When a trade mark (brand name, slogan or logo) has been registered, nobody else can use this trade mark, or one that is confusingly similar. If this happens, legal action may result. The Companies and Intellectual Property Commission (“CIPC”) administers the Register of Trade Marks, which is the record of all the trade marks that have been formally applied for and registered in South Africa.
PepsiCo Inc v Atlantic Industries
Atlantic Industries Is the registered proprietor of the trade marks TWIST, LEMON TWIST and DIET TWIST in relation to non-alcoholic drinks. PepsiCo applied to have these marks expunged and applied for the registration of the word mark PEPSI TWIST and of a device mark incorporating the words PEPSI TWIST. PepsiCo applied for the expungement of Atlantic’s marks on the basis that the word ‘Twist’ was not capable of distinguishing a proprietor’s goods and was purely descriptive. The Supreme Court of Appeal (“SCA”) rejected these contentions, finding that the word ‘Twist’ in relation to non-alcoholic drinks was an arbitrary non-descriptive word and that any association with non-alcoholic drinks was at most allusive or metaphorical. There was in any event overwhelming evidence that through extensive use the mark TWIST had become distinctive of Atlantic’s beverages.
Regarding PepsiCo’s application for the registration of its marks, the SCA held that the incorporation, in the proposed marks, of the sole distinctive feature of Atlantic’s marks, namely TWIST, was likely to deceive or cause confusion as to the origins of the beverages manufactured by Atlantic and PepsiCo respectively. The likelihood of deception or confusion was not avoided by inserting PEPSI before TWIST because the latter word played an independent distinctive role in the composite sign.
Whether a word is purely descriptive or not, is irrelevant when considering the word’s relation to a company’s brand or product. Once a phrase or word becomes associated with a product, it will be very difficult, if not impossible, to expunge and trade mark that word or a similar phrase.
This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Please feel free to contact Brian Kahn for further information or specific and detailed advice. Errors and omissions excepted (E&OE)