Discerning whiskey imbibers not likely to be confused

South Africa

In Distell Ltd v KZN Wines and Spirits CC (10006/2011) [2013] ZAKZDHC), the Kwazulu-Natal High Court, based in Durban, was called upon to decide a passing-off and trademark infringement dispute over labels applied to whiskey.

Distell Ltd has owned the trademark KNIGHT’S GOLD and the KNIGHTS label mark for whiskey since 1988 and 1991, respectively, and has been selling the Knights whiskey in the country for over two decades. The KNIGHTS mark depicts a label with the word 'knights' in white print on a black background and some decorative features above and below the word. The word mark KNIGHT’S GOLD has disclaimers entered against both 'knights' and 'gold'.

KZN Wines and Spirits CC sell whiskey under the mark BLACK KNIGHT in a somewhat different bottle, according to the decision (see Paragraph 6), which was discovered in May 2011 by Distell, which then took action. After KZN failed to comply with Distell's demands, an application was filed in court on the basis of traditional trademark infringement (Section 34(1)(a) of the Trademarks Act) and passing off.

With regard to the infringement claim, the judge concluded that:

  • the validity of the marks was not in issue;
  • the goods were identical; and
  • “what falls for decision is whether the respondent’s trademark BLACK KNIGHT is so similar to either or both of the applicant’s trademarks so as to be likely to cause confusion or deception”.

In dismissing the infringement claim, the judge placed emphasis on the fact that whiskey drinkers are discerning purchasers, and that the marks were visually and aurally different:

... a consumer is likely to exercise circumspection and a greater degree of care in making a purchase. It is not an overstatement that whiskey drinkers take pride in the product and assimilate in it such that they are able to distinguish whether it is single malt or blended as well as a source of origin.” 

He also felt that, as no evidence of confusion could be provided despite over a decade’s worth of concurrent use, confusion was unlikely to occur.

Turning to the passing-off claim, the judge re-iterated that it is the general appearance of the get-ups that requires consideration and that confusion need only last for a fraction of the time to those who view the product with imperfect recollection of the other. However, in dismissing the claim, he put great emphasis on the concurrent trading in the products that had taken place over the last decade. Quoting Laddie in Arsenal Football Club PLC v Reed (2001 PRC 46 at 922 at 931):

“Where the defendant has been carrying on his trade for some time, the court can expect to be relieved of the need to speculate as to the likelihood of confusion and damage. In most cases, it will be able to see what has actually happened. If the claimant has suffered substantial damage, one can expect it to be apparent. Absence of evidence of confusion becomes more telling and more demanding of explanation by the claimant the longer, more open and more extensive the defendant’s activities are.”

It is not yet clear whether the decision has gone on appeal.

Darren T Olivier, Adams & Adams, Johannesburg

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