Ruling resolves peanut butter dispute
A battle of the peanut butters has raged in the Gauteng High Court (Johannesburg), with the owners of the trademark ‘Vita Nut’ challenging a competitor’s use of the name ‘Vita Nuts’ for its product.
According to a Pretoria News report, Solo Foods said it had obtained the registered trademark ‘Vita Nut’, with one of the goods classified under this trademark being peanut butter.
However, Kalinda Trading also produces peanut butter and the company said it had been making use of the mark ‘Vita Nuts’ in relation to its product prior to May 2018, when Solo Foods officially obtained the trademark.
Solo Foods, relying on its trademark registration, asked for an interdict – in terms of the Trade Marks Act – to prevent Kalinda Trading and other respondents from using the mark ‘Vita Nuts’.
Kalinda Trading did not dispute that the mark ‘Vita Nuts’ is, at the very least, confusingly or deceptively similar to Solo Foods’ registered trademark.
Instead, it tried to defeat the main application with a counter application for the cancellation of Solo Foods’ trademark registration, adds the Pretoria News report.
Kalinda Trading alleged that it had made extensive use of the trademark ‘Vita Nuts’, and had therefore acquired a reputation and goodwill associated with the mark. It contended that the entry of Solo Foods’ ‘Vita Nut’ mark on the register of trademarks was wrongly made by the Registrar of Trademarks.
Kalinda Trading also placed great reliance on its marketing activities in relation to its ‘Vita Nuts’ products.
But the court said it was not persuaded that Kalinda Trading had developed a sufficient reputation with its ‘Vita Nuts’ products prior to the registration by Solo Foods of its similar trademark.
‘Certainly, its sales do not point to that conclusion at all. The creativity of its marketing strategies notwithstanding, they do not appear to have yet reached a substantial number of possible customers by 16 May 2018 (when Solo applied for the trademark),’ the court said.
It added that in the court’s view, Solo Foods had proven that it commenced using the mark many years before Kalinda Trading.
The court subsequently interdicted the respondents from infringing on Solo Foods’ peanut butter trademark.
Article disclaimer: While we have made every effort to ensure the accuracy of this article, it is not intended to provide final legal advice as facts and situations will differ from case to case, and therefore specific legal advice should be sought with a lawyer.
