Infringement found despite non-use of registered mark

South Africa
In Golden Fried Chicken (Pty) Ltd v Soulsa CC (23619/2007 [2009] ZAGPHC 11, January 30 2009), the High Court of South Africa has injuncted Soulsa CC from infringing Golden Fried Chicken (Pty) Ltd’s registered trademark SOUL. The court had to determine whether the mark used by Soulsa in connection with its restaurant constituted infringement of an unused trademark belonging to Golden Fried Chicken.

Golden Fried Chicken is the registered proprietor of the trademark SOUL for the following services in Class 42 of the Nice Classification:
 
“Restaurants, snack bars, cafés, fast food outlets, canteens and roadhouses, services connected with the sale and distribution of foodstuffs and refreshments; catering.”
 
Golden Fried Chicken conducts business as Chicken Licken, which was started in the 1980s. Its business is conducted at 186 outlets throughout Southern Africa. Golden Fried Chicken has used the SOUL mark for many years. This trademark is used on menus, serviettes and promotional material. However, no restaurant is run under the name SOUL.
 
Soulsa runs a restaurant under the name SOULSA in Johannesburg.
 
Golden Fried Chicken called on Soulsa to cease using the mark SOULSA. Soulsa refused to comply with the demand. In approaching the court, Golden Fried Chicken relied on Section 34(1)(a) of the Trademarks Act (194/1993), which reads as follows:
 
“The rights acquired by registration of a trademark shall be infringed by the unauthorized use in the course of trade in relation to goods or services in respect of which the trademark is registered, of an identical mark or of a mark so nearly resembling it to be likely to deceive or cause confusion.”
 
To establish infringement, a trademark owner must show:
  • use of the trademark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;
  • that the use is in relation to the goods or services in respect of which the trademark is registered;
  • that the use is in the course of trade; and
  • that the use is unauthorized.
Soulsa used the mark SOULSA to designate its restaurant. The question thus was whether SOULSA so nearly resembled SOUL as to be likely to deceive or cause confusion.
 
The court held that the fact that the SOUL mark was not used in respect of a restaurant was irrelevant for the claim of infringement. The court relied on Bata Ltd v Face Fashions CC (2001 (1) SA 844 (SCA)), in which it was stated that regard should be had to the notional use of a mark, that is to say “all possible fair and normal applications of the mark within the ambit of the monopoly created by the terms of the registration”.
 
The court also referred to Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd (1984 (3) SA 623 (A)), where it was held that the onus is on the plaintiff to show the likelihood of deception or confusion. It is not necessary to show that every interested person would probably be confused. The plaintiff need only show that a substantial number of persons will probably be confused or deceived as to the origin of the goods or services. The notional customer must be perceived as a person of average intelligence, having proper eyesight and buying with ordinary caution. Due allowance must be made for the improper recollection of the registered mark. The dominant feature likely to impact the mind of the customer must be taken into account. Consideration must also be given to the manner in which the marks are likely to be used.
 
In the present case, Soulsa's name incorporated the whole of Golden Fried Chicken’s registered mark with the additional letters 'SA'. According to the court, the words 'soul' and 'soulsa' have a similar sense and appearance. The general impression of the trademark and name is similar. The court stated that if allowance was made for imperfect recollection, Soulsa's name was deceptively similar to Golden Fried Chicken’s trademark SOUL.
 
Soulsa was thus ordered to refrain from infringing Golden Fried Chicken’s trademark SOUL and to remove the SOULSA mark from its restaurant. Soulsa was also ordered to pay the costs of the application.
 
Judge Southwood, who adjudicated in this case, has had considerable experience in trademark matters and is one of the more respected voices on the bench. Nevertheless, one would have liked to hear his reasons for dismissing arguments (if raised) that SOULSA appears to stand together as one word (phonetically similar to 'salsa') and that the identity of the registered word SOUL (an ordinary everyday word) is changed by the addition of 'SA', such that the marks SOUL and SOULSA are in fact distinguishable. It is also noteworthy that although the SOUL mark was not reclassified according to the latest revised edition of the Nice Classification (where restaurant services fall in Class 43, and not Class 42), such omission was apparently not relied upon by the defence - and correctly so, it seems.
 
Darren Olivier and Msawenkosi Gaxo, Bowman Gilfillan Inc, London

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