A cracker of a victory for Salticrax.

Whilst shopping in the supermarket, do you always take specific and particular notice of the branded items you place in your trolley? Have you ever picked up an item and, on closer inspection, realised it wasn’t the product you were looking to buy, or you bought it and only realised your mistake once you were home unpacking your goods? Perhaps not even then.

Not only would this situation be irritating and inconvenient for you, but it would also have taken an unfair advantage of your preferred brand’s reputation, causing it financial harm.

Recently, the South African Supreme Court of Appeal (“SCA”) had to decide on a case with two competing brands in National Brands Limited v Cape Cookies CC and Another (309/2022; 567/2022) [2023] ZASCA 93 (12 June 2023), ruling in favour of the SALTICRAX brand over the attempt by Cape Cookies CC to apply to register the trade mark SNACKCRAX.

National Brands Limited opposed the registration of the trademark and based its argument predominately on section 10(17) of the Trade Marks Act 194 of 1993 (“the Act”), which states that:

“(A) mark shall not be registered as (a) trade mark or, if registered, shall be removed from the register (if):

1. (it)… is identical or similar to a trade mark which is already registered and is well-known in the Republic,

1. If the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the registered trade mark, notwithstanding the absence of deception or confusion.”

These requirements are also the essential elements of what constitutes an infringement of a trade mark.

Cape Cookies argued that the suffix or word ‘crax’, as a part of the word SNACKCRAX, was non-distinctive. The argument was that ‘crax’ is an ordinary word commonly used as a variation and/or abbreviation of the word crackers.

However, the SCA disagreed and ruled that there was no basis for this argument and held that it is not a word that is commonly used in the marketplace. Consequently, the marks SALTICRAX and SNACKCRAX would be too similar to the consumer, with all other considerations in mind, such as the similarity of goods. SCA Judge Gorven stated, “The test of an easily recognisable similarity between the two marks is met. The mark SNACKCRAX must therefore be held to be similar to SALTICRAX…”

Going further, Judge Gorven held the following:

“I do not consider that the prefix ‘snack’ serves to sufficiently distinguish SnackCrax from Salticrax either visually or aurally. The conceptual similarities are clear. In my view, the relevant consumer will make a connection or discern a link between the two. It would seem reasonable to suppose that SnackCrax might be linked with, and thus amount to an infringement of, Salticrax in the same way…In all the circumstances, I take the view that, if registration was to be allowed, use of SnackCrax would reasonably probably, or be likely to, take unfair advantage of the distinctive character or repute of Salticrax.”

The court also emphasised the point that the anti-dilution provisions in the Act “serve (as) a vital purpose in preserving trade and commercial interests of owners of trade marks which have a reputation.”

In conclusion, this SCA judgment is a reminder of the importance of ensuring that as a brand owner, you are careful to choose a trade mark for your product that is distinctive and would not take unfair advantage of, or be detrimental to, the distinctive character of another trade mark already in the market. At FWB, we can assist you in providing an availability search and opinion on the registrability of your proposed trade mark before you invest too much time, money and effort in the name.

Article authored by Kirshia Pillay and Gaby Meintjes.