The recent Supreme Court of Appeal (SCA) decision in the case of Roodezandt Ko-operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd and the Registrar of Trade Marks isn’t ground-breaking, but there’s some interesting stuff in there.

A company had a registration for the mark Robertson Hills in class 33 for wines. A competitor who had earlier registrations for the marks Robertson Winery & Label, Robertson Vineyards and Roberstoner – as well as proof of considerable use of the markRobertson Winery going back to 1947 – applied to cancel the Robertson Hills registration. This attack was based on the sections of the Trade Marks Act that deal with the likelihood of confusion arising from an earlier registration and from the use of another mark. For those who aren’t from these parts, I should mention that Robertson is a town in the Western Cape, and the area surrounding it is well known wine country – one of the earlier registrations, Robertson Vineyards, in fact has a disclaimer of exclusive rights to the name Robertson in a geographical sense.

The court found that there was a likelihood of confusion and that the registration should be cancelled. Dealing with the fact that Roberston has a geographical significance, the court said this: ‘Although Robertson is not a constructed or invented word but the name of a town, this does not necessarily mean that it could never acquire distinctiveness with reference to wine.’ In support of this the court referred to an earlier decision that it had given in the case involving the Century City precinct of Cape Town, where it had mentioned Windhoek – the capital city of Namibia, and also a well-known beer in South Africa – as an example of such a mark.

A related issue that was raised was the fact that Robertson is the name of a defined production area for wine in accordance with the so-called ‘Wine of Origin’ (WO) scheme. The court here referred to two recent SCA decisions – those involving the wine marks Swartland and Zonquasdrift – and said that trade marks and the WO scheme are different and distinct things, with a trade mark being a badge of origin for the wine, and the WO scheme being a badge of origin for the grapes from which the wine is made.

The final issue was this: if a registration is cancelled, does the cancellation date back to the date on which the trade mark was registered, or the date on which the application for cancellation was brought? The court opted for the latter, feeling that back-dating a cancellation to the registration date could have serious consequences, especially in the case of a trade mark has been used.

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