When Is A Descriptive Mark Not A Descriptive Mark?

This was the issue before the Supreme Court of Appeal in the matter between Dinnermates (Tvl) CC and Piquante Brands International & another 401/17) [2018] ZASCA 43 (28 March 2018).

The matter was an appeal against the decision of the Full Court upholding an opposition in terms of section 10(14) of the Trade Marks Act 194 of 1993 ("the Act") to the registration of the Appellant's trade mark applications for the mark PEPPAMATES in the face of the Respondent's PEPPADEW trade mark registrations.

Section 10(14) deals with marks which are identical or similar to an existing registered trade mark, filed in respect of the same or similar goods/services, and which are likely to deceive or cause confusion in the marketplace.

Both marks were filed in device format, i.e.:

The Respondents contended that the dominant element, PEPPA, which appeared in both marks was a distinctive element, as it did not appear in a dictionary (although the word PEPPADEW does, albeit with the " symbol). They maintained that there were thus two distinctive elements to their trade mark, namely the word PEPPA, which was combined with a side view of a single rounded pepper and stalk device.

Both the Court a quo and the full Court upheld the Respondents' contention that there was a high degree of similarity between the marks, such that when the words DEW and MATES were removed, there was a likelihood of confusion or deception.

The Appellant, however, argued that the word PEPPA is in common use, and is merely a variation of the word "pepper". It thus could not be considered distinctive or invented in respect of foodstuffs in general. In addition, the word/element PEPPA appeared in other trade mark registrations, some of which pre-dated the Respondents' marks. The elements MATES and DEW cannot simply be discarded or ignored, as they served to differentiate the respective marks.

Furthermore, the Respondents' device is simply a descriptive rendering of a sweet piquante pepper. The Court and full Bench had effectively granted the Respondents a monopoly in respect of a descriptive pepper device coupled with a descriptive word or element. This is analogous to, for example, a supplier of grapes not being able to use a device of a bunch of grapes alongside its name and trade mark.

The Court held that granting a monopoly in respect of the word or prefix PEPPA in effect would lead to the absurdity of including use of the word "pepper", which is in common usage. Even ordinary words such as...