Last year the Western Cape High Court heard a matter between Lucky Star and Lucky Fish whereby Lucky Star, who used its registered trade mark in respect of canned fish goods, alleged that Lucky Fish was using a trade mark that was confusingly similar to its own and, therefore, was guilty of trade mark infringement. The High Court dismissed Lucky Star’s case, finding in favour of Lucky Fish, which had several restaurants in Cape Town selling cooked fish and chips.
The Supreme Court of Appeal also dismissed Lucky Star’s appeal but stated that the issues were “considerably narrower” than those raised in the High Court. What is required is a comparison between the two marks, LUCKY STAR and LUCKY FISH. The court stated that “it is clear that this comparison should not take place in isolation. It must take into account the inter-relationship between the similarity of the marks and the similarity of the goods and services as registered for (Lucky Star)… and the use to which the marks have actually been put by (Lucky Fish)”.
The SCA held that the common feature of the word “lucky” when looked at as a whole comparison between the two marks is of minor significance. It found that the fact that the two marks included the words “fish” and the word “star” respectively is distinctive and cannot be ignored. Accordingly, the court held that the overall impression was not that the two marks resembled one another close enough for there to be confusion or deception created.
The full judgment can be found at http://www.saflii.org/za/cases/ZASCA/2016/77.pdf
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