Distell Limited v KZN Wines and Spirits CC

Distell Limited, a major South African producer of wines and spirits, is the proprietor of two registered trade marks in class 33 for whisky, namely the word marks KNIGHT’S GOLD and KNIGHTS. KZN Wines and Spirits CC began importing and distributing a Scotch whisky under the mark BLACK KNIGHT in South Africa from 2002, selling it through Midmar Liquors, which also sold Distell’s KNIGHTS whisky. In 2011 Distell became aware of the BLACK KNIGHT product and applied to the KwaZulu-Natal High Court for an interdict, alleging that the use of BLACK KNIGHT infringed its registered trade marks under section 34(1)(a) of the Trade Marks Act 194 of 1993 and amounted to passing off. The High Court dismissed the application, finding no likelihood of confusion or deception, and Distell appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs, including the costs of two counsel where employed. The respondent was ordered to pay the costs occasioned by the earlier postponement of the appeal.

The case is significant for South African trade mark law as it reaffirms and applies the 'global appreciation' test for likelihood of confusion under section 34(1)(a) of the Trade Marks Act. It illustrates the importance of considering all elements of a mark, including descriptive or adjectival components, and confirms that prolonged concurrent use without evidence of actual confusion may strongly indicate the absence of a likelihood of confusion. The judgment also clarifies the close relationship between infringement and passing off analyses.