Court rules Afrula infringes on the Amarula trademark.
A liquor and retail products trader, which plans to commence production of a marula cream liqueur under the trademark Afrula, has been interdicted and restrained by the Western Cape High Court from infringing on the trademark of Amarula Cream Liqueur.
Acting Judge Rehana Parker further specifically interdicted and restrained Noble Spirits (Pty) Ltd from infringing on Southern Liqueur Company Limited’s:
- Registered marks by using in the course of trade in alcoholic beverages the mark Afrula or a mark or marks resembling Southern Liqueur’s registered marks because they are likely to deceive or cause confusion in terms of the Trade Marks Act; and
- Rights acquired by the well-known and registered Amarula trademarks by using in relation to any goods, the trademark Afrula or any other mark which will be likely to take unfair advantage of or be detrimental to the distinctive character or the well-known and registered Amarula trademarks.
However, Parker rejected Southern Liqueur’s claim of passing off by Afrula, largely because the product is currently not available in the South African market.
Southern Liqueur is a wholly owned subsidiary of South African Distillers and Wines (SA) Limited, which in turn is a wholly-owned subsidiary of Distell Group Limited.
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Southern Liqueur’s case
Acting Judge Parker said Southern Liqueur was forced to seek an interdict and other relief against Noble Spirits after it filed its application for the registration of the trademark “Afrula”.
Southern Liqueur’s application was based on trademark infringements and passing off in respect of the use of the mark and associated Afrula get-up.
It claimed:
- The trademark Afrula is confusingly and/or deceptively similar to its registered trademarks Amurula and Amarula and is likely to result in deception and confusion among members of the public between goods bearing the respective trademarks of the two parties;
- Any use made by Noble Spirits of the mark Afrula is likely to exploit, take unfair advantage of, or be detrimental to the distinctive character and reputation of its well-known Amarula trademark; and
- The Afrula get-up/label is confusingly similar to its Amarula get-up, which is likely to deceive or cause confusion among the public, leading them to believe the Afrula product originates from Southern Liqueur.
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Elephant or African woman?
Acting Judge Parker said the trademarks Amarula and Afrula appear prominently on the respective products.
On the Amarula product, the elephant-themed device appears directly below the Amarula trademark, while on Noble Spirits’s label, there appears to be what Southern Liqueur sees as a side profile of an elephant head or, as Noble Spirits puts it, “African woman”.
Parker said this would not be immediately apparent to the consumer upon encountering the Noble Spirits product.
Southern Liqueur claimed a consumer would, on first impression, be confronted with the mark Afrula, combined with an elephant device used in relation to a liqueur product, against a background of a distinctly African motif.
Parker said as a result of this impression, Southern Liqueur’s case is that Noble Spirits has essentially replicated the primary components of its African-themed Amarula get-up, namely “the AMARULA mark and the ELEPHANT device”.
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Both marks ‘can co-exist’
Noble Spirits said its intention is to commence production and sale of a marula cream liqueur under the name and style Afrula in South Africa after the registration of the mark Afrula in various countries, including the 17 largely French-speaking African countries that are members of the African Intellectual Property Organisation (OAPI), Kenya, Tanzania, and the EU.
Noble Spirits, whose operations were anticipated to commence in South Africa in August 2021, believes there can be co-existence in the marketplace for both marks.
The company disagreed with the assertion that there exists a reasonable probability that Afrula will be perceived as Amarula and claimed the average consumer of the liqueur purchaser is a sophisticated, intelligent, and discerning adult who can read.
Noble Spirits said that given that a significant portion of its business is conducted online, it is imperative for the adult to be astute and discerning so as to operate and manage online e-commerce facilities and to possess a credit or debit card.
It was, therefore, highly improbable that the average consumer/customer would be deceived, misled, conned, or fooled into believing that one is actually the other and that consumers can distinguish between Afrula and Amarula when presented visually, whether on screen or store shelves.
Sound or appearance of marks could cause confusion
Noble Spirits said the distinction between the distinctive and dominant components of the respective marks, “AMA” and “AF”, effectively negates any potential for confusion because the potential customer will likely realise that “AFrula” is a marula cream liqueur distinct from “AMArula”, and if the consumer wants to buy Amarula, they will be aware they are looking at the incorrect product.
Southern Liqueur said “AFRULA” and “AMARULA” both start with the letter and sound “A” and end with “RULA”, and it’s likely that consumers will be confused by the sound or appearance of the marks in question.
Acting Judge Parker said this, in her view, “is the high water mark”, adding the similarities in the marks are sufficiently alike under the provisions of the Trade Mark Act.
“Not only are the marks similar, it is a fact that the mark is intended to be used in relation to the same goods in respect of which the mark Amarula has achieved recognition and has become well-known.
“Therefore the test of an easily recognisable similarity between the two marks in my view is met,” she said.
Parker said Southern Liqueur has established the likelihood that Noble Spirits’s use of the mark Afrula is in direct competition with it in the same market, irrespective of whether it may prevail in a sector for a lower price class, and is likely to dilute the distinctiveness of the mark Amarula.
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Passing off claim
However, Parker said Southern Liqueur is faced with a challenge with the passing off claim because, without a market presence, assessing misrepresentation and passing off is jurisprudentially unfeasible at this stage.
“There is no such evidence that the product is in the market and on shelves.
“If the product is marketed, then Applicant [Southern Liqueur] is entitled to the relief sought.
“I am at this stage exercising caution in finding liability for passing off, recognising that no damage can occur if the product is not commercially available,” she said.
Parker said that although Noble Spirits has constructed a new facility at its premises in Cape Town, and it was expected to become operational by August 2021 and employ about 45 people in production, marketing, and sales, it is not operational.
She said Southern Liqueur has on this point provided no evidence to show that the Afrula product is in the market in South Africa.
This article was republished from Moneyweb. Read the original here.
