SOUTH AFRICA Trends and Developments Contributed by: Daniel Pekar, KISCH IP
This is because the proprietor intends to protect against third-party use of the term “FIRST CHOICE” in combination for certain goods, and should not have disclaimed the entire phrase, but rather each word separately. It is better to obtain a monopoly in a phrase on the basis of longstanding use in respect of limited goods, than register a mark which is disclaimed to a large extent, even if such mark covers a broader range of goods. While the submissions required for obtaining broader rights in the mark may be a more expensive path to registration, the registration itself will be more effective in asserting the rights that are intended for protection against competitors in the industry concerned. 2. Burton’s Foods Ltd v Boxer Superstores (Pty) Ltd Link: https://www.saflii.org/za/cases/ZAGP - PHC/2025/650.pdf Gauteng High Court, Pretoria Judgment: 19 June 2025 2.1 Background Burton’s Foods Ltd (the applicant) (“Burton’s Foods”) is the proprietor of trade mark “WAGON WHEELS” as a word mark registered in respect of “biscuits, non- medicated confectionery, biscuits containing non- medicated confectionery, and marshmallows”. Boxer Superstores (the respondent) (“Boxer”) in 2020 lodged two applications for “WHEELS” (one with styl - ised wording and a biscuit logo, and the other only with stylised wording) in respect of “confectionery and baked goods, including biscuits and cookies”. See Boxer’s applications here . Burton’s Foods opposed Boxer’s applications seeking their removal from the Trade Marks Register arguing that the Boxer’s applications were confusingly similar to its own registration. In response, Boxer submitted that the proposed marks were distinct from the reg - istered mark “WAGON WHEELS” and asserted that protection for the “WAGON WHEELS” marks does not entitle the proprietor to exclusive rights over isolated portions of the mark.
2.2 Discussion The central question was whether Boxer’s applica - tions were so similar to “WAGON WHEELS” as to be likely to deceive or cause confusion under Section 10 (14) of the Trade Marks Act: • Composite marks and individual elements: The court emphasised the settled principle that reg - istration of a trade mark confers rights only in the mark viewed as a whole and not in its individual components ( Cadbury (Pty) Ltd v Beacon Sweets & Chocolates ). The court therefore rejected the argument that the word “WHEELS” within the composite “WAGON WHEELS” could be protected and capable of generating confusion with Boxer’s marks. • Likelihood of confusion test: The court applying the well-known test evaluated whether a sub- stantial number of average consumers, exercising ordinary caution, would likely be confused when encountering the respective marks in the market - place. The assessment involved considerations of visual, aural and conceptual similarities. The court held that the plain wording of “WAGON WHEELS”, as compared to the design features such as the stylised wording and colour combination of the applications, resulted in notably different visual impressions. The marks were also different aurally, and the word “WAGON” also created a certain degree of conceptual dissimilarity between the marks. However, the court noted that the goods were effectively identical. • Goods and consumer attention: As the court acknowledged that the goods were effectively identical and marketed in the same low-attention retail environments, that this could ordinarily increase the risk of confusion. Notwithstanding these aggravating factors, the court determined that the differences in appearance and sound, and the conceptual differences between the marks, outweighed any similarity simply from the shared word “WHEELS”. The court dismissed Burton’s opposition and directed that Boxer’s trade mark applications proceed to regis - tration. This case provides important lessons related below.
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