Defending The Black Knight

The Kwazulu Natal High Court has been called upon to decide whether use of the mark BLACK KNIGHT by KZN Wines and Spirits CC for their whisky infringed Distell Limited's registered trade marks KNIGHT'S GOLD and KNIGHTS label, for goods inclusive of whisky; and additionally whether KZN's label getup constituted passing off. It found no infringement or passing off.

Photographs of the respective goods not being presently available, this note is limited to a comment on the trade mark infringement aspect.

What is unusual about this case is that KZN had been using the offending mark and getup for 11 years before proceedings had been instituted by Distell. There was no evidence of confusion between the products during this time. Although not stated expressly, it appears that this factor contributed significantly towards the court's ruling, which was in favour of KZN.

Where trade mark infringement proceedings are concerned, one compares only the registered trade marks with the offending mark. The getup of the respective parties' goods should be irrelevant.

Distell's registered trade marks are KNIGHT'S GOLD (as a word mark) and the KNIGHT'S label. The KNIGHT'S GOLD mark contains a disclaimer as follows: "Registration of this trade mark shall give no right to the exclusive use of the surname KNIGHT or of the word GOLD each separately and apart from the mark".

Section 15 of the Trade Marks Act 193 of 1994 provides for the endorsement of disclaimers in relation to the exclusive use of portions of trade marks which are incapable of distinguishing. The effect of such endorsement is that the subject matter disclaimed may be used by...