Trade mark expert Nicole Smalberger considers the ‘similar goods’ conundrum.

Wine and wine grapes are not confusingly similar. This was the view of the Supreme Court of Appeal in a trade mark case where the owner of a farm called Zonquasdrift had a trade mark registration for the mark Zonquasdrift covering wine; whereas the owner of another farm in the region sold wine grapes under its name, Zonquasdrif (no t).

The – to be, or not to be – of trade mark law is probably – similar, or not similar. This is a question pondered by trade mark practitioners daily because, typically, a trade mark will only be considered to conflict with, or infringe, a mark already registered if it is identical or similar to that mark and used or proposed to be used in relation to goods or services identical or similar to those for which the earlier mark is registered.

Our courts have, over the years, handed down a number of judgments dealing with the issue of similarity, not only in considering whether or not marks are confusingly similar, but also whether or not the goods and services for which the marks are used or intended to be used are similar. The latter consideration has, in recent years, resulted in some unexpected outcomes and assessing whether or not goods and/or services are similar has therefore become a rather tricky exercise.

The legal precedent that usually guides practitioners when facing the murky waters of similar goods assessments, is British Sugar PLC v James Robertson & Sons, a 1996 British case which sets out various factors to consider in assessing whether or not goods are similar. These factors include considering the respective uses of the goods; the respective users of the goods; the physical nature of the goods; the trade channels through which the goods reach the market; whether or not the goods are found on same or different shelves; whether or not the goods in issue are competitive, for example, whether the persons in the relevant trade consider the goods to fall in the same sector.

The Supreme Court of Appeal in the Zonquasdrif Vineyards matter, held that wine and grapes used for making wine are not so similar that the use of the (confusingly similar) marks, Zonquasdrif and Zonquasdrift, would result in confusion.

The view of many practitioners faced with the facts of the Zonquasdrif Vineyards case would probably have been the opposite to that of the court, namely, that wine and grapes used for making wine would indeed be similar goods. The basis for that assumption would be that consumers would assume that a wine bearing a mark virtually identical to that used in relation to wine grapes, has been made with those specific grapes, or that some sort of association exists between the wine producer and producer of the grapes.

The court, however, gave consideration to the fact that the natures of the goods in question differ. Wine is an alcoholic drink and grapes a foodstuff. The court also made the observation, which cannot be denied and is certainly a relevant one, that these goods reach the relevant interested consumers through different trade channels. Wine is of course sold directly to the public, whereas wine grapes are sold to the wine trade. These considerations are in line with the guidelines set out in the British Sugar PLC case.

Similarly, the European Union Intellectual Property Office, in the matter of Hundred Acre Wine Estate LLC v Emprise Associates LLP, was also required to assess the similarity of, inter alia, wine and grapes, and found, as in the local Zonquasdrif Vineyards case, that these goods are not similar. In this regard, the EUIPO held as follows:

The fact that some of the contested goods relate to grapes, which are an essential ingredient of the opponent’s wines, is not sufficient for a finding of similarity between these goods. The goods have different natures, different purposes and different methods of use. Moreover, they are not complementary or in competition with each other. Furthermore, they are sold through different distribution channels or in different sections of supermarkets, and they originate from different undertakings”.

Nevertheless, many practitioners are still not convinced by the court’s reasoning, or that of the EUIPO, and remain of the view that wine and grapes for making wine are indeed similar goods and that there is a likelihood that consumers and persons in the trade would be confused into thinking that these goods, bearing identical or similar marks, emanate from the same source.

More recently, in the matter of Tequila Cuervo SA de CV v Fabrication and Light Engineering CC, a full bench of the High Court in Pretoria gave consideration to the question of whether or not wine and tequila are similar goods (applied to the marks IL CORVO and CUERVO, respectively). On comparing these goods, many practitioners may again conclude that they are similar, given that both are alcoholic beverages and are generally sold in the same stores. The court found the opposite, however. In considering the goods, the court held that wine and tequila are different as they are produced by different chemical processes and, although possibly sold in the same stores, they are not sold in close proximity on shelves. The court also held that consumers are discerning when it comes to alcoholic beverages, and are unlikely to be confused between wine and tequila.

There have been differing decisions in various tribunals around the world regarding the similarity of wine and other alcoholic beverages. The United States Patent and Trademark Office Trademark Trial and Appeal Board found in the matter of Whiterock Distilleries Inc, found that “energy vodka infused with caffeine” and “wine” were not similar and stated that there is no per se rule that holds that all alcoholic beverages are related. The fact that the goods are described generally as “alcoholic beverages” was insufficient to establish similarity.

What is apparent, is that there is some level of subjectivity and a value judgment is, to a certain degree, made when considering the similarity of goods and/or services, including alcoholic beverages. For lawyers this means that we cannot advise clients that they have a “slam-dunk” case in instances where goods or services are not identical, albeit arguably similar, no matter how convinced we may be, as there is every possibility that a court may disagree. For the industry, the advice would be to proceed with caution when adopting brands similar to others, even in relation to non-identical goods and also to seek advice on how to obtain the broadest possible protection for one’s trade mark. l

The Mexican company behind the world’s best-selling tequila, Jose Cuervo, has lost its bid to stop the registration of the trademark for a wine called Il Corvo. Tequila Cuervo SA de CV turned to the High Court for relief when Fabrication and Light Engineering – applied for the registration of the proposed Il Corvo trademark.

British Sugar registered “Treat” as a trade mark for “Dessert sauces and syrups” called “Silver Spoon Treat” meant to be used as a dressing for desserts. James Robertson used the name “Robertson’s Toffee Treat” for a spread it produced. British Sugar instituted an action for infringement of trade mark on the grounds that there was likelihood of confusion.

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