SOUTH AFRICA Trends and Developments Contributed by: Daniel Pekar, KISCH IP
A Review of Selected Trade Mark Decisions in South Africa in 2025: How These Matters Will Likely Impact Trends and Trade Mark Developments Introduction We are pleased to provide a detailed review of four selected South African trade mark decisions heard in the course of 2025, specifically, in the Western Cape and Pretoria High Courts. The document serves as a practical tool in order to understand how various trade mark laws are interpreted by the South African courts and how some real-world issues are decided. 1. Woodlands Dairy Proprietary Limited v Sansom Farming CC and Others Link: https://www.saflii.org/za/cases/ZAGP - PHC/2025/298.html Gauteng High Court, Pretoria Judgment: 10 March 2025 1.1 Background The case was instituted by Woodlands Dairy (Pty) Ltd (the applicant) (“Woodlands”) against Sansom Farm - ing CC (the first respondent) (“Sansom”). Woodlands is a manufacturer of a range of dairy products marketed and sold under the brand “FIRST CHOICE” and has registered trade marks for “FIRST CHOICE” in the applicable classes. However, it is notable that these trade mark registrations were reg - istered subject to a disclaimer of the words “FIRST CHOICE”, separately and apart from the mark as a whole. Sansom is a small dairy business and proprietor of trade mark registration no. 2017/12516 “FRESH CHOICE” (stylised) in class 29 in respect of the fol - lowing goods: “Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats”. It is note - worthy that the mark was also registered subject to a disclaimer, namely, of the words “FRESH” and “CHOICE”, separately and apart from the mark as a whole.
Woodlands applied for the cancellation of the “FRESH CHOICE” trade mark in terms of the Trade Marks Act 194 of 1993 (“the Trade Marks Act”) on the basis of confusing similarity between the “FRESH CHOICE” mark as compared to its “FIRST CHOICE” marks, and also argued that it will also be likely to deceive con - sumers, and dilute its brand reputation. In reply, San - som argued that the “FIRST CHOICE” and “FRESH CHOICE” marks were distinct from each other, that the words “FIRST CHOICE”, “FRESH” and “CHOICE” are descriptive in nature, and that the disclaimers limit the applicant’s rights in these terms. 1.2 Discussion The court compared the marks as a whole while con - sidering their visual, aural and conceptual differences. The court held that the words “FIRST” and “FRESH” were descriptive in nature. Furthermore, the word “CHOICE” was similarly found not to be protectable as a trade mark as it was found to be a laudatory term. The court noted the differences in Sansom’s trade mark as in the stylised aspects such as the font and colour. The court upheld the disclaimers of the trade mark registrations, which reduced the scope for argu - ing confusing similarity due to the shared disclaimer of the word “CHOICE”. Accordingly, the court held that the marks were not confusingly similar, nor would it be likely to deceive consumers or dilate Woodlands’ brand reputation, nor were the get-ups similar. The court therefore dis - missed the application and awarded the costs to the respondent. 1.3 Recommendations The trade marks registry will often call for disclaim - ers upon the examination of a trade mark application, and it might be tempting to accept such conditions in order to permit the application to acceptance without delay, or the additional costs of making submissions to the registry. However, it is always strongly recom - mended that disclaimers are carefully considered, and that such disclaimers are only accepted where it is clear there is no path to registration without agree - ing to such conditions. The disclaimer for “FIRST CHOICE” as a single phrase is a cautionary tale and is an issue more generally.
518 CHAMBERS.COM
Powered by FlippingBook