A trader involved in liquor and retail products, aiming to introduce a marula cream liqueur branded as Afrula, has been instructed by the Western Cape High Court to avoid infringing on the trademark of Amarula Cream Liqueur.
Acting Judge Rehana Parker directed Noble Spirits (Pty) Ltd to refrain from violating the trademarks held by Southern Liqueur Company Limited:
ADVERTISEMENT
CONTINUE READING BELOW
- Using the mark Afrula or similar marks in the trade of alcoholic beverages, as such usage could mislead or confuse consumers under the Trade Marks Act;
- Gaining advantages from the well-known Amarula trademarks by utilizing the trademark Afrula or any other mark that could unfairly benefit from or harm the distinctiveness of the established Amarula trademarks.
However, Parker dismissed Southern Liqueur’s passing off claim against Afrula, mainly because the product is not yet available in the South African market.
Southern Liqueur operates as a fully owned subsidiary of South African Distillers and Wines (SA) Limited, which is entirely owned by Distell Group Limited.
Southern Liqueur’s case
Acting Judge Parker emphasized that Southern Liqueur needed to seek an interdict and other remedies against Noble Spirits in response to the application for the trademark “Afrula.”
The foundation for Southern Liqueur’s application was based on trademark infringement and passing off related to the usage of the mark and associated Afrula branding.
Southern Liqueur asserted:
- The trademark Afrula is confusingly or deceptively similar to its registered trademarks Amurula and Amarula, which could lead to deception and confusion among the public regarding the products linked to each party’s trademarks.
- Any use of the Afrula mark by Noble Spirits is likely to exploit, gain an unfair advantage, or diminish the distinct character and reputation of the famous Amarula trademark;
- The Afrula branding/label bears a close resemblance to its Amarula branding, likely causing public confusion and leading consumers to mistakenly believe that the Afrula product is sourced from Southern Liqueur.
Elephant or African woman?
Acting Judge Parker pointed out that the trademarks Amarula and Afrula are prominently represented on their respective products.
On the Amarula product, the elephant-themed design is placed directly beneath the Amarula trademark, while Noble Spirits’ label features what Southern Liqueur interprets as a side profile of an elephant head, which Noble Spirits refers to as an “African woman.”
Parker noted that this distinction may not be immediately apparent to consumers when they first encounter the Noble Spirits product.
Read:
Do you really own your IP?
Trade mark registration: a ‘stitch’ in time saves nine
Southern Liqueur claimed that consumers would initially perceive the Afrula mark in conjunction with an elephant motif against a distinctly African setting in relation to a liqueur product.
Parker observed that this impression led to the conclusion that Noble Spirits has essentially replicated the key components of its African-themed Amarula branding, particularly “the AMARULA mark and the ELEPHANT design.”
Both marks ‘can co-exist’
Noble Spirits expressed its intent to commence the production and sale of a marula cream liqueur named Afrula in South Africa following the registration of the mark Afrula in several countries, including 17 predominantly French-speaking African nations within the African Intellectual Property Organisation (OAPI), alongside Kenya, Tanzania, and the EU.
Noble Spirits, which planned to start operations in South Africa by August 2021, believes that both marks can coexist in the market.
The company contested the assertion that there is a significant likelihood that Afrula would be mistaken for Amarula, arguing that the average liqueur buyer is a sophisticated, informed adult capable of reading.
Listen: How trade mark laws are fighting SA’s counterfeit product problem
Noble Spirits emphasized that since a significant portion of its business occurs online, it is crucial for consumers to be discerning and informed to manage e-commerce transactions and possess a credit or debit card.
Thus, it is quite improbable that the average customer would be misled, deceived, or tricked into confusing one product for another, and consumers are capable of differentiating Afrula from Amarula based on visual presentation, whether in retail or online environments.
ADVERTISEMENT:
CONTINUE READING BELOW
The sound or appearance of marks could cause confusion
Noble Spirits contended that the distinction between the key elements of the respective marks, “AMA” and “AF,” effectively removes any potential for confusion since the average consumer would likely understand that “AFrula” is a different marula cream liqueur from “AMArula,” and if they intended to purchase Amarula, they would recognize they are looking at the wrong product.
Conversely, Southern Liqueur argued that “AFRULA” and “AMARULA” both begin with “A” and conclude with “RULA,” which heightens the likelihood of consumer confusion concerning the sounds or visual presentation of the respective marks.
Acting Judge Parker affirmed that the similarities between the marks are sufficiently comparable according to the Trade Mark Act.
Read:
Amarula is the 7th most requested liqueur worldwide [Jan 2013]
Limpopo plans multi-million rand marula hub [Jan 2019]
“Not only do the marks exhibit similarities, but it is also evident that the mark is intended to be employed in relation to the same goods for which the Amarula mark has become recognized and well-known.
“Therefore, I believe that the requirement for easily recognizable similarity between the two marks is fulfilled,” she stated.
Parker concluded that Southern Liqueur has established the likelihood that Noble Spirits’s use of the Afrula mark directly competes with it in the same market, regardless of whether it may succeed in a lower price bracket, and is likely to dilute the uniqueness of the Amarula mark.
Passing off claim
However, Parker acknowledged that Southern Liqueur encounters difficulties with the passing off claim because, in the absence of market presence, evaluating misrepresentation and passing off is practically impossible at this time.
“There is no evidence suggesting that the product is on the market or available on shelves.
“If the product becomes available, then the Applicant [Southern Liqueur] is entitled to the requested relief.
“At this moment, I am cautious in finding liability for passing off, recognizing that no damage can take place if the product is not commercially accessible,” she stated.
Parker noted that while Noble Spirits has established a new facility in Cape Town, expected to be operational by August 2021 with an anticipated workforce of around 45 in production, marketing, and sales, it remains inactive.
She pointed out that Southern Liqueur has provided no evidence to support that the Afrula product is available in the South African market.
Read:
Takis Biltong wins trademark case but sneaky snack food won’t go away
Takis Biltong attaches rival’s trademarks over unpaid legal bills
Stay updated with Moneyweb’s in-depth finance and business news on WhatsApp here.
