Wine And Wine Grapes Not Confusingly Similar, Says SCA In Trade Mark Case

In 2012 the Western Cape High Court handed down a trade mark judgement that raised eyebrows. The facts were that the owner of a farm called Zonquasdrift had a trade mark registration for the mark Zonquasdrift covering wine (but not grapes). The owner of another farm in the area sold wine grapes under its name, Zonquasdrif Vineyards (no 't' at the end). The court found that this use of the name Zonquasdrif Vineyards did not infringe the section of the Trade Marks Act that makes it an infringement to use a mark which is 'identical or similar' to a registered mark, in relation to goods or services which 'are so similar to the goods or services in respect of which the trade mark is registered that in such use there exists the likelihood of deception or confusion'. The court's decision was based on the fact that wine and wine grapes are very different goods. There was also a counter-application to cancel the registration on the basis that it indicated geographical origin, but the court felt that it didn't need to decide this issue.

On 19 November 2013 the Supreme Court of Appeal ('SCA') handed down its judgment. It kicked off with some history. It told us that Zonquasdrift - best known as the name of the end of the first stage of the famous Berg River canoe marathon - is the name of a natural crossing over the Berg River. The name, which is Dutch, has been around since 1660, but the letter 't' dropped off in Afrikaans and it's now known as Zonquasdrif. A farm called Zonquasdrift was established in the 1700s, and the farm of the trade mark owner is a sub-division of the original farm - the crossing is, in fact, on the farm of the trade mark owner. On the opposite side of the river the crossing is on a farm called Klein Zonquasdrif, and the farm of Zonquasdrif Vineyards is also on that side of the river, some 300 metres from the crossing.

The court then told us a bit about grapes and the wine industry. Wine grapes are not suitable for human consumption (the grapes you eat are called table grapes) and they're not sold to the public. The trade mark owner does not make wine but sells its grapes to a wine producer called Riebeek Cellars, which sources grapes from some 32 farms in the area and sells its wine under the trade mark Riebeek Cellars. There is, however, an exception to this - Riebeek Cellars does make a small amount of Chenin Blanc from grapes grown by the trade mark owner and this wine is sold in Germany under the trade mark Zonquasdrift...