Mettenheimer and another v Zonquasdrif Vineyards CC and others
 1 All SA 645 (SCA)
SUPREME COURT OF APPEAL
19 November 2013
FDJ BRAND, XM PETSE, R PILLAY, LV THERON JJA and PA MEYER AJA
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property Trade marks Trade mark infringement Trade Marks Act 194 of 1993 Section 34(1)(b)
Whether similar mark, used in the course of trade with reference to wine grapes infringed trade mark registered in
respect of wine Whether goods so similar as to give rise to the likelihood of deception or confusion as contemplated in
section 34(1)(b) of the Trade Marks Act Court finding no likelihood of confusion, and therefore no infringement.
The first appellant was the registered owner of a trademark in respect of alcoholic beverages, and a shareholder in
the second appellant. The first respondent (referred to in the judgment as "the respondent") was a close
corporation conducting its farming business on a farm situated about one kilometre from the second appellant's
farm where it grew wine grapes which it sold under its registered name.
The appellants brought an application against the respondent in the High Court, seeking an interdict in terms of
section 34(1)(b) of the Trade Marks Act 194 of 1993, preventing the respondent from infringing its trade mark by,
inter alia, selling wine grapes under that name. They also sought an order declaring that the respondent's
registered name was calculated to cause damage to the appellants and ordering the respondent, to change its
name in terms of section 20(2)(b) of the Close Corporations Act 69 of 1984.
In response, the respondent brought a counterapplication for the removal of the appellants' trade mark from the
register on the basis that it exclusively served to designate the geographical area of the goods as envisaged by
section 10(2)(b) of the Trade Marks Act.
Finding the main application wanting on the merits, the High Court refused the relief sought, and dismissed the
counterapplication. That led to the present appeal.
Held The interdict application was based squarely on section 34(1)(b) of the Trade Marks Act. The section provides
that the rights acquired by registration of a trade mark shall be infringed by the unauthorised use of a mark which is
identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so
similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the
likelihood of deception or confusion. The respondent clearly used its impugned mark in the course of trade and it
was not suggested that it had been authorised by the appellants to do so. That limited the enquiry to the issue of
confusing similarity. Section 34(1)(b) contemplates two elements, namely, a mark identical or similar
Page 646 of 645 (SCA)
to the trade mark used in relation, to goods which are so similar to those in the class for which it had been
registered, that it gives rise to a likelihood of deception or confusion.
A comparison of the two marks satisfied the Court that they were virtually identical. Therefore, the similarity of the
goods had to be examined. It had to be determined whether, having regard to the sameness of the two marks, the
similarity between the goods in respect of which the appellants' mark was registered (wine) and the goods in which
respondent traded (wine grapes) was such that confusion or deception was the probable result. Relevant
considerations include the uses of the respective goods; the users of the respective goods; the physical nature of
the goods; and the respective trade channels through which the goods reach the market.
A trade mark serves as a badge of origin, in the sense that it identifies and guarantees the trade origin of the
goods to which it applies. In the wine industry, a trade mark in respect of wine serves to guarantee the origin of
the wine only. The badge of origin in respect of the grapes from which that wine is made is provided by the wine of
origin scheme which is governed by regulations promulgated in terms of section 14 of the Liquor Products Act 60 of
1989. There was thus no substance in the appellants' contention that they had established a likelihood of confusion
with regard to the origin of their wine and the respondent's grapes.
The appeal was dismissed with costs.
For Intellectual property see:
LAWSA Second Edition Replacement Volume Vol 29
Burrell TD Burrells South African Patent and Design Law (3ed) Durban LexisNexis 1999