Casadobe Props 60 (Pty) Ltd v Fratelli Martini Secondo Luigi SpA

Casadobe Props 60 (Pty) Ltd (Casadobe) is a South African company that owns and operates the Canto Wines boutique wine estate in Durbanville, Western Cape, using the unregistered trade mark CANTO to market its wine. Fratelli Martini Secondo Luigi SpA (Fratelli) is an Italian company and the registered proprietor of South African trade mark registration number 2012/08843 CANTI in class 33 for wines and sparkling wines. In April 2015, Casadobe conducted a trade mark search for CANTO in relation to wine, which revealed various cases in class 33 but Fratelli's CANTI registration was not cited by the Registrar of Trade Marks. On 24 April 2020, Casadobe proceeded with its application for registration of the mark CANTO in various classes including class 33 under registration number 2015/10717. The Registrar only cited one potentially conflicting mark (registration number 2007/00570) and did not flag CANTI as problematic. The trade mark search revealed that numerous other trade mark applications incorporating CANT co-existed on the registry, including CANTANA, CANTON, CANTI and CLUB DE CANTINEROS. Fratelli opposed Casadobe's use of the CANTO mark and applied to the Western Cape Division of the High Court for an interdict restraining Casadobe from infringing its registered CANTI trade mark.

• Whether the trade marks CANTO and CANTI are confusingly or deceptively similar as contemplated in section 10(14) of the Trade Marks Act 194 of 1993
• Whether the use of CANTO in relation to wines and sparkling wines would be likely to deceive or cause confusion with the registered mark CANTI
• What is the appropriate test for determining likelihood of confusion or deception in trade mark infringement proceedings
• Whether the visual, aural and conceptual similarities between CANTO and CANTI are sufficient to establish a likelihood of confusion

The appeal was upheld with costs, including the costs of two counsel. The order of the high court was set aside and replaced with an order dismissing the application with costs.

The binding legal principles established by this judgment are: (1) In determining whether trade marks are confusingly or deceptively similar under section 10(14) of the Trade Marks Act 194 of 1993, the court must conduct a value judgment considering visual, aural and conceptual similarities based on overall impression and dominant features, not through unduly peering at the marks to find similarities or differences. (2) A single letter difference in trade marks can make an enormous difference and be sufficient to distinguish marks, particularly where that letter determines different visual cues, tones and conceptual meanings. (3) The characteristics of the relevant consumer market must be taken into account - consumers of wines and sparkling wines are discerning and exercise greater care and circumspection in making purchases, reducing the likelihood of confusion. (4) The manner in which goods are displayed and marketed (such as imported wines in foreign sections versus local wines in domestic sections) is relevant to assessing likelihood of confusion. (5) The comparison in trade mark infringement proceedings must be between the registered mark as it may be notionally used within the ambit of registration and the alleged infringing mark as actually used. (6) Visual, aural and conceptual aspects must be assessed comprehensively rather than in isolation.

The Court made several non-binding observations: (1) The Court noted that no evidence of consumer perception with respect to geographical origin of wine had been presented, though this would have been relevant. (2) The Court observed that the Registrar of Trade Marks did not flag CANTI as being potentially confusing when examining CANTO's application, though this was not determinative. (3) The Court noted that numerous other trade marks incorporating the letters CANT co-exist on the registry (CANTANA, CANTON, CANTI, CLUB DE CANTINEROS, etc.), suggesting the element CANT is not distinctively associated with any single proprietor, though this point was not fully developed in the ratio. (4) The Court referenced the scenario of ordering in crowded bars or restaurants where noise might cause confusion, but ultimately did not rely on this as it found the discerning nature of wine consumers to be more significant. (5) The Court referred to Ezra Pound's long poem 'The Cantos' as an example of how CANTO has meaning in English for persons with literary training, though this was not central to the decision.

This case provides important clarification on the application of section 10(14) of the Trade Marks Act 194 of 1993 regarding confusingly or deceptively similar trade marks. It reinforces the principle that even a single letter difference can be sufficient to distinguish trade marks, particularly when that letter creates different visual cues, tones and conceptual meanings. The judgment emphasizes the importance of considering the characteristics of the relevant consumer market - in this case, that wine consumers are discerning and exercise care in their purchases. The case also demonstrates the relevance of how goods are displayed and marketed (e.g., local vs imported wines in different sections) in assessing likelihood of confusion. It contributes to South African jurisprudence on trade mark infringement by applying and developing principles from leading cases such as Plascon-Evans, Cowbell, Orange Brand Services, and more recent decisions. The judgment provides guidance on the proper approach to assessing visual, aural and conceptual similarity in a comprehensive rather than isolated manner.