An alcohol and retail products trader, who plans to begin production of a marula cream liqueur under the Afrula brand, has been interdicted and restrained by the Western Cape High Court from infringing the brand of Amarula cream liqueur.

Acting Judge Rehana Parker further specifically enjoined and restrained Noble Spirits (Pty) Ltd from infringing the rights of Southern Liqueur Company Limited:

• Trademarks registered using in the trade in alcoholic beverages the Afrula brand or one or more trademarks resembling the registered trademarks of Southern Liqueur because they are likely to deceive or create confusion within the meaning of the trademark law; And
• Rights acquired by the well-known and registered Amarula brands by using for any product, the Afrula brand or any other brand which would be likely to take unfair advantage of or be detrimental to the distinctive character of the well-known and registered Amarula brand. registered trademarks.

However, Parker rejected Southern Liqueur’s allegation that Afrula was passing itself off as a fraudulent product, 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.

ALSO READ: Takis Biltong wins trademark case, but sneaky snacks won’t go away

The case of Southern Liqueur

Acting Judge Parker said Southern Liqueur was forced to seek an interdict and other measures against Noble Spirits after it filed its application to register the trademark “Afrula”.

Southern Liqueur’s claim was based on trademark infringements and fraudulent marketing of the use of the trademark and associated Afrula trade dress.

He claimed:

• The Afrula mark is confusingly and/or deceptively similar to its trademarks Amurula and Amarula and is likely to cause deception and confusion among members of the public between products bearing the respective marks of the two parties;
• Any use by Noble Spirits of the Afrula brand is likely to exploit, improperly exploit or be detrimental to the distinctive character and reputation of its well-known Amarula brand; And
• The Afrula presentation/label is similar to that of Amarula, which is likely to deceive or confuse the public, leading them to believe that the Afrula product originates from the Southern liquor.

ALSO READ: ANC granted permission to appeal MK party branding case to Supreme Court

Elephant or African woman?

Acting Judge Parker said the Amarula and Afrula marks appear prominently on the respective products.

On the Amarula product, the elephant-themed device appears directly under the Amarula brand, while on the Noble Spirits label there appears to be what Southern Liqueur considers to be the side profile of an elephant’s head. elephant or, as Noble Spirits puts it, “an African woman”. “.

Parker said this would not be immediately obvious to the consumer when encountering the Noble Spirits product.

Southern Liqueur claimed that a consumer would, on first impression, be confronted with the Afrula brand, combined with an elephant used in connection with a liquor product, against a background of a distinctly African motif.

Parker said that because of this impression, Southern Liqueur’s case is that Noble Spirits essentially replicated the main components of its African-themed Amarula outfit, namely “the AMARULA brand and the ELEPHANT device.”

ALSO READ: Takis Biltong seizes rival’s brands for unpaid legal fees

The two brands “can coexist”

Noble Spirits said its intention was to begin the production and sale of a marula cream liqueur under the Afrula name and style in South Africa following the registration of the Afrula trademark in various countries, including the 17 largely French-speaking African countries which are members of the Union. African Intellectual Property Organization (OAPI), Kenya, Tanzania and EU.

Noble Spirits, whose operations were due to start in South Africa in August 2021, believes that there can be coexistence in the market for both brands.

The company disagrees with the assertion that there is a reasonable probability that Afrula will be perceived as Amarula and asserted that the average liquor buyer consumer is a sophisticated, intelligent and perceptive adult, capable to read.

Noble Spirits said that as a significant portion of its business is conducted online, it is imperative that the adult demonstrates insight and judgment in operating and managing online e-commerce facilities and possessing a card credit or debit.

It was therefore highly unlikely that the average consumer/customer would be deceived, deceived, misled or led to believe that one is actually the other and that consumers can distinguish Afrula and Amarula when presented visually, whether on a screen or on store shelves. .

The sound or appearance of the marks could cause confusion

Noble Spirits stated that the distinction between the distinctive and dominant components of the respective marks, “AMA” and “AF”, effectively eliminates any risk of confusion, as the potential customer will likely realize that “AFrula” is a cream liqueur. marula distinct from “AArula”. ”, and if the consumer wants to buy Amarula, he will know that he is looking at the wrong product.

Southern Liqueur stated that “AFRULA” and “AMARULA” both begin with the letter and sound “A” and end with “RULA”, and it is likely that consumers will be confused by the sound or appearance of the marks in question.

Acting Justice Parker said that in her view this was “the high point”, adding that the similarities between the marks were sufficiently similar under the provisions of the Trade Marks Act.

“Not only are the marks similar, but it is a fact that the mark is intended to be used for the same goods for which the Amarula mark has gained recognition and become notorious.

“Therefore, in my opinion, the criterion of an easily recognizable similarity between the two marks is met,” she said.

Parker said Southern Liqueur established the likelihood that Noble Spirits’ use of the Afrula brand would be in direct competition with it in the same market, regardless of whether it might prevail in an industry for a price class inferior, and is likely to dilute the distinctive character of the Amarula brand.

ALSO READ: DJ Accuses Milk Stout of Intellectual Property Infringement Over African Karaoke Campaign (VIDEO)

Submit a complaint

However, Parker said Southern Liqueur faces a challenge with the substitution claim because, without a market presence, assessing misrepresentation and substitution is jurisprudentially infeasible at this point.

“There is no evidence that the product is on the market and on the shelves.

“If the product is marketed, the plaintiff (Southern Liqueur) is entitled to the relief requested.

“At this point, I exercise caution before seeking liability for infringement, recognizing that no harm can occur if the product is not commercially available,” she said.

Parker said that although Noble Spirits has built a new facility at its Cape Town premises, and is expected to become operational by August 2021 and employ around 45 people in production, marketing and sales, it is not not operational.

She stated that Southern Liqueur had not provided any evidence on this point to demonstrate that the Afrula product was present on the market in South Africa.

This article has been republished from Moneyweb. Read the original here.