Golden Fried Chicken (Pty) Ltd v Vlachos and Another

The appellant, Golden Fried Chicken (Pty) Ltd, trades as 'Chicken Licken' through food outlets, having begun trading in 1981. It registered the words 'Soul' and 'Soul Food' as trade marks under classes 29, 30, 35 and 43 of the Trade Marks Act 194 of 1993. The first respondent, Mr Dino Vlachos, is the guiding mind behind the second respondent, Soul Souvlaki (Pty) Ltd, which has traded in Greek food from two outlets under the name 'Soul Souvlaki' since 2012. The second respondent applied to register the trade mark 'Soul Souvlaki' in classes 35 and 43. The appellant regarded the use by the respondents of 'Soul Souvlaki' as infringing its registered 'Soul' mark and approached the Gauteng Division of the High Court, Johannesburg to interdict the respondents from using that mark. This was met by a counter-application to remove the appellant's trade marks from the register on grounds of non-distinctiveness. The high court dismissed both the application and counter-application with costs. The appellant appealed to the Supreme Court of Appeal, limiting its relief to the registration in class 43 (restaurant and food services) and abandoning reliance on the 'Soul Food' mark.

• Whether the use of 'Soul Souvlaki' by the respondents constitutes infringement of the appellant's registered trade mark 'Soul' under section 34(1)(a) of the Trade Marks Act 194 of 1993
• Whether the marks 'Soul' and 'Soul Souvlaki' are identical or so nearly resembling as to be likely to deceive or cause confusion
• What is the proper test for determining likelihood of deception or confusion in trade mark infringement proceedings
• Whether the word 'Soul' as a common word in everyday use affects the scope of protection afforded to the registered mark

The appeal was dismissed with costs.

In determining trade mark infringement under section 34(1)(a) of the Trade Marks Act 194 of 1993, marks are not identical where one mark contains an additional distinctive word element that cannot be ignored when the marks are compared as a whole. The test for likelihood of deception or confusion requires consideration of whether the average customer would probably be deceived or confused by the similarity of the marks, viewed as a whole and considering their dominant features. When a registered trade mark consists of a common word in everyday use (even if distinctive and validly registered), and the allegedly infringing mark combines that common word with another significant and distinctive word element, the additional word may sufficiently distinguish the marks such that confusion or deception is unlikely. The notional use test applies, comparing the notional use by the registered owner of the mark across the full scope of registered services with the actual use by the alleged infringer. Where the word 'Souvlaki' is at least as significant as the word 'Soul' in the mark 'Soul Souvlaki', it sufficiently distinguishes the respondents' services from a mark consisting only of 'Soul', making deception or confusion unlikely.

The Court noted that evidence of pending applications for registration of marks containing 'Soul' was not determinative in this case, distinguishing the situation from cases like Distillers, Dinnermates, and Bata where numerous registered marks already existed on the register containing the common element. The Court observed that the frequency of use of 'Soul' in company names in the marketplace might be relevant on some level, but it was not necessary to decide this point given the Court's view on the direct comparison between the marks. The Court commented that the word 'souvlaki', while appearing in dictionaries and originating from modern Greek, does not necessarily function as descriptive without evidence of widespread knowledge of that word among South African restaurant customers, and that it was not used descriptively in the respondents' mark since they offered a range of Greek dishes beyond souvlaki. The Court noted that the high court judge had unfortunately erred in several respects by conflating trade mark and passing off principles and considering irrelevant issues, but the correct result was nonetheless reached. The Court emphasized that a trade mark cannot be interpreted to give greater protection than necessary for its function as a badge of origin, reflecting the monopolistic nature of trade mark rights.

This case clarifies the test for trade mark infringement under section 34(1)(a) of the Trade Marks Act 194 of 1993, particularly regarding the likelihood of deception or confusion when comparing registered marks with alleged infringing marks. It reinforces the principle that common words in everyday use, even when registered as distinctive trade marks, are entitled to narrower protection, and that marks must be compared as a whole rather than focusing solely on common elements. The case applies and develops the jurisprudence on the notional use test, confirming that the scope of protection depends on whether the average customer would perceive a material link between the services offered under the competing marks. It distinguishes cases involving non-descriptive invented words (like PepsiCo v Atlantic) from cases involving common words combined with other distinctive elements (like Bata and Lucky Star). The judgment emphasizes that trade marks function as badges of origin and should not be interpreted to give greater protection than necessary for that purpose, consistent with the monopolistic nature of trade mark rights.