Cairns Foods Limited v Netrade Marketing (Pvt) Ltd

The appellant (Cairns Foods Limited) and respondent (Netrade Marketing (Pvt) Ltd) are both Zimbabwean companies producing and marketing food products, particularly fruit jam. On 10 October 1995, the appellant registered the word "SUN" with a device of various fruits as its trademark for fruit jam under Class 29, Trade Mark No. 1479/95. The registration certificate stated that registration gave no right to exclusive use of the device of various fruits except in the precise relation and association on the representation. On 9 March 2011, the respondent registered its own trademark consisting of the words "ROYAL SUN" under Class 29, Trade Mark No. 288/2011, for meat, fish, poultry, game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats. The registration stated there was no exclusive right to the word "ROYAL" separately from the mark. In December 2016, the respondent began marketing fruit jam using a logo containing its registered trademark "Royal Sun" together with a variety of fruits and the words "Mixed Fruit Jam" at the bottom. A wholesaler that distributed the appellant's sun jam mistakenly placed the respondent's royal sun jam in its catalogue promoting the appellant's sun jam. The appellant brought an application in the High Court alleging trademark infringement and passing off.

• Whether the respondent infringed the appellant's registered trademark by using a logo combining 'ROYAL SUN' with a device of various fruits and the words 'Mixed Fruit Jam'
• Whether the court a quo erred in finding that the appellant had only registered a representation/device and not the word 'SUN'
• Whether the proper test for trademark infringement was applied by the court a quo
• Whether the respondent's use of its mark constituted passing off
• Whether the appellant established the requisite reputation and goodwill for a passing off action
• Whether a registered trademark can be interdicted or whether expungement is the only remedy

The appeal succeeded with costs. The High Court judgment was set aside and substituted with an order: (a) interdicting the respondent from infringing the appellant's Trade Mark No. 1479/95 by using a logo combining "ROYAL SUN" with fruits and "Mixed Fruit Jam" or similar words for jam products; (b) interdicting use of any mark, trade name, label or get-up likely to result in its jam products being taken as the appellant's without clear distinction; (c) interdicting passing off of jam products; (d) ordering delivery to the appellant or Sheriff for destruction of all packaging, labels, posters, wrapping, advertising matter and materials bearing "ROYAL SUN MIXED FRUIT JAM" resembling the appellant's registered trademark; and (e) costs against the respondent.

A registered trademark consists of all elements shown on the certificate of registration, including words, devices and representations, subject to any disclaimers. The test for trademark infringement under s 8(1) of the Trade Marks Act requires assessment of the impact the allegedly infringing mark would make on the average customer of ordinary intelligence and proper eyesight buying with ordinary caution, viewing marks as encountered in the marketplace and considering dominant features and general impressions rather than detailed photographic comparison. Use of a registered trademark in combination with other unregistered elements (such as devices or words) can constitute infringement of another's registered trademark where such use creates a mark that so nearly resembles the protected mark as to be likely to deceive or cause confusion in relation to the same class of goods. The proprietor of a registered trademark is entitled to remedies under s 9A(2) including interdict and delivery-up/destruction of infringing materials, even where the infringer has its own registered mark, provided the infringement is established in respect of specific goods (here limited to jam products and the specific logo combination used).

The Court noted that while no application for expungement of the respondent's registered trademark "ROYAL SUN" from the register was made, the respondent's use of that trademark in respect of other products (beyond jam) was not challenged and could continue. The judgment emphasized that deception or confusion is a matter of first impression, not the outcome of detailed study or forensic examination. MATHONSI JA observed that "the respondent cannot in all fairness suggest that the use of the words 'Royal Sun' in conjunction with the various fruits and the words 'Mixed fruit jam' was a mere coincidence," suggesting the Court took a dim view of the respondent's explanation. The Court noted that the word "Sun" has nothing inherently to do with fruit jam, implying it was an arbitrary mark deserving of broad protection. The judgment indicates that courts should be alert to traders attempting to ride on the goodwill and reputation established by others over lengthy periods through use of confusingly similar marks.

This case is significant in Zimbabwean intellectual property law for establishing important principles regarding trademark infringement. It clarifies that a registered trademark includes all elements shown on the certificate of registration, not merely devices/representations. It reaffirms the proper test for infringement - focusing on the impression made on the average customer in normal marketplace conditions, considering dominant features and general impressions, rather than detailed side-by-side comparison. The judgment demonstrates that use of a registered trademark in combination with other unregistered elements can constitute infringement of another's trademark where it creates likelihood of deception or confusion. It confirms that both interdict and delivery-up remedies are available under s 9A(2) of the Trade Marks Act for infringement, even where the infringing party has its own registered mark. The case illustrates the protection afforded to proprietors who have built goodwill and reputation over lengthy periods, and the court's willingness to intervene against deceptive trading practices.