sense and is not simply intended to protect third parties who use the word "Break" descriptively in
association with chocolate confectionary as contended for by Nestlé. If this was so, the provisions of
section 34(2)(b) of the Act would be rendered superfluous. This section permits the descriptive use of features
which have not been disclaimed. In this regard, I agree with the view expressed by the court a quo, relying
upon the authors Webster and Page,29 that the effect of a disclaimer is that the trade mark owner
recognises that that which is disclaimed, is not in itself distinctive of the origin of the goods or services in
question and that there
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will be no infringement of the trade mark, where the only similarity between the trade mark and the mark
complained of consists of a similarity to those features which have been disclaimed.
[59] Nestlé does not claim exclusivity in the word "Break" in a trade mark sense. What is relied upon is the
contention that the use of the word "Break" as a trade mark is confusingly or deceptively similar to Nestlé's
trade mark "Have a Break, Have a Kit Kat". Nestlé contends that Iffco has appropriated a dominant and
essential element of their trade mark, namely the word "Break". I disagree. In order to find that a consumer
would be confused or deceived into thinking that the word "Break" indicated that the origin of Iffco's product
was that of Nestlé, the highly distinctive name of Nestlé's product "Kit Kat" would have to be ignored. It is
clear that the likelihood of confusion must be a real probability, not a remote possibility. 30 In my view, the
requisite likelihood of confusion amongst consumers confronted by the respective trade marks has not been
established by Nestlé. Nestlé's appeal against this finding by the court a quo, accordingly, fails.
[60] Nestlé also relies upon the provisions of section 34(1)(c) of the Act to restrain the use by Iffco of the Break
trade mark. As pointed out the object of this section is to avoid "blurring" and "tarnishment" of the trade
mark. It is clear that the mark of Nestlé relied upon, namely "Have a Break, Have a Kit Kat" is wellknown and
has been used for a considerable period of time in South Africa. As pointed out it is not necessary for Nestlé to
prove the likelihood of confusion among customers when viewing the respective trade marks. Nestlé contends
that the harm to the selling power in the Break trade mark is selfevident, because it will now be precluded
from relying upon the "Have a Break" concept in its advertising. It argues that the value of the Break trade
marks, which were devised and used as advertising slogans, resides in their advertising value. It is alleged
that Nestlé's promotion of its Kit Kat product using the Break trade marks, will have the undesirable effect of
promoting Iffco's Break products.
[61] As pointed out, the court must be satisfied by evidence of actual detriment, or of unfair advantage. However,
this may be selfevident from the primary facts. In my view, the mere fact that the concept of "Have a Break,
Have a Kit Kat" has become wellknown in connection with the Nestlé's Kit Kat chocolate bar, does not mean
that the detriment or unfair advantage alleged by Nestlé in the use by Iffco of the trade mark Break is self
evident. This is a case which required evidence to prove the "blurring" of Nestlé's word mark in the respects
alleged. Nestlé's appeal against the finding of the court a quo must, accordingly, fail.
Nestlé's application to expunge Iffco's Quanta Break and Tiffany Break trade marks
[62] In the light of the conclusion that Iffco's Quanta Break and Tiffany Break trade marks are not confusingly
similar to Nestlé's trade marks and their
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use does not lead to the dilution of Nestlé's Break trade marks by blurring, there is no basis for ordering that
Iffco's trade marks be expunged from the register. Nestlé's appeal against the court a quo's refusal to grant
such an order, accordingly, fails.
Nestlé's claim in terms of section 35(3) of the Act and for passing off
[63] Counsel for Iffco conceded that if Nestlé was successful in obtaining interdictory relief either in terms of
section 34(1)(a) or (c) of the Act, there would be no need to deal with these claims.
Iffco's special defences based upon acquiescence, waiver and estoppel
[64] A great deal of evidence was filed by Nestlé and Iffco dealing with the defences raised by Iffco of tacit waiver
(through silence or a failure to act in the face of a legal duty to do so) and acquiescence, on the part of
Nestlé. Iffco also raised the defence of estoppel based upon an implied representation made by Nestlé as a
result of a failure to act in preventing Iffco from continuing to use the contested trade marks.
[65] The basis for these defences is the allegation by Iffco that Nestlé was aware of Iffco's use of the Quanta
Break and Tiffany Break word marks, as well as the 4��finger wafer shape trade mark from 2002, but only took
action in June 2011.
[66] At the hearing Counsel for Iffco quite correctly abandoned reliance upon the defence of acquiescence, which
does not form part of our law.31 In addition, Counsel stated he would not address further argument on these
defences and relied solely upon the submissions made in his heads of argument.
[67] I find it unnecessary to deal with the evidence in detail because it is clear that Iffco received demands from
Nestlé on several occasions to cease the sale of its Break chocolate bar in South Africa and elsewhere in the
world. Although it is clear that no demands were made during the period 2004 to 2008 for Iffco to cease
selling their Break chocolate bar in South Africa, the delay is explained by Nestlé on the basis that it was
awaiting registration of the finger wafer shape trade marks in South Africa before taking action.