Roodezandt Ko-operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd & another

Roodezandt Ko-operatiewe Wynmakery Ltd (appellant) registered the trademark 'Robertson Hills' on 25 February 2008 in class 33 for alcoholic beverages, except beer. Robertson Winery (Pty) Ltd (first respondent) owned three registered trademarks containing the word 'Robertson', all in class 33 pertaining to wine: (1) 'Robertson Winery' (registered 1997), a composite label; (2) 'Robertson Vineyards' (registered 2002), a word mark with a disclaimer regarding the geographical name 'Robertson'; and (3) 'Robertsoner' (registered 2004). Robertson Winery had been producing and distributing wines under the Robertson Winery label since 1941, approximately 56 years before its first trademark registration. The Winery demonstrated extensive use, sales growth (from 197,878 cases in 2000 to 1,068,740 cases in 2010), and substantial advertising, establishing significant acquired reputation in the 'Robertson Winery' mark. Robertson Winery brought an application in the North Gauteng High Court for removal of the 'Robertson Hills' trademark in terms of s 24 of the Trademarks Act 194 of 1993.

• Whether the registration of the 'Robertson Hills' trademark was wrongly made under s 24 of the Trademarks Act 194 of 1993
• Whether the 'Robertson Hills' mark is so similar to Robertson Winery's marks containing 'Robertson' that it is likely to deceive or cause confusion as contemplated by s 10(12) and 10(14) of the Trademarks Act
• Whether a geographical name such as 'Robertson' can acquire distinctiveness as a trademark in relation to wine
• The relationship between trademark rights and the wine of origin scheme under the Liquor Products Act 60 of 1989
• Whether rectification of the register by removal of a trademark should be retrospective to the date of registration or from the date of application for removal

The appeal was dismissed with costs. The high court order was confirmed with one amendment: Paragraph 2 was amended to provide that the removal of the registration is made in terms of s 24 of the Trademarks Act and deemed to be with effect from the date of application for its removal on 19 January 2012 (rather than from the date of registration). The Registrar of Trademarks was ordered to rectify the register forthwith by removing the 'Robertson Hills' trademark in class 33.

The binding legal principles established are: (1) Under s 24 of the Trademarks Act 194 of 1993, rectification of the register by removal of 'an entry wrongly made' can rely on any grounds under s 10 that would have justified opposition to registration, including likelihood of deception or confusion under s 10(12) and 10(14). (2) A geographical name can acquire trademark distinctiveness through exclusive, long-term use in relation to particular goods, even though it remains a geographical designation. (3) Use of a geographical name as a badge of origin for the producer (trademark use) is distinct from use as an indication of geographical origin under the wine of origin scheme; the former constitutes trademark use that can infringe existing marks. (4) When assessing likelihood of confusion between marks, the dominant component of composite marks is critical, and non-distinctive suffixes do not prevent confusion where the dominant element is similar or identical. (5) The Oudekraal principle applies to trademark registrations: rectification by removal of a trademark under s 24 should be effective from the date of application for removal, not retrospectively from the date of registration, as the registration must be accepted as valid until formally challenged.

The court made several notable obiter observations: (1) Brand JA noted the dangers of judges conducting close comparison of trademarks in the courtroom with advantages of time and scrutiny not available to ordinary consumers, emphasizing the need to 'transport ourselves, notionally, from the court-room or the study, to the market place' when assessing likelihood of confusion (quoting Laboratoire Lachartre SA v Armour-Dial Incorporated). (2) The court observed that the Windhoek beer example (a geographical name acquiring distinctiveness as a trademark) illustrates the principle that geographical names can function as trademarks. (3) The court noted potential unfairness that could result from making removal retrospective to the date of registration, particularly for proprietors who had used their marks for lengthy periods in reliance on the registration's validity. (4) The court acknowledged that in this particular case the retrospectivity issue 'does not seem to matter' because Roodezandt had not yet used its registered mark, but addressed the principle to provide guidance for future cases. (5) The court observed that Roodezandt's denials of the Winery's allegations regarding reputation and use were 'self-evidently bald' and that Roodezandt 'plainly could proffer no evidence to contradict' the Winery's contentions.

This case is significant in South African trademark law for several reasons: (1) It clarifies that geographical names can acquire distinctiveness as trademarks through exclusive, long-term use by a single producer; (2) It establishes the important distinction between trademark rights (indicating producer origin) and the wine of origin scheme under the Liquor Products Act (indicating geographical origin of grapes); (3) It applies established principles for assessing likelihood of confusion, particularly the importance of dominant components in composite marks; (4) Most significantly, it introduces the Oudekraal principle from administrative law into trademark law, establishing that rectification of the register by removal of a trademark should be effective from the date of the application for removal rather than retrospectively from the date of registration, protecting those who have relied on the validity of the registration. The case reinforces that extensive use and acquired reputation are critical factors in trademark protection, even for marks incorporating geographical terms.