevance today. One might also ask whether the court should have given at least some consideration to the weak nature of the additional words “chef” and “gadgets”, both of which are descriptive in nature.

One might also query whether it’s correct to say that goods and services cannot be similar for trade mark purposes – this suggestion was made in an earlier South African decision involving the retail trade mark Due South, but some analysis of decisions in other parts of the world might have been useful. It’s certainly very interesting, however, that the judge considered the savvy nature of the internet user to be relevant in the context of possible online retail confusion. Trade mark specialists will know that courts do the same thing in AdWords cases, where the issue is whether the purchase by one company of a competitor’s trade mark as a keyword infringes the trade mark registration.

A notable judgment for a number of reasons!