IMPORTANT TRADE MARK AND PASSING-OFF FINDING: CAIRNS FOODS LIMITED V NETRADE MARKETING (PTY) LTD

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This is an appeal decision relating to Cairns Foods Limited and Netrade Marketing, two companies in the business of producing and marketing food products, in particular, fruit jam.

Cairns Foods extensively used its SUN and device label trade mark in respect of jam products for over 50 years and has a reputation in the labelling. On 10 October 1995, Cairns Foods registered its SUN and device label trade mark covering jam products. However, Cairn Foods was asked to disclaim exclusive rights in fruit devices, limiting its rights in the composite label mark accordingly.

In 2016, it came to Cairns Foods’ attention that Netrade Marketing had, in 2011, registered a trade mark for its ROYAL SUN word mark only covering jam products with a disclaimer for ROYAL and was using the mark together with fruit devices (see above). Cairns Foods instituted infringement and passing-off proceedings on the basis that Netrade’s use of its ROYAL SUN trade mark was likely to cause, and was causing, confusion in the market place. Netrade relied on its registered trade mark as a defence (interestingly, there had been no application for cancellation of the trade mark made in the papers).

Lower court

The lower court dismissed the Cairn Foods’ case for infringement based on the differences in the marks and the fact that fruit devices had been disclaimed. The case based on passing-off was also dismissed.

Appeal

Cairns Foods appealed the decision and succeeded because the lower court had incorrectly dissected the two label marks in finding that they were different. The lower court had also erred in its assessment of the disclaimer in Cairn Foods’ mark and its finding that it had no rights in sun.

Considering the sparse litigation in Zimbabwe on trade mark-related matters, this well written decision is welcome because it correctly applies the tests. The litigation is expected to continue, however, because Netrade still has a registration for ROYAL SUN covering jam.