Seen in the light of rights

Anthony Hamilton Russell and Southern Right Cellars (Pty) Limited have corked Bonnievale Co-op Wynkelders Beperk’s sale of a range of wines under the trade mark Southern Lights.

The Pinotage and Sauvignon Blanc specialist, situated in the Hemel en Aarde Valley near Hermanus in the Western Cape, reached an agreement with Bonnievale that was made an order of court in terms of which Bonnievale is to refrain from infringing its rights in its registered trade mark Southern Right.

Southern Right Cellars has seen phenomenal growth in sales of its Southern Right wines since they were released in 1995. Revenues were in the region of R180 000 in 1996 and R5 000 000 in 2007. The company got wind of the fact that Bonnievale intended to launch Southern Lights wines in 2006 and it was of the view that the use of this trade mark in respect of wines would lead to deception and confusion and give rise to trade mark infringement, passing off and unlawful competition.

Meetings were held between the parties and correspondence was exchanged in an attempt to settle the matter but, as Southern Right Cellars believed that Bonnievale had feigned the intention to settle, it launched an urgent application to the Cape Provincial Division of the High Court for the appropriate relief.

Southern Right Cellars alleged infringement of its registered Southern Right trade mark in terms of Section 34(1)(a) and 34(1)(b) of the Trade Marks Act, which, when read together, preclude the use of a mark which is the same as or similar to a registered trade mark in relation to the same or similar goods in respect of which it is registered, where such use will result in deception and confusion.

Southern Right Cellars argued that, among other things, when the average wine consumer looked at the Southern Right and Southern Lights wine bottles, he or she was likely to believe that the respective marks were used for products of the same producer or that the wines were one and same. While admitting that the get-up of products is irrelevant when a trade mark proprietor relies on its statutory rights in making out a case of trade mark infringement, the company pointed out that, where its Southern Right and the Southern Lights wines are referenced on menus or wine lists, consumers would not be confronted with the get-up of the respective wines. Southern Right Cellars believed that aural confusion would occur when the respective products were marketed by “word of mouth” or ordered telephonically.

The relief sought by Southern Right Cellars was for an interdict to restrain Bonnievale from using the Southern Lights trade mark. It also sought an order to compel Bonnievale to remove the mark or any marks that so nearly resemble the Southern Right trade mark that their use would be likely to deceive or cause confusion from all material including all advertising material, printed matter and stock in its possession. In the alternative, where the Southern Lights trade mark was inseparable or incapable of being removed from these materials, Southern Right Cellars sought an order that the matter or stock be delivered up to it.

Bonnievale opted not to defend the application and the matter was settled out of court.

It is self-evident that where a person takes the necessary precaution of having his or her trade mark registered, such a person is in a strong position to protect the goodwill and reputation that vests in that trade mark. The South African Trade Marks Act provides several remedies for the infringement of a person’s registered trade mark, which include:

• an interdict;
• an order for the removal of the infringing mark from all material and, where the infringing mark is inseparable or incapable of being removed from the material, an order that all such material to be delivered up to the proprietor;
• damages, including those arising from acts performed after the advertisement of the acceptance of the application for the trade mark registration which, if performed after registration, would amount to infringement of the rights acquired by registration;
• a reasonable royalty, in lieu of damages, at the option of the proprietor, which would have been payable to the licensee for the use of the trade mark concerned, including any use which took place after advertisement of the acceptance of an application for registration and which, if it had taken place after registration, would have amounted to infringement of the rights acquired by registration.

Having a trade mark registered places a much lighter onus on the trade mark proprietor in litigious proceedings. Where, for example, the proprietor had only common-law rights in his or her trade mark, he or she would have to rely on proving the elements of the delict known as passing off or unlawful competition to protect the reputation and goodwill in such trade mark. This involves preparing sufficient evidence of commercial use of the trade mark, which, at the end of the day, would lead to expenses which could have been avoided by registering the trade mark.

Do not hesitate to contact us if you have any questions or require any further information.

Theuns van de Merwe
Candidate Attorney
theuns-v@adamsadams.co.za

Steven Yeates
Partner
steven@adamsadams.co.za