Lucky Star Limited v Lucky Brands (Pty) Ltd

The appellant, Lucky Star Limited (formerly Oceana Brands Limited), sold canned fish under the registered trade mark "Lucky Star". The respondents operated several fish and chips restaurants in Cape Town under the trade marks "Lucky Fish", "Lucky Fish and Chips" and "Lucky Fish & Chips". The appellant claimed trade mark infringement under section 34(1)(a), (b) and (c) of the Trade Marks Act 194 of 1993, seeking an interdict restraining the respondents from using marks similar to Lucky Star. The appellant also sought relief under section 11(2) of the Companies Act 71 of 2008, claiming that the first respondent's company name "Lucky Brands (Pty) Ltd" was confusingly similar to the appellant's registered trade marks and company names. Similar relief was sought against the 9th, 11th, 13th, 15th and 16th respondents. The application was dismissed in the Western Cape Division of the High Court by Rogers J.

• Whether the respondents' use of marks containing the word 'Lucky' constituted infringement under section 34(1)(a) of the Trade Marks Act - whether the marks were so nearly resembling as to be likely to deceive or cause confusion
• Whether the respondents' marks infringed the appellant's trade marks under section 34(1)(b) - whether marks were identical or similar in relation to similar goods/services giving rise to likelihood of deception or confusion
• Whether the respondents' marks infringed under section 34(1)(c) - whether marks were identical or similar to a well-known trade mark and would take unfair advantage or be detrimental to its distinctive character
• Whether the first respondent's company name 'Lucky Brands (Pty) Ltd' contravened section 11(2) of the Companies Act by being confusingly similar to the appellant's trade marks and company names
• Whether the names of the 9th, 11th, 13th, 15th and 16th respondents containing 'Lucky Fish' contravened section 11(2) of the Companies Act

The appeal was dismissed with costs.

For trade mark infringement under section 34(1)(a) of the Trade Marks Act 194 of 1993, the comparison must be between the registered trade mark and the allegedly infringing mark itself, without regard to extraneous features of packaging or get-up. The court must consider 'notional use' - all possible fair and normal applications of the mark within the ambit of the monopoly created by registration, not just actual historical use. When comparing marks, ordinary words in common use (such as 'Lucky') cannot lead to a conclusion that confusion would arise simply because they appear in combination with other words. The dominant features and overall impression of the marks must be considered. Where marks are sufficiently dissimilar to each other, no amount of similarity between the respective goods or services will suffice to establish infringement under section 34(1)(b). For section 34(1)(c), the word 'similar' requires 'a marked resemblance or likeness' and must not be given too wide an interpretation to avoid creating unacceptable monopolies that stultify freedom of trade. The same principles apply when considering whether company names contravene section 11(2) of the Companies Act 71 of 2008.

The court observed that to the extent the court a quo may have considered or been influenced by a comparison of the get-up of the appellant's canned pilchards product with the respondents' trade mark, it erred in this approach. The court noted that the distinctiveness of the word 'Fish' is not diminished simply because it also serves to describe the product sold - it remains distinctive even when used in the context of selling fish. The court commented that the alleged infringer cannot rely upon matter extraneous to the mark itself, which may have been used in conjunction with the mark, to negate the likelihood of deception or confusion. The court also noted an error in the court a quo considering the appellant's historical and current business operations to determine whether proposed use of the registered mark would constitute fair and normal notional use - what must be assumed is notional use within the ambit of the monopoly created by the terms of registration.

This case clarifies important principles in South African trade mark law regarding: (1) the methodology for comparing registered trade marks with allegedly infringing marks - requiring objective comparison of the marks themselves without reference to extraneous packaging or get-up; (2) the concept of 'notional use' in infringement proceedings - proprietors are entitled to protection for all fair and normal uses within the scope of registration, not just actual historical use; (3) the treatment of common descriptive words in composite marks - ordinary words like 'Lucky' carry less weight when marks are viewed as a whole, and descriptive words can remain distinctive even when describing the product; (4) the interdependence between similarity of marks and similarity of goods/services under section 34(1)(b); and (5) the application of section 11(2) of the Companies Act 71 of 2008 to company names allegedly similar to registered trade marks. The judgment demonstrates the limits of trade mark monopolies and protection of freedom of trade.