Innscor Africa Limited v Slice Distributors (Private) Limited & Anor (Registrar of Deeds N.O.)

### Preamble
Judgment No. SC 101/23
1
Civil Appeal No. SC 43/23
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REPORTABLE	(101)

INNSCOR     AFRICA     LIMITED

v

SLICE     DISTRIBUTORS     (PRIVATE)     LIMITED     (2)     REGISTRAR OF     DEEDS     N.O

SUPREME COURT OF ZIMBABWE

GUVAVA JA, MAKONI JA & MATHONSI JA

HARARE: 30 MAY 2023 & 6 OCTOBER 2023

T. Zhuwarara with R.G Zhuwarara, for the appellant

M. Nkomo, for the first respondent

MAKONI JA:

[1]	This is an appeal against the decision of the High Court (the court a quo) wherein it dismissed the appellant’s claim for an interdict against trademark infringement by the first respondent.

FACTS

[2]	The facts relevant for the determination of this matter are largely common cause and are clearly outlined in the judgment of the court a quo as summarised from a statement of agreed facts settled by the parties in terms of r 52 (5) of the High Court Rules, 2021 (the rules). The plaintiff a quo is the appellant and the first defendant, the first respondent in the present appeal.

“(a)   In 1987, the plaintiff established a brand called Chicken Inn as a restaurant. In 2010, the 1st defendant established Chicken Slice, also a brand and a competitor of the plaintiff in the restaurant business.

The plaintiff registered a trademark No. 1070/2006 in class 29. The presentation consisted of a chicken, two heart symbols and a phrase ‘luv dat chicken’. A certificate of Registration with ARIPO in classes 29, 30 and 43 was attached. The plaintiff asserts that the trademark has been used by it since 1987. Further that it carries an identifiable logo with a distinctive colour scheme of red, white, yellow and black.

Sometime in March 2019, the plaintiff became aware that the first defendant was using a mark containing the term ‘luv’ in its phrase, ‘I luv it’ in marketing products similar to those of the plaintiff. It has also been using a colour scheme resembling that of the plaintiff since its inception in 2010.

The first defendant is the registered user of a trade mark ‘Chicken Slice’, having been assigned to it from Packers International in April 2016. It was registered in class 43, on the 20th of November 2012, under no. 755/2022.  The trade mark consists of a chicken device in yellow, red and white, a red circle and an orange ribbon and the words ‘Chicken Slice’; in red, white and black.

On the 24th of September 2019, the first defendant registered a trade mark for Slice Grill and Burger, incorporating the words, “I luv it” in class 43 under registration number 250/2019.

The plaintiff has through its social media accounts been receiving comments regarding the perceived resemblance of the Chicken Inn and Chicken Slice brands.

The plaintiff wrote to the first defendant demanding that it ceases to use the term ‘luv’ and desist from use of similar colour schemes. The first defendant takes a position that the plaintiff does not have exclusive use of the term ‘luv’ and that the two brands do not resemble each other. They also consider the demand to be anti-competitive.”

[3]	To the agreed facts the parties attached   annexures of documentary evidence to prove their cases which included inter alia;

Appellant’s registered trademark;

The first respondent’s trademarks;

The appellant’s advertisement

The first respondent’s advertisement;

The appellant’s product;

The first respondent’s product and packaging;

[4]	The appellant issued summons against the first respondent for an interdict against trademark infringement and costs of suit.

[5]	The matter was set down before the judge a quo and the parties agreed to have the matter proceed as a special case in terms of the rules. The parties proceeded to prepare and file a statement of agreed facts, as outlined above, and written submissions motivating their cases. The parties framed the issues for determination as follows:

“a. Whether the first respondent infringed the appellant’s registered trademark number 1070/2006 in any way?

b. Whether the first respondent passed off any of its products as those of appellant as alleged or at all?

c. If there was an infringement or passing off, what are the appropriate remedies?”

SUBMISSIONS BEFORE THE COURT A QUO

[6]	The appellant submitted that contents of a registered trademark are critical. It submitted that the phrase ‘luv dat’ is part of the appellant’s mark that is associated with Class 29 concerning poultry. It averred that the Trade Marks Act [Chapter 26:06], (the ‘Act’) protects such registration. Counsel further submitted that the test for trademark infringement is whether there exists the likelihood of deception or confusion – which position the courts have clarified that one ought not to look too closely at the mark and alleged infringement to find similarities and differences but merely at the dominant impression given by the appearance of the mark.  It was the appellant’s submission that the first respondent’s mark used on its packaging, flyers and adverts created a dominant impression that it is similar to that of the appellant as it consists of a pictorial chicken plus the colours red, yellow, white, orange and black and occasionally uses the phrase “luv it”.

[7]	It was further submitted that the first respondent’s own certificate of registration has a specific condition that relates to non-exclusive use of the device of a rooster and the words grill, burger and the slogan, “I luv it”. In addition, it was submitted that the adverts, flyers, colour scheme and logos used by the first respondent created confusion with the appellant’s products and this constituted passing off. On reputation, counsel argued that the appellant’s products had been on the market for a long time and it had acquired goodwill.  In this light, it was submitted that the appellant was entitled to the relief set out in s 9A (2) of the Act, which relief includes an interdict against the use of the logo and the passing off and destruction of the offending devices.

[8]	Per contra, the first respondent submitted that the appellant did not have any exclusive rights in the word ‘luv’ as it is a dictionary word which has not acquired any distinctiveness in relation to the appellant’s goods. Further that the exclusiveness of the appellant’s trademarks only relates to goods that fall under class 29. As such it was submitted that the appellant has no exclusive rights in respect of class 35 (advertising) or class 16 (printed).  Additionally, the first respondent submitted that the appellant did not object to its application for registration of its own trademark, that the appellant has not sought its expungement and that the second respondent was satisfied that there was no infringement of s 15 of the Act, which prohibits registration of a mark that is identical or confusingly similar to a mark already registered.

[9]	Counsel for the first respondent argued that the word ‘luv’ on the appellant’s trademark was used in a descriptive manner and not as a trademark. Also, that the appellant’s mark consists of a combination of things that constitute a composite mark instead of individual elements hence the first respondent did not falsely copy the appellant’s registered trademark as claimed.  It was submitted that if the global appreciation test is applied, it was evident that there was no infringement of the appellant’s trademark as alleged. The overall impressions created by the two marks were different and there was no likelihood of confusion.  The first respondent maintained that the appellant had not placed evidence to justify the departure from the general rule and application of the dominant element test. The first respondent thus contended that the submission by the appellant that the word ‘luv’ is a dominant element of its trademark was not legally sustainable.

FINDINGS OF THE COURT A QUO

[10]	In determining the matter before it, the court found that it was clear that the word ‘luv’ appeared on the first respondent’s ‘Slice and Grill Burger’ mark and not on the Chicken Slice mark.  The court noted that the word however appears on packaging associated with the first respondent’s Chicken Slice products with the phrase that reads, ‘I luv it’. The court compared the trademarks in dispute and found that the appellant’s certificate of registration no. 1070/06 had a condition that the registration of the trademark shall give no right to the exclusive use of the word, CHICKEN. The mark is also limited to the colours black, orange, yellow, red and white. It further found that for the first respondent, registration certificate no. 755/2011 had conditions that the mark shall give no right to the exclusive use of phrases, DELICIOUS CHICKEN OF THE DAY, CHICKEN SLICE, and the device of a chicken separately and apart from the mark.

[11]	In addition, the first respondent’s certificate of registration 250/2019 showed that there is no exclusive use of the device of a rooster and the words, “grill”, and “burger” and the slogan, ‘I luv it’ and the phonetic equivalence of the word love separately and apart from the mark.  The Court reasoned that just as the first respondent had no monopoly over the use of the word ‘luv’ as it appears in the slogan, similarly the appellant had no monopoly over the word except as it uses it in its trademark.

[12]	The court a quo found that the first respondent not only registered the device of a chicken but also the slogan, “I luv it’. Therefore, when it proceeded to use it in combination with the symbol of a chicken, it was not inventing anything new.  In the court’s view, an average customer who encounters the products of the appellant and the first respondent would not likely be confused by the differences between them.  In the result, the court concluded that the appellant failed to make a case for trademark infringement.

[13]	On the question of whether or not there was passing off, the court found that apart from the contention that the appellant was established in 1987, reference to a university student’s thesis and a few social media chats, the appellant did not put anything else before it that proved goodwill and reputation.  The court held that such evidence could not in any way suffice to prove goodwill and reputation.  Proof being a pre-requisite for passing off, it stated that the appellant failed to prove that the first respondent passed off any of its products as those of the appellant. In the result the court dismissed the appellant’s claim for trademark infringement and passing off.

[14]	Aggrieved by the decision of the court a quo, the appellant noted an appeal on the following grounds:

GROUNDS OF APPEAL

“1. The court a quo erred at law and grossly misdirected itself in failing to find that the respondent’s use of the term ‘luv’ in the phrase ‘I luv it’ together with the device of a chicken in its logo and its use of a similar colour scheme in marketing of products similarly offered by the appellant constituted an infringement of the appellant’s trademark as registered under certificate no. 1070/2006.

The court a quo also erred in failing to properly apply the legal tests attendant to trademark infringement claims. In error the court a quo, inter alia, did not evaluate the competing marks as they would be encountered in the marketplace and against the background of relevant circumstances, which include the length of the time the respective marks have been in use, the likelihood of confusion arising from the similarities of the trademarks and similarities of the nature of products in question.

The court a quo grossly misdirected itself by disregarding the evidence from appellant’s customers confirming the similarity of the respective trademarks and the confusion precipitating therefrom. Such misdirection was occasioned by the court a quo’s erroneous finding that such evidence had not been obtained from ‘national customers of average intelligence.’

The court a quo erred at law and misdirected itself by concluding that there was no evidence of passing off. The court a quo would not have made such anomalous finding if it had properly considered evidence of the respondent’ advertisements, and marketing mimicking that of the appellants.”

SUBMISSIONS ON APPEAL

[15]	Mr Zhuwarara, for the appellant submitted that the phrase ‘luv dat’ is part of the appellant’s registered mark that is associated with Class 29 concerning poultry and hence the Act protected such registration. He further submitted that the test for trademark infringement is whether there exists the likelihood of deception or confusion which position the courts have clarified to be that one should not look too closely at the mark and alleged infringement to find similarities and differences but merely at the dominant impression given by the appearance of the mark. It was counsel’s submission that the first respondent’s mark used on its packaging, flyers and adverts creates a dominant impression that it is similar to that of the appellant as it consists of a pictorial chicken plus the colours red, yellow, white, orange and black and occasionally uses the phrase “luv it”.

[16] 	Counsel contended that the appellant has through its social media accounts, been receiving comments regarding the perceived resemblance of the Chicken Inn and Chicken Slice brands. In addition, counsel argued that the adverts, flyers, colour scheme and logos used by the first respondent create confusion with the appellant’s products and this constitutes passing off. In this light, counsel maintained that the appellant is entitled to the relief of an interdict against the offending devices.

[17]	Per contra, Mr Nkomo for the respondent, submitted that the appellant does not have any exclusive rights in the word ‘luv’, it not having acquired any distinctiveness in relation to the appellant’s goods. Further, that the exclusiveness of the appellant’s trademarks only relates to goods that fall under class 29. As such, it was submitted that the appellant has no exclusive rights in respect of goods in class 35 under advertising. In other words, counsel’s submission was that the protection afforded by the Act is class specific. Counsel for the respondent further argued that the appellant did not obtain registration of individual elements of the phrase “luv dat chicken”. In this light, he submitted that the individual elements of the mark could not be used in isolation as it is only a component of the actual registered trademark and thus is incapable of being infringed. In addition, he posited that no person of average intelligence, with proper eyesight and exercising caution would mistake the appellant’s products as those of the first respondent.

[18]	It was counsel’s further submission that the appellant conflated two causes of action and that the evidence on record could not sustain the cause of action on passing off. Counsel accepted that the appellant had no exclusive right to the word ‘CHICKEN’ on its trademark and that this meant that all the other components of the mark are protected. He however stressed that such protection is not of individual elements but of the mark in its entire form. Counsel thus moved that the appeal be dismissed.

ISSUES FOR DETERMINATION

[19]		Two issues arise from the grounds of appeal and submissions made by counsel before this Court. These are; Whether or not the court a quo erred in finding that the                 first respondent did not infringe the appellant’s trademark and whether the court a quo erred by finding that the appellant had not proved passing off.

ANALYSIS

Whether or not the court a quo erred in finding that the first respondent did not infringe the appellant’s trademark

[20]	The appellant approached the court a quo seeking an interdict against the                             first respondent for trademark infringement. The claim was founded on s 9A (2) of the Act which provides various remedies available to a party which is aggrieved by any form of trademark infringement. Section 9A (2) of the Act lists the remedies available to such a party as being a claim for damages, an interdict, attachment, the rendering of account, the delivery of improperly marked goods of articles used or intended to be used for marking goods or otherwise.

[21] 	The law on trademark infringement safeguards the commercial interests of companies by ensuring protection of goods or services offered by it from infringement or damage of reputation by another company. A trademark thus serves two purposes; firstly, the protection of a unique logo that affords instant brand recognition and secondly, the protection of the business monopoly created by the terms of its registration. Trademarking is thus an important part of protecting a business’s brand identity. Once a trademark is registered no other company or entity is permitted to engage in business using a ‘mark’ that is identical to or easily mistaken for the registered trademark.

[22] 	In Dix v Calzanetto Sociedad Limitada [2019] ZAGPJHC 499 at par 19 the court discussed the meaning of a trademark as follows:

“The modern law of trade mark infringement is statutory but its origins are to be found in the common law action for passing off. It is trite that a trade mark functions as a badge of origin and that trade mark law does not give copyright-like protection.  It is a distinctive mark used to identify and distinguish the products and services of an individual or company from products and services offered by another. Generally, it is recognised that “a trade mark indicates that the goods upon which it is used originate from a single, albeit anonymous, trade source without necessarily disclosing the identity of the trade mark proprietor.”

See also LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another 2022 (4) SA 448

[23]		It follows that a registered trademark serves as a protective measure. Once it is registered it gives the registered owner an exclusive right to use it concerning the goods for which it is registered (See Gelatine (Pvt) Ltd v Cairns Foods (Pvt) Ltd 2003 (1) ZLR 352 (S)). Any violation of such an exclusive right will constitute an infringement of the trademark.  Section 8 (1) of the Act provides for the infringement of trademarks as follows:

“(1) Subject to this section and to sections ten and eleven, a registered trade mark shall be infringed by any unauthorised use in the course of trade, whether as a trade mark or otherwise, of a mark that is identical to the registered trade mark or so nearly resembling it as to be likely to deceive or cause confusion, where that mark is used in relation to the same or similar goods or services as those in respect of which the trade mark is registered.”

[24]	This Court in Cairns Foods Limited v Netrade Marketing (Pvt) Ltd SC 242/20 had occasion to discuss the approach to be applied by a court when considering whether or not an infringement of a trademark has occurred. The court at page 9 noted that:

“Generally, authorities are agreed that in infringement proceedings what the court is required to do is to consider the notional use to which the party seeking to enforce registration puts its trade and protect the monopoly created by the terms of registration. See Bata Ltd v Face Fashions CC & Anor 2001 (1) SA 844 (SCA). The test for infringement was eminently stated in Plascon Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 640G-641E, relied upon by counsel for the appellant in advancing the argument that there exists the likelihood of deception or confusion. The court stated:

‘… a comparison between the mark used by the defendant and the registered mark and, having regard to the similarities and differences in the two marks, an assessment of the impact which the defendant’s mark would make upon the average type of customer who would be likely to purchase the kind of goods to which the marks are applied. The notional customer must be conceived of as a person of average intelligence, having proper eyesight and buying with ordinary caution. The marks must be viewed as they would be encountered in the market place and against the background of relevant surrounding circumstances. The marks must not only be considered side by side, but also separately … If each of the marks contain a main or dominant feature or idea the likely impact made by this on the mind of the customer must be taken into account. As it has been put, marks are remembered rather by general impressions or by some significant or striking feature than by photographic recollection of the whole.’

It has been accepted that one should not peer too closely at the mark and the alleged infringement to find similarities or differences but merely at the dominant impression given by the appearance of the mark. See Mobil Oil Zimbabwe (Pvt) Ltd v Travel Forum 1990 (1) ZLR 67; Puma AG Rudolf Dassier Sport v Global Warming (Pty) Ltd 2010 (2) SA 600 (SCA)’”

[25]	In Marshall and Another v Atupele Investments (Proprietary) Limited T/Workboss Hardware HH-195-22 DUBE JP at par 31-32 established a three-stage approach to be applied by a court in ascertaining whether or not a trademark infringement has occurred as follows:

“… from these cases can be drawn a step -by -step approach to establish if a mark is identical with or so nearly resembling the registered mark as to be likely to deceive or cause confusion as follows:

(a) similarity of the marks

(b) similarity of products or services

(c) the likelihood of confusion arising from the similarities

The court may consider the following factors, the degree of resemblance between the marks, nature of the trade, nature of the products in question, the length of time the trademarks have been in use and distinctiveness of the trademarks or trade names.”

[26]	From the above authorities it follows that where a trademark infringement is alleged the entity which claims such infringement must show that it owns the trademark and must thereafter show the manner in which the trademark is infringed by comparing its mark to that of the alleged infringer.

[27]   In casu, it is common cause that the appellant was the first business entity between the two to run a fast-food business in Zimbabwe and to register its own trademark in 2006. The first respondent joined the fast-food business in 2010 and thereafter registered a mark under its ‘Slice Grill and Burger’ products with the slogan ‘I luv it’ in 2019. It is also accepted that the contention between the parties has emerged from both parties’ use of the word ‘luv’ in the running of their businesses and in their registered trademarks.

[28]	The appellant’s registered trade mark, registered under Certificate No. 1070/2006, consists of a chicken, two heart symbols and the phrase ‘luv dat chicken’. It also carries an identifiable logo with a distinctive colour scheme of red, white, yellow, orange and black. It is registered under class 29 ‘in respect of meat, fish, poultry, and game meat…….’  It is also recorded that “Registration of this trade mark shall give no right to the exclusive use of the word ‘CHICKEN” as such, otherwise as depicted in the application and apart from the mark.” The mark is also registered under the African Regional Intellectual Property Organisation (ARIPO) under class 19,30 and 43.

[29]	Whereas the first respondent’s trademark, under Certificate No. 755/2022, consists of a chicken device in yellow, red and white, a red circle and an orange ribbon and the words ‘Chicken Slice’; in red, white and black.  It is registered in class 43 ‘in respect of preparing and selling food in food outlets in class 43.’ It is recorded that “Registration of this mark shall give no right to the exclusive use of the phrases “DELICIOUS SLICE OF THE DAY,” “CHICKEN SLICE” and the device of the chicken separately and apart from the mark.” The first respondent has a second trademark for Slice Grill and Burger under registration Certificate No 250/2019 and it incorporates the words, ‘I luv it’. It is also registered in class 43 in respect of ‘services for providing food and drink.’ It is recorded that “Registration of this mark shall give no right to the exclusive use of the device of a “rooster”, the words “grill and “burger” the slogan “I luv it “and the phonetic equivalent of the word love separately and apart from the mark.” Both trademarks are not limited in colour.

[30]	As correctly held in the above cited authorities, a court dealing with a claim for trademark infringement ought not to carry out a forensic audit of the trademarks but must be guided by looking “merely at the dominant impression given by the appearance of the mark”. The court must also have regard to the similarity of the marks, similarity of the nature of the products or services, the likelihood of confusion to the average shopper and the degree of resemblance in the nature of the trade and products in question and the distinctiveness of the trademarks or trade names.  This point was reemphasised by the Supreme Court of South Africa in Century City Apartments Property Services CC & Anor v Century City Property Owners’ Association 2010 (3) SA 1 (SCA) para 13 where Harms DP approved a more recent dictum of Laddie J in the Chancery Division (England and Wales), in Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch). Laddie J said (para 24), and noted that:

“The likelihood of confusion must be appreciated globally, taking account of all relevant factors. It must be judged through the eyes of the average consumer of the goods or services in question. That customer is to be taken to be reasonably well informed and reasonably circumspect and observant, but he may have to rely upon an imperfect picture or recollection of the marks. The court should factor in the recognition that the average consumer normally perceives a mark as a whole and does not analyse its various details. The visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. Furthermore, if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion.”

[31]	An analysis of trademark infringement therefore requires a wholesome look at the appearance of the mark. It is apparent that the appellant obtained registration of a composite mark which included the words ‘luv dat chicken’ in its totality. In this regard the use of the word ‘luv’ in the phrase ‘luv dat chicken’ forms the totality of the trademark. Of note is the fact that on its registration certificate the appellant was restricted from exclusively using the word “CHICKEN” only. There was no similar restriction in respect of the phrase ‘luv dat’.

[32]	The consideration of trademark in its totality was upheld in the South African case of Yair Shimansky and another v Browns the Diamond Store Proprietary Limited [2014] ZASCA 214 at par 8 wherein the court held that:

“That said, the trade mark must be considered globally – as a whole. That principle, originating in the European Court of Justice in Sabel BV v Puma AG Rudolf Dassler Sport [1998] RPC 199 (ECJ) 221 at 224 was adopted by this court in Bata Ltd v Face Fashions CC & Anor  2001 (1) SA 844 (SCA) par 9. Sabel said that a court must consider the allegedly infringing mark ‘globally’: ‘a global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components”.(emphasis added)

Section 2 of the Act defines a trademark as follows:

“trademark” means a mark which is used or proposed to be used in relation to goods or services for the purpose of:

(a)	 Indicating a connection in the course of trade between the goods or services and some person having the right either as proprietor or as a registered user to use the mark whether with or without any indication of the identity of that person and

(b)	Distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other persons but does not include a certification mark.” (Underlining added)

Section 2 goes on to define a ‘mark’ as:

“… any sign which can be represented graphically and is capable of distinguishing the good or services of one undertaking from those of other undertakings.”

[33]	The South African Trade Marks Act 71 of 2008, shares the same definition of a ‘mark’ as in our jurisdiction. The Act however goes on to qualify the manner in which the sign in a mark can be graphically represented. Section 2 of that Act provides that:

“mark” means any sign capable of being represented graphically, including a device, a name, signature ,word ,letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”

[34]	Borrowing from the above, a mark in a trademark can take any form or shape. A mark must therefore be viewed and seen in a wholesome manner. An average buyer walking down the aisle in a supermarket or standing in front of a fast-food outlet is bound to look at the wholesome presentation of the branding or logo of the item or commodity he intends to buy. The mind is bound to process a wholesome picture of any logo and as such a business or commodity identifies to the public through a wholesome outlook of its branding or logo. There can therefore be no individual components to a trademark. A trademark must be taken as being registered as a whole representation except for the express words or items which are stated on a certificate of registration as not being exclusively of right to the party which registers the trademark.

[35]	The appellant’s trademark relates to poultry products and shows that the appellant has no exclusive right to the word ‘CHICKEN’. What remains is the picture of the rooster, the colours and the phrase ‘luv dat chicken’ as being the registered trademark of the appellant. Section 8 (1) of the Act states that:

“…a registered trademark shall be infringed by any unauthorised use in the course of trade, whether as a trademark or otherwise of a mark that is identical to the registered trademark or so nearly resembling it as is to be likely to deceive or cause confusion, where that mark is used in relation to the same or similar goods or services as those in respect of which the trade mark is registered.”

[36]	The Act is clear and mandatory in its use of the word ‘shall’, such that an infringement of a trademark occurs when there is an unauthorised use in the course of trade of a mark, that is identical to the registered trademark or so nearly resembling it as to likely deceive or cause confusion where that mark is used in relation to the same goods or services as those in respect of which the trade is registered. The first respondent’s trademark under its Slice Grill and Burger trademark makes use of the word ‘luv’ in its phrase ‘I luv it’. The first respondent has gone on to adopt the phrase ‘I luv it’ on its promotional material and packaging for its other products including fried chicken and chips, which products are similarly marketed by the appellant, as demonstrated in the products depicted in para 3 above. In argument, counsel for the  first respondent maintained that as the appellant’s trademark is registered under class 29 for poultry and other food stuffs, the trademark cannot preclude it from using the word ‘luv’ for advertising and printing as the trademark is not registered under classes  35 and 16. Counsel for the first respondent also advanced the argument that the appellant’s trademark does not give it exclusive right over the word ‘luv’ and as such there was nothing amiss or unlawful with its use of the word in its trademark. The court finds no merit in this submission.

[37]	It has already been found that the appellant’s trademark was registered as a mark in its entirety. The trademark finds its value in the use of the phrase ‘luv dat’ by the appellant over the years, which it has exclusive rights over. As alluded to above, in infringement of trademark claims, the court must also have regard to other considerations. In this regard it is common cause that the appellant has been in the fast-food industry longer than the first respondent; that the appellant and first respondent are in the same trade offering closely related products and services; that the colour scheme of the first respondent’s packaging is closely similar to that of the appellant; and that the first respondent uses the slogan ‘I luv it’ as opposed to the ‘luv dat chicken’ slogan of the appellant.

[38]	Two points must be made. The first point is that the appellant, by extrapolation, has been allowed the exclusive use of the phrase ‘luv dat’ as part of its device. It was only denied the exclusive use of the word ‘chicken’. The other point is that the first respondent is using the phrase ‘I luv it’, interchangeably, between its products under the marks Chicken Slice and Slice and Grill Burger. Its products under the Chicken Slice mark are using the phrase ‘I luv it’ in the packaging and marketing of the products. The first respondent does not dispute this but argues that the appellant’s mark is not registered under class 35 for advertising. Such a proposition is untenable, to say the least, in view of the finding that the appellant has, by dint of law, the exclusive right to the phrase ‘luv dat’.

[39]	Looking at the totality of the above factors it can be concluded that the Certificate of Registration evidencing the appellant’s registration of the mark ‘entitling it to the exclusive use of the word “luv” ought to have actuated a finding that the first Respondent was indeed violating the Appellants trade mark by using such word in marketing products similar to those being provided by the appellant.

[40]	The use of an element of a trademark, if registered, cannot be plucked out or singled out in isolation from the rest as it forms a part of the registered mark. It is on this basis that the court a quo fell into error in finding that the word ‘luv’ was a singular element on the appellant’s trademark and as such the appellant had no exclusive right over it. The court also erred in failing to realise that it is the dominant expression given by the presentation of the mark that mattered in resolving the dispute. In this vein the component ‘luv’ is part of the appellant’s mark, it cannot be divorced from the whole mark or used singularly and hence ought to be safeguarded given the fact that it is part of a registered mark.  This is buttressed by the fact that the appellant is entitled to the exclusive use of the phrase ‘luv dat’ as it constitutes an integral part of its registered mark.

[41]	I find it prudent to quote the findings by MATHONSI JA in Cairns (Pvt) Ltd (supra) in reinforcing the above conclusions. At pp 13-14 the learned judge held that:

“The proper test to be applied is an assessment of the impact which the respondent’s mark would have on the average customer leisurely doing shopping at a supermarket, for instance. Would such a customer likely know the difference? This is so because marks are generally remembered by their general impression and not the details the court a quo looked for.

It occurs to me that had the court a quo applied the proper test, it would no doubt have come to the conclusion that the notional customer encountering Royal Sun Mixed fruit jam with the visual get up of the mark used on the respondent’s logo would be deceived or confused into believing it is that of the appellant. Deception or confusion is a matter of first impression not an outcome of a study. The respondent cannot in all fairness suggest that the use of the words “Royal Sun” in conjunction with the various fruits and the words “Mixed fruit jam” was a mere coincidence…

The law protects the proprietor of a registered trade mark against the use of a mark similar to or closely resembling the proprietor’s trademark. The combination of the respondent’s registered trade mark with other objects was actionable at the instance of the appellant.

The appellant was entitled to interdict the use of the logo because it creates a deception or confusion between the appellant’s jam product and that of the respondent. The appeal has merit and should be upheld but the relief to be accorded to the appellant should be limited firstly to jam products and secondly to the offending logo and not the trade mark per se.”

[42]   The above findings are apposite to the present matter. The first respondent, which is in the same business as the appellant, has been  advertising  and marketing  its goods and services, which are similarly offered by the appellant; in the same manner as the appellant (through social media and print media); which has branding closely similar to the appellant’s (through the use of similar colours to that of the appellant) and which carries a slogan closely similar to that of the appellant, cannot seriously contend  that there is no trademark infringement by its continued use of the phrase ‘I luv it’ in respect of its product under the Chicken Slice mark.  One wonders why the first respondent could not find another phonetic equivalent of the word ‘love’ which is different from that used by the appellant and depicted in a different font and colour.

[43]   The Stated Case before the court a quo contained evidence that established that the average customer was left confused by the first respondent’s marks on its products.  There was enough evidence to demonstrate to the court a quo that the first respondent’s marketing actuated confusion to the ordinary person.

[44]   We agree with Mr Zhuwarara that the court a quo erred in failing to properly apply the legal tests attendant to trademark infringement claims. The appellant is entitled to the interdict it seeks as the continued use of the phrase ‘l luv it’, in products under The Chicken Slice mark, creates deception and confusion between the appellant’s products and the first respondent’s products as viewed by the notional consumer.

WHETHER THE COURT A QUO ERRED BY FINDING THAT THE APPELLANT HAD NOT PROVED PASSING OFF.

[45]	The appellant, in making its claim for an interdict of the infringement of its trademark, has also raised the issue of passing off. Counsel for the appellant argued that through evidence from social media the appellant proved before the court a quo that the infringement by the first respondent of its trademark had caused confusion amongst its customers and as such the first respondent had been passing off its products and services as those of the appellant. On the other hand, counsel for the first respondent denied the existence of any passing off as he argued that no evidence had been advanced to sustain that argument.

[46]	The court a quo refused to accept the evidence which was placed before it by the appellant to prove that the first respondent was passing off its products as its own. In        F W Woolworth & Co (Zimbabwe) (Pvt) Ltd v The W Store and Another 1998 (2) ZLR 402 (S) the court extensively discussed the principle of passing off. At p 407 GUBBAY CJ held that:

“… in determining whether there has been a passing-off, one enquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of one is, or is concerned with, that of another. This may be done by using a trade mark or get-up so closely resembling that of another as is calculated to cause confusion. The right to protect a trade name or get-up arises only where the name or get-up has acquired a repute and where, as a result of the acquired repute, use by others might result in a deception which will cause injury to the goodwill enjoyed by the plaintiff. It is thus necessary for the plaintiff to establish a goodwill or reputation enjoyed by him in connection with the mark or get-up copied by the defendant. Held, further, that the applicant had done nothing to establish a goodwill attached to any name, mark or get-up which it claimed was being infringed by the respondent. Although there had been an attempt by the applicant to create an exclusive mark, there was no proof whether any reputation had been successfully generated.”

See also Kellogg Company v Cairns Foods Limited 1997 (2) ZLR 230 (S)

[47]	Passing off seeks to protect a product from the deceptive tendencies of a competitor who represents its product as that of the other. As a result of such deception or misrepresentation, there should be injury or damage to reputation. Therefore, proof of reputation is a pre-requisite for passing off to be established (see Cairns Foods Limited (supra) at p 11). The court a quo in dealing with the issue of the appellant’s reputation and goodwill in relation to the claim for passing off stated that:

“Apart from the contention that the plaintiff was established in 1987, reference to a university student thesis and a few social media chats, the plaintiff has not put anything else before the court that proves goodwill and reputation. This cannot be by any stretch of imagination be taken as proving goodwill and reputation.”

[48]   We are in agreement with the court a quo’s finding on this issue. The appellant needed to do more than produce the thesis of a university student and a few chats from social media. Our view is that the appellant’s predicament came about as a result of the parties agreeing that the matter proceeds as a stated case. The appellant needed to adduce oral evidence that it ‘had acquired a repute and where, as a result of the acquired repute, use by others might result in a deception which will cause injury to the goodwill enjoyed by the plaintiff.’ This it did not do.  The Statement of Agreed Facts is silent on the factual conspectus setting out a basis for the claim. In view of the above, ground of appeal number 4 cannot succeed.

DISPOSITION

[49]   The court a quo erred in finding that there was no trademark infringement by the first respondent. The court ought to have been guided by a wholesome look at the appellant’s trademark and the dominant impression given by the appearance of the mark. Applying these guidelines, the court would have arrived at the conclusion that the word ‘luv’ is not an individual element on the appellant’s trademark. The first respondent infringed the appellant’s trademark and the appellant is entitled to the relief it seeks against the first respondent. Regarding the claim for passing off the appellant failed to establish goodwill or reputation enjoyed by it in connection with the mark in issue.

[50]	The appeal regarding trademark infringement has merit and should be upheld whilst the appeal against the claim for passing off is dismissed for lack of merit.

[51]	Regarding costs, both parties have succeeded. I see no reason why one party should be burdened with an order for costs. I therefore make none,

It is accordingly ordered as follows:

The appeal be and is hereby allowed, in part, in that the appeal against the claim for passing off is dismissed.

The judgment of the court a quo is set aside and substituted with the following:

“i. The first respondent has infringed appellant’s registered trademark under certificate under certificate no.1070/2006.

ii. The first respondent or any other person acting through it is interdicted from using a mark containing the term ‘luv’ whether singularly or as part of any other mark used in any promotional material, marketing, fliers, billboards, advertisements of whatsoever kind, container branding or similar mark in the course of trade, of its products under The Chicken Slice mark, in Zimbabwe.

iii. The first respondent or any person acting through it be and is hereby directed to cease to publish, spread, distribute or circulate any material flier, notices , containers, billboards and advertisements of whatever nature  containing the offending mark, or any mark resembling or similar to the appellant ‘s registered trademark as to likely deceive or cause confusion amongst customers.

iv.  The Sheriff of Zimbabwe and or his lawful deputies be and are hereby authorized to search for and remove to a storage facility and for the purposes of destruction all fliers, notices, stickers, labels, packaging material or  other material of  whatsoever nature  bearing the word ‘luv” or similar combination, or bearing any mark identical to or resembling the applicant’s registered trademark no. 1070/2006, and being used in respect of products under The Chicken Slice mark, from first respondent’s premises at no. 49 Borrowdale Road, Harare or any of its warehouses respectively where such goods are located.

v. The first defendant shall pay the plaintiff’s costs”

4. There shall be no order as to costs.

GUVAVA JA		:		I agree

MATHONSI JA		:		I agree

Lunga Attorneys, appellant’s legal practitioners

DNM Attorneys, 1st respondent’s legal practitioners