Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others

The appellant, Lucky Star Ltd, is the proprietor of several registered trade marks incorporating the words “Lucky Star” in relation to fish and fish products and related retail services. It markets canned fish products under the Lucky Star brand. The respondents operate a number of fish and chips restaurants in Cape Town under the names and trade marks “Lucky Fish”, “Lucky Fish and Chips” and similar variants, and one respondent trades under the company name Lucky Brands (Pty) Ltd. Lucky Star alleged that the respondents’ use of these marks and company names infringed its registered trade marks in terms of s 34(1)(a), (b) and (c) of the Trade Marks Act 194 of 1993, and further contravened s 11(2) of the Companies Act 71 of 2008 by being confusingly similar to its trade marks and company names and falsely implying an association. The Western Cape High Court dismissed the application, and Lucky Star appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs.

This case is significant for reaffirming key principles of South African trade mark infringement law, particularly the importance of comparing marks as a whole, the limited significance of common ordinary words, and the doctrine of notional use of registered trade marks. It also clarifies the interdependence between similarity of marks and similarity of goods under s 34(1)(b), and confirms a restrained approach to dilution claims under s 34(1)(c). In addition, it provides guidance on the application of s 11(2) of the Companies Act in the context of alleged trade mark-related name disputes.