Open Horizon Ltd v Carnilinx (Pty) Ltd

Open Horizon Ltd, the appellant, is the registered proprietor of several PACIFIC trade marks in class 34 covering tobacco and cigarette products, with registrations dating back to 2003. Carnilinx (Pty) Ltd, the respondent, used and sought to register various ATLANTIC trade marks (including ATLANTIC, ATLANTIC WAVE, ATLANTIC MENTHOL and others) also in class 34. Open Horizon applied to the Gauteng Division of the High Court for an interdict restraining Carnilinx from using the ATLANTIC marks, alleging trade mark infringement under s 34(1)(a) of the Trade Marks Act 194 of 1993 and, later by amendment, unlawful competition. The High Court dismissed the application. Open Horizon appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs, including the costs of two counsel.

The judgment reinforces the principle that South African trade mark law does not protect abstract ideas or concepts and that conceptual similarity, without visual or phonetic resemblance, will rarely suffice for infringement. It affirms the objective comparison approach under s 34(1)(a) and cautions against using unlawful competition as a residual or fallback cause of action to avoid the established requirements of trade mark infringement or passing-off.