Supreme Court of Appeal rules in winemakers' dispute

On November 19 2014 the Supreme Court of Appeal of South Africa handed down judgement in the matter between Roodezandt Ko-Operatiewe Wynmakery Limited (the appellant) and Robertson Winery (Pty) Ltd (the respondent) (Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd (503/13 [2014] ZASCA 173)).

The matter arose on January 19 2012, when the respondent brought an application for the removal of the appellant’s trademark in terms of Section 24(1) of the Trademarks Act (194/1993). Section 24 allows for the rectification of the trademarks register by, among other things, removing an entry wrongly made or wrongly remaining on the register.

The appellant is the proprietor of the trademark ROBERTSON HILLS, registered in Class 33 of the Nice Classification in relation to “alcoholic beverages, except beer”. The respondent, in turn, is the registered proprietor of a composite label mark incorporating the words 'Robertson Winery', the word mark ROBERTSON VINEYARDS and a third mark consisting of the word 'Robertsoner', all in relation to the goods covered by Class 33, in particular in respect of wine. All the aforegoing marks were registered prior to the application date of the appellant’s ROBERTSON HILLS mark in February 2008. The earliest of the respondent’s marks, being the composite label mark, dates as far back as 1997.

As the respondent’s ROBERTSON-incorporating marks all predated the appellant’s ROBERTSON HILLS mark, it followed naturally that the respondent argued that the appellant’s mark should be removed on the basis that it was, at the time of filing, an entry wrongly made on the register. It is common cause that for the purpose of deciding whether or not an entry was an entry wrongly made, the relevant date is the filing date of the contentious trademark and that the factual position prevailing at such a date should be considered, irrespective of when the registration certificate was issued.

The grounds for removal of a trademark in terms of Section 24 have been codified in Section 10 of the Trademarks Act. These grounds are also the basis on which one can rely to oppose an application and include both absolute and relative grounds. In this instance, the respondent relied in particular on Sub-sections 10(12) and 10(14). These sub-sections have in common that they prohibit the registration of a mark which would be likely to deceive or cause confusion in general or with reference to another registered mark. As the dominant element of the respondent’s mark is incorporated in its entirety in the main feature of the appellant’s mark, the core issue before the court was whether the similarities were such to confuse or deceive the average member of the purchasing public into assuming or wondering whether the goods bearing the competing trademarks come from the same source.

A determination as to confusing similarity requires a value judgement. In this regard, the court referred to numerous previous decisions setting out the principles to consider including, among others:

• that it is sufficient to show that a substantial number of persons will probably be confused as to the origin of the goods;
• that one should consider both the similarities and differences by comparing the products side-by-side, but also separately;
• the ordinary purchaser's imperfect recollection of the marks; and
• what the dominant feature of the marks is and the impact it will have on the mind of the consumer.

By applying the above principles, both the court of first instance and the appeal court found that the parties’ respective ROBERTSON-incorporating marks were confusingly similar.

It should be pointed out at this stage that the respondent’s word mark ROBERTSON VINEYARD is subject to a disclaimer which reads: “the registration of this mark shall give no right to the exclusive use of the geographical name Robertson where used bona fide as an indication of origin”. The appellant consequently argued that ‘Robertson’ is a town name in the Cape wine region and, moreover, is it the name of a defined wine production area in terms of the Liquor Products Act (60/1989). As such, the appellant contested that the respondent could not claim a monopoly in the word 'Robertson' as a trademark.

The Court of Appeal took a two-way approach in answering this line of argument:

• firstly, that it is indeed possible for a name of a place or any non-distinctive matter to acquire distinctiveness through use (such as the 60 years during which the respondent had exclusively been using the ROBERTSON mark in relation to wine); and
• secondly, that the appellant was using its ROBERTSON HILLS mark in order to distinguish its wines from others (ie, in a trademark sense).

As an addition, the court explained the norm of trademark use as it relates to wine, stating that the trademark on the product only identifies and guarantees the origin of the finished product. A separate label usually indicates the geographical origin of the grapes within the terms of the Wine of Origin Scheme.

The appeal was accordingly dismissed and the register rectified so as to remove the appellant’s ROBERTSON HILLS trademark.

Femke van Dyk, Spoor & Fisher, Pretoria