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Published Date: July 27, 2017

Case Study: Lucky Star Limited v Lucky Brands and 16 others. This appeal concerns the sale and marketing of fish. In the case of the appellant, Lucky Star (Ltd), this is in the form of canned fish sold under the registered trade mark LUCKY STAR. In the case of the respondents, this is in the form of cooked fish and chips sold from several restaurants operated in Cape Town, under the trade marks LUCKY FISH, LUCKY FISH AND CHIPS and LUCKY FISH & CHIPS.

Relying upon the provisions of S 34(1)(a)(b) and (c) of the Trade Marks Act no. 194 of 1993 (hereinafter referred to as “the Act”), the appellant unsuccessfully brought an application before the Western Cape Division of the High Court, Cape Town. An interdict, together with ancillary relief, was sought against the respondents’ restraining them from infringing the LUCKY STAR trade mark. The appellant also sought relief in terms of S 11(2)(b)(i) and (iii) and 11(2)(c)(i) of the Companies Act 71 of 2008 (the Companies Act) declaring that the company name of the first respondent, Lucky Brands (Pty) Ltd, was confusingly similar to the appellant’s registered trade marks, LUCKY STAR and OCEANA BRANDS and company names, Lucky Star Ltd and Lucky Star Foods. An order was accordingly sought directing the first respondent to change its name and trading name. Similar relief was also sought on the same grounds against various other respondents’.

In deciding the matter, the SCA considered S 34 (i.e. S 34(1)(a), 34(1)(b) and 34(1)(c)) of the Act. For the purposes of s 34(1)(a) the Court indicated that the appellant had to establish (i) its trade mark registrations; (ii) unauthorised use in the course of trade by the respondents’ of an identical mark or a mark so nearly resembling its registered trade mark as to be likely to deceive or cause confusion; and (iii) in relation to the goods in respect of which the mark is registered.

The appellant’s contention was that the respondents’ made use of a mark so nearly resembling its trade mark as to be likely to cause confusion.

In considering trade mark infringement, the Court reiterated that what is required is an objective comparison between the appellant’s LUCKY STAR trade mark registrations and the respondents’ actual use. The Court indicated that the enquiry is confined to the marks themselves and no regard should be given to any other features of the get-up or the indication of origin of the goods as actually marketed by the appellant and the respondents’. The Court indicated that what is required is a comparison of the appellant’s registered trade mark LUCKY STAR with the trade mark of the respondents’, LUCKY FISH or LUCKY FISH & CHIPS.

While extraneous matter should not be taken into account when comparing marks, the Court indicated that the comparison of the marks should not take place in isolation. Regard must be given to the inter-relationship between the similarities of marks and the similarities of goods and services as registered for the appellant including notional use.

When comparing the two marks, the Court indicated that the common element in the marks is the word LUCKY, which is of minor significance when the marks are looked at as a whole. The Court went on to say that the word FISH as opposed to the word STAR is distinctive and cannot be ignored. The Court further indicated that when the marks are compared side by side, and the main or dominant features of the marks are considered, namely the words STAR and FISH, there is no likelihood of deception or confusion.

The Court also disagreed with the appellant’s argument that the distinctiveness of the word FISH is diminished because it is used in the context of the sale of fish. The Court indicated that it has considerable difficulty in imagining that the notional purchaser of the respondents’ fish and chips, would focus attention only on the word “Lucky” as the words “Star” and “Fish” are at least equally significant as the word “Lucky”. The overall impression which is created is that the marks do not resemble each other closely and the average customer would not be confused or deceived into believing that the respondents’ restaurants bearing the LUCKY FISH mark is in any way associated with the appellant.

In concluding, the Court found that the appellant had not established that the marks resemble each other so closely that deception or confusion is likely to arise. Therefore, the appellant’s contentions based on S 34(1)(a) must therefore fail.

The Court further stated that as ‘the two marks are sufficiently dissimilar to each other’ that ‘no amount of similarity between the respective goods or services of the parties will suffice to bring about an infringement’, it follows that the claim based on S 34(1)(b) must also fail.

In assessing dilution (i.e. S 34(1)(c) ), the Court found that the word similar in this section must not be given too wide or extensive an interpretation. The Court goes on to say that the appropriate meaning to be given to the word was ‘having a marked resemblance or likeness, which the Court held was not satisfied in this case’. Because of the distinct lack of similarity between the registered trade mark of the appellant and the respondents’, the issue of whether the goods and/or services of  the respondents’ are, or will be the same as, or similar to those proposed by the appellant, does not have to be considered.

Lastly on the issue of the relief sought in terms of the Companies Act, the Court found that on the reasons mentioned above, there was no basis to conclude that any person would be led to believe that the other parties to the matter were associated with the appellant.

Thus, this is an important decision to note as the matter turned on a comparison of the marks alone and did not turn on a comparison of the goods and/or services.

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