Dinnermates (Tvl) CC v Piquante Brands International (Pty) Ltd and Another

The appellant, Dinnermates (Tvl) CC, manufactures and sells food products including processed meat and cooked pepper products. In 2010, it applied to register the trade mark "PEPPAMATES" together with a pepper device in classes 29, 30 and 31. The first respondent, Piquante Brands International (Pty) Ltd, was the registered owner of various trade marks incorporating the mark "PEPPADEW", sometimes alone and sometimes with a pepper and pepper stalk device, registered in classes 29 and 30. The second respondent was a licensee of the first respondent for use of these marks. The respondents opposed the appellant's registration under sections 10(14) and 10(17) of the Trade Marks Act 194 of 1993 before the Registrar of Trade Marks, who transferred the matter to the Gauteng Division of the High Court. The goods in respect of which registration was sought were identical or fell within the same category. Both marks contained the prefix "PEPPA" and featured pepper devices, but the suffixes were different ("DEW" vs "MATES") and the visual presentation differed significantly.

• Whether the appellant's trade mark 'PEPPAMATES' was so similar to the respondents' registered trade mark 'PEPPADEW' that its use would be likely to deceive or cause confusion in terms of section 10(14) of the Trade Marks Act 194 of 1993
• Whether the respondents could claim a monopoly in the prefix 'PEPPA' as a distinctive element
• Whether the common element 'PEPPA' and the use of pepper devices in both marks created sufficient similarity to warrant refusal of registration
• What test should be applied to determine likelihood of confusion or deception between trade marks

The appeal was upheld with costs, including costs consequent upon the employment of two counsel. The order of the full court was set aside and replaced with an order that: (a) the appeal is upheld with costs; (b) the opposition to the registration of trade mark applications 2010/09722 and 2010/09721 is dismissed; and (c) the trade marks are directed to proceed to registration.

A trade mark applicant cannot be refused registration under section 10(14) of the Trade Marks Act 194 of 1993 merely because their mark shares a descriptive prefix or common element with a registered mark, where: (1) the shared element is descriptive or an adaptation of a common word relating to the goods in question; (2) the shared element is used by multiple other traders and does not indicate exclusive origin; (3) the distinctive elements (such as suffixes) are wholly different; and (4) when the marks are compared as a whole, considering their visual, phonetic and conceptual presentation, a notional purchaser would be able to distinguish between them. The test for likelihood of confusion must consider the marks as wholes, including their dominant features and overall impression, not merely isolated common elements. A proprietor of a registered trade mark cannot claim a monopoly over descriptive elements derived from common words in the English language, particularly where those elements directly describe or relate to the nature of the goods.

The court observed that the coexistence of marks like Coca-Cola and Pepsi-Cola demonstrates that similar marks can exist side by side without causing confusion. The court also noted that granting a monopoly in the word 'PEPPA' would logically extend to prohibiting the use of 'pepper' as a prefix in common words like pepperoni, pepperpot, pepperwort, pepper sauce, and peppermint, which would be an untenable result. The court remarked that one cannot monopolize 'the commons of the English language'. The court emphasized the need for judges to explain their reasoning when making value judgments about likelihood of confusion, not merely stating their impression without justification.

This case clarifies important principles in South African trade mark law regarding opposition proceedings under section 10(14) of the Trade Marks Act. It establishes that descriptive or adaptive elements derived from common words (in this case, 'PEPPA' from 'pepper') cannot be monopolized, particularly where the products to which they relate reinforce their descriptive nature. The judgment emphasizes the importance of comparing trade marks as a whole, considering visual, phonetic and conceptual differences, rather than focusing narrowly on common elements. It confirms that multiple trade marks can co-exist with similar prefixes where the overall impression, distinctive elements, and suffixes differ sufficiently. The case provides guidance on the value judgment required in assessing likelihood of confusion from the perspective of the average consumer with imperfect recollection, and reinforces that one party cannot claim exclusive rights to common linguistic elements that describe the goods themselves. The decision is particularly relevant for businesses seeking to register trade marks in competitive markets where descriptive elements may be shared across multiple marks.