The decision of the KZN High Court in the case of Distell v KZN Wines & Spirits is interesting. The facts – Distell had a trademark registration covering whisky for the mark Knight’s Gold (with disclaimers of exclusive rights to the surname ‘Knight’ and the word ‘Gold’), and another for a label featuring the name Knight’s, whereas KZN Wines sold a whisky called Black Knight. Distell sued for trademark infringement and passing off.

The court decided that there was no trademark infringement. The judge accepted the argument that whisky drinkers are a discerning lot who are not easily fooled. Said the judge: ‘Counsel for the applicant submitted that both products are sold in a bar or crowded lounge, and if ordered verbally, the noise would be such that when a customer articulates the applicant’s whisky, the barman or waiter as the case may be, would be deceived or confused into believing that the customer is asking for the respondent’s whisky. I do not share these sentiments. In my view, counsel for the respondent is correct in stating that even though whisky is a popular drink, it is not a cheap drink. Consequently, a consumer is likely to exercise circumspection and a greater degree of care in making a purchase. It is not an overstatement that whisky drinkers take pride in the product and assimilate in it such that they are able to distinguish whether it is single malt or blended as well as a source of origin…I am inclined to find that it is unlikely that the notional purchaser of the applicant’s whisky, even with an imperfect recollection or perception, when confronted with BLACK KNIGHT, would focus attention only on the word KNIGHT and ignore the word BLACK. To my mind, the whole mark BLACK KNIGHT serves to distinguish the respondent’s whisky from that of the applicant.

Even if you don’t agree with the conclusion – and I don’t because I think ‘Knight’ is a strong mark for whisky and bar-room confusion is likely – the judgment does remind us that the nature of the product and the likely consumer must be considered when it comes to deciding the likelihood of confusion.

The court also held that there was no passing off. An unusual feature of the case was that Black Knight had been on the market since 2002, and the judge said that Distell had made the error of proving that it had a reputation at the date when the proceedings were instituted but not at the date when Black Knight first made its appearance. The court said that there were significant differences in the get-ups – a major difference between trademark infringement and passing off is that in passing off cases the surrounding elements (get-up) can be considered. And the court said that it was very relevant that Distell had been unable to prove a single instance of actual confusion in 11 years.