Cairns Limited v Netrade Marketing (Pvt) Ltd

The applicant, Cairns Limited, sued the respondent, Netrade Marketing (Pvt) Ltd, seeking a final interdict to restrain the respondent from infringing its registered trade mark Number 1479/95 in class 29 "SUN" (a word and device mark registered on 10 October 1995 in respect of jams). The applicant's trade mark consisted of a design: a rectangular bar merging into an inverted triangular funnel with various fruits at the tip, the word "SUN" in capital letters, and a picture of a sun below the letter "U". Registration was subject to a condition that it gave no right to exclusive use of the device of various fruits except in precise relation and association on the representation. The respondent had registered its own trade mark "Royal Sun" on 14 August 2014 in respect of meat, fish, poultry, game, preserved dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats. The respondent's registration was subject to the condition that it gave no right to exclusive use of the word "Royal" separately from the mark. The applicant claimed trade mark infringement and, alternatively, passing off.

• Whether the respondent's registered trade mark 'Royal Sun' infringed the applicant's registered trade mark Number 1479/95 'SUN' (word and device mark)
• Whether the respondent's trade mark was identical to or so nearly resembled the applicant's trade mark as to be likely to deceive or cause confusion under section 8(1) of the Trade Marks Act [Chapter 26:04]
• Whether the applicant had properly pleaded its case for trade mark infringement
• Whether the respondent had committed the tort of passing off by representing that its business or goods were those of the applicant or associated therewith
• Whether there was a reasonable likelihood that members of the public would be confused into believing the respondent's business was connected with the applicant's business

The application was dismissed with costs. All relief sought by the applicant, both for trade mark infringement and passing off, was refused.

The binding legal principles established are: (1) Where a trade mark is registered as a composite mark (word and device together) subject to conditions limiting exclusive use of certain elements, the proprietor cannot claim infringement based on one element of the mark in isolation from the whole registered representation. The trade mark protection extends only to the mark as registered. (2) For trade mark infringement under section 8(1) of the Trade Marks Act [Chapter 26:04], the allegedly infringing mark must be either (i) identical to the registered trade mark, or (ii) so nearly resembling it as to be likely to deceive or cause confusion, (iii) when used in relation to the same or similar goods or services, and (iv) the use must be unauthorized and in the course of trade. (3) In application proceedings, the cause of action must be fully set out in the founding affidavit, and new matters should not be raised in answering affidavits (applying Mangwiza v Zvimba N.O. & Anor 2000 (2) 489 SC 429). (4) For a successful passing off action, the plaintiff must prove: (a) relevant reputation and goodwill in the business; and (b) that the defendant's representations create a reasonable likelihood that members of the public may be confused into believing the defendant's business or goods are those of or connected with the plaintiff's business (applying F W Woolworth & Co (Zimbabwe) (Pvt) Ltd v The W Store & Another 1998 2 ZLR 402).

The court made several non-binding observations: (1) The court commented on what constitutes goodwill, describing it as "the totality of attributes that lure or entice clients or potential clients to support a particular business" and noting that the only component of goodwill that can be damaged by passing off is reputation. (2) The court observed that the purpose of registration of a trade mark is to give the registered owner exclusive right to use it concerning the goods for which it is registered, so that no other party should use the mark without consent (citing Zimbabwe Gelatine P/L v Cairns Foods P/L 2003 (1) ZLR 352). (3) The court noted the historical basis of passing off in Roman Dutch Law, which recognized that a person cannot, by imitating the name, marks or devices of another who has acquired reputation for his goods, "filch the former's trade" (citing Policansly Brothers Ltd v L & H Policansly 1935 AD 89 at 97). (4) The court commented that applicant's attempt to introduce evidence through a catalogue from Mr Richards in the answering affidavit was "an unacceptable introduction of evidence through the back door" that deprived the respondent of the opportunity to comment.

This case is significant in Zimbabwean intellectual property law as it clarifies important principles regarding trade mark infringement and passing off actions. It emphasizes that: (1) a registered trade mark must be understood as registered - where a mark consists of both word and device elements registered together subject to conditions, the proprietor cannot claim infringement of one element in isolation; (2) the requirement for proper pleading in application proceedings, particularly that the cause of action must be fully set out in founding papers and new matters cannot be raised in answering affidavits; (3) the test for trade mark infringement under section 8(1) of the Trade Marks Act requires either identity or such close resemblance as to be likely to deceive or cause confusion; (4) the elements required to prove passing off, including goodwill, reputation, and likelihood of confusion, must be properly particularized; and (5) that two parties can hold registered trade marks containing common elements (in this case both incorporating "Sun") without one necessarily infringing the other, where the overall marks are sufficiently distinguishable.