E
ENS
More
ENS is an independent law firm with over 200 years of experience. The firm has over 600 practitioners in 14 offices on the continent, in Ghana, Mauritius, Namibia, Rwanda, South Africa, Tanzania and Uganda.
Casadobe owns a boutique wine estate called CANTO in Durbanvillle wine valley, Western Cape. Fratelli (an Italian company) is the registered proprietor of the South African…
South Africa
Intellectual Property
To print this article, all you need is to be registered or login on Mondaq.com.
Casadobe owns a boutique wine estate called CANTO in
Durbanvillle wine valley, Western Cape. Fratelli (an Italian
company) is the registered proprietor of the South African
trademark CANTI for wines and sparkling wines (Class 33).
Casdobe applied for the registration of its CANTO trademark in
2015 in various classes, including class 33.
Arguments
Fratelli contended that CANTO is visually, phonetically and
conceptually confusingly similar to CANTI.
Casadobe argued that even though the first four letters of CANTO
and CANTI are the same, a single letter can make an “enormous
difference in relation to trade marks”. According to
Casadobe, the ‘I’ and the ‘O’ at the end of
the respective trade marks are of fundamental importance for the
purpose of distinction.
The High Court granted an interdict in favour of Fratelli,
finding “CANTO” and “CANTI” to be visually,
aurally, and conceptually similar.
Casadobe appealed the decision.
Supreme Court of Appeal
The SCA found that “consumers of wines, including
sparkling wines, are quite discerning. They are likely to exercise
circumspection and a greater degree of care in making a
purchase.” In addition, “the notional consumer would in
no way be confused on encountering the two marks in the market
place as the CANTO mark would be found on South African wines or
MCCs while Fratelli’s CANTI mark would be found on the
imported (Italian) wine section of the store.”
The SCA also held that “The finding of the high court that
the two marks are closely similar, and their pronunciation sounds
similar, is incorrect. A further finding that the single letters
‘I’ and ‘O’, which happen to be right at
the back of the words, do not sufficiently distinguish the marks
from each other is equally incorrect. The conclusion that trade
marks CANTO and CANTI are visually, aurally and conceptually
similar and that there exists a likelihood of confusion or
deception among consumers is wrong. Therefore, the appeal must
succeed.”
SCA Decision
The SCA overturned the High Court’s decision, ruling that
it was improbable that the public would be deceived or confused by
the similarity between “CANTO” and
“CANTI”.
It, therefore, dismissed the application with costs, including
the costs of two counsel. Full judgment can be accessed here.
Key Lessons
The importance of obtaining specialised IP expertise for your
brand selection phase cannot be overstated. The search should
identify the risks of proceeding with a brand and possible steps to
mitigate (or avoid) these risks. This will hopefully save you the
significant costs of litigation down the line once you have
committed to the brand (and are less likely to want to
rebrand).
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.