The risky business of allusive trade marks in South Africa

Publication Sep 21, 2016

When a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But the risk must run unless the first user is allowed to unfairly monopolise the words. This dictum from a 1946 House of Lords judgement still holds true today in trade mark law.

The Yuppiechef decision

On September 15, 2016 the South African Supreme Court of Appeal (SCA) dismissed an appeal by Yuppiechef against Yuppiegadgets based on alleged trade mark infringement and passing-off. The Court stated that Yuppiechef had failed to discharge its onus of proving that the words Yuppiechef and Yuppiegadget were confusingly similar, and that simultaneous use of both marks would lead to consumers being confused that there existed an association between Yuppiechef and Yuppiegadget.

The SCA went on to state that, the word “Yuppie” is a common English word. Therefore, Yuppiechef, by using a common English word as part of its trade mark, took the risk that members of the public could be confused.Furthermore, it held that as long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.

Analysis

This case illustrates the risk inherent in choosing descriptive/allusive trade marks. Whilst it may be very tempting for traders to choose trade marks which are descriptive/allusive because their very descriptiveness makes them catchy and easy for consumers to remember – the danger in being unable to enforce such trade mark rights cannot be discounted.

This first appeared on The Brand Protection Blog

Recent publications

Subscribe and stay up to date with the latest legal news, information and events...