Cape Cookies trademark attempt crumbles

THE COOKIE has crumbled for notorious biscuit manufacturer, Cape Cookies, who have been told they cannot trademark their SnackCrax biscuit brand as a “savoury biscuit” as it would cause confusion in the market with its competitor, Salticrax.

The Supreme Court of Appeal (SCA) recently upheld an appeal by National Brands Limited to not register the trademark for Snackcrax in class 30 relating to savoury biscuits.

National Brands opposed the application on various grounds based of the Trade Marks Act. One such ground was section 10 (17) of the act which prohibits the registration of “a mark which is identical or similar to a trade mark which is already registered and which is well-known in the Republic. If the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion.”

During litigation, Cape Cookies accepted that Salticrax is well known in the Republic but argued that Snackcrax had as “its dominant element the suffix ‘crax’, that this was a word in common use as a shortened form of ‘crackers’ and was non-distinctive”.

This argument was dismissed as it did not reflect in dictionaries.

The SCA in its judgment held that the two marks were similar and if the trademark registration went ahead it “would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of Salticrax”.

Excerpts of the judgment read: “In support of its contention that item (e) was satisfied, National Brands made the point that, for a period of 58 years, it was the only proprietor of a mark which included the expression ‘CRAX’ in any guise or form in class 30. At the time of the application by Cape Cookies for the registration of Snackcrax, there were three such marks appearing in the Trade Marks Register: Salticrax, Cape Cookies’ Vitacrax and trade mark registration no. 2009/24890, ETI CRAX, in the name of a third party who, when requested by National Brands to cancel the registration, did so. Cape Cookies were also requested to cancel the

Vitacrax mark and refused, leading to (another separate) litigation.”

SCA Justice Trevor Gorvan said: “With that in mind, I turn to a comparison of the two marks. It has also been made clear that in opposition proceedings the question that falls to be decided is not how the parties use or intend to use their marks, but how they would be entitled to use them if both were to be registered…

“With that as a backdrop, the long-accepted approach as to how to compare word marks must be applied: You must take the two words.

“You must judge them both by their look and their sound. You must consider the goods to which they are to be applied.

“You must consider the nature and kind of customer who would be likely to buy those goods.

”In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks,” said Judge Gorvan.

Enquiry attempts made to both companies were still unanswered by deadline.