The High Court of South Africa Kwa-Zulu Natal Local Division, Durban delivered a judgment in a passing off case between Fuel Trailers (Pty) Limited t/a Trailers & Tankers (“Trailers & Tankers”) and St Logistics (Pty) Limited t/a Jikelele Tankers & Trailers (“Jikelele”).
The Court found that Jikelele’s use of the ORANGE TRAILER logo was already associated with Trailers & Tankers’ business and Jikelele’s use of the words “Trailers & Tankers”, inter alia, as part of its logo was likely to cause confusion.
A side-by-side compassion of the parties’ marks in dispute is shown below:
TRAILERS & TANKERS
“ORANGE TRAILER” logo
JIKELELE TANKERS & TRAILERS
The parties’ business relationship dates back to 2017, when Jikelele first started to sell Trailers & Tankers’ products. A non-disclosure agreement and a distribution agreement were signed between the parties, containing material terms regarding confidentiality and the fact that Jikelele was only allowed sell Trailers & Tankers’ products in Kwa-Zulu Natal.
As the relationship grew, the parties altered the Trailers & Tankers logo together to what is now the ORANGE TRAILER logo (as shown above). Jikelele later claimed ownership of this design, arguing that it was created by one of its employees. The business relationship between the parties was terminated and Jikelele then designed its own logo, as shown above, which makes use of the identical orange trailer, an orange, blue and white colour combination, and the words TANKERS & TRAILERS. As a result of the creation of the JIKELELE logo, a dispute arose about whether Jikelele had the right to use the ORANGE TRAILER logo and whether the similarities between the two marks would cause confusion.
The Court discussed whether Jikelele’s conduct amounted to unlawful competition and whether its conduct was calculated to pass off itself as Trailers & Tankers. Passing off occurs when there is a false representation (misrepresentation) made directly or indirectly by a trader to the public that his business is that of a competitor, or that it is associated with that of a competitor. An applicant will need to prove three elements to succeed with a passing off claim, namely, goodwill or reputation in the business, misrepresentation, and the likelihood of damage to the goodwill.
The Court determined that Trailers & Tankers had established that the ORANGE TRAILER logo was already associated with its business. It was held that the way in which Jikelele styled the use of the words ‘Tankers & Trailers’ as part of its JIKELELE logo was likely to cause deception or confusion amongst the public and misrepresent that it was associated in some way with Trailers & Tankers in the course of trade.
Jikelele attempted to argue that the use of ‘Tankers & Trailers’ in their logo was generic, but the Court disregarded this argument, given the striking similarities between the logos. Jikelele further argued that the addition of “Jikelele” was distinctive. However, the Court found that considering all the characteristics and factors, Jikelele was trying to create an impression that using the words ‘Tankers & Trailers’ was an innocent coincidence to describe the products of its trade.
The Court acknowledged that the words “Trailers & Tankers” are in fact generic descriptive words. However, when all the elements were considered together, which included the design of the orange trailer logo, the identical font for the words TRAILER & TANKER, the format and positioning of the orange trailer logo, the use of the identical colours orange, blue and white, and the overall impression of the logos when compared side by side, the Court ordered that Jikelele be interdicted and restrained from passing-off or representing to the public at large that it operates as part of, or is connected in the course of trade with, Trailers and Tankers, by using its JIKELELE logo, or any other get-up which is confusingly or deceptively similar to Trailers and Tankers’ distinctive ORANGE TRAILER logo.
When considered in isolation, generic terms can be considered descriptive and do not have the right to be protected as a trade mark. In practice, however, as this case illustrates, generic terms could be protected in certain situations when they are considered alongside a business’s goodwill and reputation.