Grupo Bimbo S.A.B. DE C.V. v Takis Biltong (Pty) Ltd

Grupo Bimbo S.A.B. DE C.V. (applicant), a Mexican company trading in South Africa, was the proprietor of the trade mark registration no. 2012/14977 "TAKIS FUEGO" device in class 30, registered on 6 June 2012 covering bread, pastry, corn and wheat flour chips, and extruded products. Takis Biltong (Pty) Ltd (respondent), a South African company selling biltong and snack products, was the registered proprietor of two "TAKIS LOGO" marks registered on 8 May 2007 in class 29 covering meat, fish, poultry, and game. The respondent applied to the high court under s 24 of the Trade Marks Act 194 of 1993 to expunge the impugned mark. Vorster AJ dismissed the application, but on appeal the full court (majority: Davis J and Nemavhidi AJ; dissenting: Makgoba J) set aside the dismissal and cancelled the impugned mark. The applicant's application for special leave to appeal was dismissed on 8 March 2022. Petse AP referred the matter for reconsideration and oral argument in terms of s 17(2)(f) and s 17(2)(d) of the Superior Courts Act 10 of 2013.

• Whether special circumstances existed to warrant the grant of special leave to appeal under s 16(1)(d) of the Superior Courts Act
• Whether there was a reasonable prospect of success on appeal
• Whether the marks were so similar as to cause a likelihood of deception or confusion under s 10(12) of the Trade Marks Act
• Whether the goods in question were similar for purposes of trade mark law
• Whether the impugned mark was likely to take unfair advantage of or be detrimental to the distinctive character or repute of the respondent's registered marks under s 10(17) of the Trade Marks Act
• Whether the respondent had established prior existing rights under s 10(16) of the Trade Marks Act

The application for reconsideration of the order dismissing the application for special leave to appeal was dismissed with costs.

The binding legal principles are: (1) For special leave to appeal to be granted under s 16(1)(d) of the Superior Courts Act, something more than reasonable prospects of success is required - special circumstances must be demonstrated, which may include that the appeal raises a substantial point of law, or the prospects of success are so strong that refusal would result in manifest denial of justice, or the matter is of great importance; the mere existence of a dissenting judgment does not constitute special circumstances. (2) In comparing trade marks for likelihood of deception or confusion, the court must identify dominant features - where marks share a dominant distinctive feature (particularly an invented word with no meaning in English), there is a greater likelihood of deception or confusion. (3) Matter that is not intrinsic to the mark and has no trade mark significance (such as descriptive words indicating flavour variants) must be excluded from comparison. (4) There is interdependence between similarity of marks and similarity of goods - the greater the similarity between marks, the lesser the degree of similarity required between goods. (5) Marks are deceptively or confusingly similar if they are phonetically, visually, or conceptually similar on even one level of comparison. (6) Goods are similar if they are used for the same purposes, by the same consumers, sold through the same trade channels, placed together in retail environments, and compete with each other - all snack foods fall within this category regardless of whether they are plant-based or meat-based. (7) Under s 10(17), only a likelihood of unfair advantage or detriment needs to be shown, not concrete evidence - a well-founded basis supported by facts suffices.

The Court made several observations beyond the strict ratio: (1) It noted that by intending to oppose the respondent's pending class 30 applications, the applicant had effectively accepted that the two marks are deceptively or confusingly similar. (2) The Court categorized the TAKIS mark as belonging to the same class of inherently distinctive invented marks as SAMSUNG, TOYOTA, MOTOROLA, and NOKIA, distinguishing it from common words in everyday use. (3) The Court observed that the provisions of s 10 of the Trade Marks Act are self-standing grounds - if any one ground is established, the court must refuse registration or expunge the mark. (4) The Court noted that while the majority had found the requirements of s 10(16) satisfied, the respondent had only pleaded existing rights in class 29 goods, not class 30 goods, but this was not a basis to grant special leave to appeal since the respondent had succeeded on other grounds. (5) The Court commented that at the time opposition proceedings are launched, concrete evidence of advantage or detriment under s 10(17) may well not yet have emerged, thus reinforcing that likelihood is sufficient.

This case clarifies the standard for granting special leave to appeal under s 16(1)(d) of the Superior Courts Act, confirming that the mere existence of a dissenting judgment or equal split among judges does not constitute special circumstances. The judgment provides comprehensive guidance on the principles for comparing trade marks to determine likelihood of deception or confusion, emphasizing: (1) the importance of dominant and distinctive features in marks; (2) the exclusion from comparison of matter with no trade mark significance; (3) the application of the notional customer test; and (4) the interdependence between similarity of marks and similarity of goods. The case illustrates the application of ss 10(12), 10(14), and 10(17) of the Trade Marks Act 194 of 1993 in expungement proceedings. It demonstrates the protection afforded to invented words as trade marks and confirms that marks comprising such invented words have inherent distinctiveness. The judgment also reinforces the British Sugar factors for assessing similarity of goods in trade mark law.