A long-running trademark saga came to an end when the Supreme Court of Appeal handed down judgment in the case of Distell Limited v KZN Wines and Spirits CC. The issue in this case was this: Did KZN Wines’ Black Knight whisky infringe Distell’s class 33 (whisky) registrations for Knight’s Gold and Knights & Device?
The first court had held that there was no likelihood of confusion. The judge there said that, because whisky is an expensive product, the consumer is ‘likely to exercise circumspection and a greater degree of care in making a purchase.’
The SCA upheld the first court’s decision. Judge Lewis made it clear from the off that she didn’t think confusion was likely. She first said this: ‘Distell argues that the dominant word in each of its marks is ‘knight.’ That is obviously so in respect of the one. It is not obviously so in respect of Knight’s Gold. Nor is it obvious in respect of Black Knight.’ She went on to say that the word black‘simply cannot be ignored’, and that it would distinguish the defendant’s product. As for the word gold, she said that ‘although Distell tried to argue that knight is the dominant word even in Knight’s Gold, it is hard to see why.’
A SA judge once said this in a case involving drinks trademarks: ‘On a convivial occasion, enlivened by the use of beer and spirts, recollection may fade and articulation may deteriorate with the passage of time.’ It seems to recognize that drinks trademarks may be a little different from others. But notwithstanding this, Judge Lewis did not think that there would be confusion. She said this: ‘Even the consumer with an imperfect recollection and in a noisy pub or crowded bottle store is not likely to be confused as to the origin of Black Knight.’
Finally Judge Lewis made much of the fact that there was no proof of actual confusion. Although such proof isn’t a pre-requisite, judges are increasingly saying that if there is no evidence of actual confusion then there’s no real likelihood of confusion. It’s something that trademark owners need to bear in mind.
There will be those who don’t agree with this decision. Because the words ‘black’ and ‘gold’ are really pretty weak indeed.