IN THE NORTH GAUTENG HIGH COURT, PRETORIA 
(REPUBLIC OF SOUTH AFRICA)
CASE NUMBER: 49680/13
DATE: 13 OCTOBER 2014
In the matter between:
PIQUANTE BRANDS............................................................................FIRST APPLICANT/ OPPONENT
INTERNATIONAL (PTY) LTD
PEPPADEW INTERNATIONAL....................................................SECOND APPLICANT/ OPPONENT
(PTY) LTD
and
DINNERMATES (TVL) CC.............................................RESPONDENT/ TRADE MARK APPLICANT
In re: trade mark applications nos 2010/09721-3 
PEPPAMATES &  DEVICE in classes 29, 30 and 
31 in the name of Dinnermates (TVL) CC (“the 
trade mark applicant” and opposition thereto by 
Piquante Brands International (Pty) Ltd and 
Peppadew International (Pty) Ltd (“the opponents”)
JUDGMENT 
TLHAPI J
[1] For convenience the parties herein shall be referred to as first presented before the Registrar of Trade Marks, the applicants as the Opponents and, the respondent, as the Applicant.
During 2010 the Applicant filed an application in terms of the Trade Marks Act, 194 of 1993 (‘the Act’) for the registration of a trade mark PEPPAMATES &  DEVICE in classes 29, 30 and 31. The trade mark application was opposed in terms of section 10 (13), 10(14) and 10(17) of the Act. Counsel for the Opponents’ abandoned the opposition in terms of section 10(13) as no case had been made out in that regard. The Opponents seek the following order as outlined in the heads of argument:
“7.1.1 refusing the trade mark application nos. 2010/09721-3 PEPPAMATES &  DEVICE in classes 29, 30 and 31 in the name of Dinnermates (TVL) CC;
7.1.2 dismissing the trade mark applicant’s Rule 6 (15) application;
7.1.3 ordering the trade mark applicant to pay the costs of the main Application and the Rule 6(15) application.”
[2] Mr N J De Haaff, a director of both the first and second Opponents deposed to the founding affidavit. He averred that the Opponents are the registered proprietor and licensee in South Africa, of the PEPPADEW and device registered trade mark. This trade mark was listed first during 1996, as appears in annexure ‘NDH2’, to the founding affidavit and which annexure also illustrates the class specifications of the registered trade marks . He contended that the Opponent would be adversely affected by the registration of Applicant’s offending application in classes 29, 30 and 31 under numbers 2010/09722, 2010/09721, and 2010/09723.
A demand was made to the Applicants for the voluntary withdrawal of the offending application. The Applicant persisted in its application.
[3] According to Mr De Haaff, the Opponent and its predecessors in title ‘have made extensive use of its trade marks in South Africa and internationally in relation to various food products and related services’. ‘NDH3’ illustrated the first opponent’s South African and international portfolio and the extensive usage and ‘wide product range was illustrated by the volume of annual sales, eight hundred and fifty to one thousand (850-1000) tonnes, sold locally and that three times this amount was sold internationally.
The Opponents' trade mark incorporated ‘the distinctive PEPPA element which also incorporated a side View of a single rounded pepper and stalk device’. The Opponent contended that the offending application was very similar to that of the Opponent’s trade mark in that it too incorporated a distinctive element of ‘PEPPA’ and a side view of ‘a single rounded pepper and stalk device’. He contended that the offending application was likely to cause confusion and, that it took advantage of the Opponents’ reputation. Continued use or registration, would detrimentally affect the ‘distinctive character of the Opponents’ trademarks’.
[4] The Applicant’s answering affidavit was by its sole member Mr R V Rauch. The Applicant conducted business in the ‘processing and sale of meat products, and purchasing and sale of cooked pepper products’. Mr Rauch qualified as a Master Butcher. He was trained and acquired experience in Germany before emigrating to South Africa during 1973. He later established a processed meat business. He contended that further experience and knowledge in the industry was gained through his interaction with his customer base, and other retailers and wholesalers in the food industry.
[5] His interest in the small sweet peppers commenced when he realized that there was a ‘considerable market and demand’ for the product, ‘such as those made and sold by Opponents’ in the manufacturing and wholesale food trade. He discovered that about ten producers locally made and/ or sold the products. A Google search of the word PEPPA disclosed 14 million hits throughout the world and if limited to South Africa about 30 500 hits were disclosed. The use of the word PEPPA was applied in a wide range of goods and services offered in South Africa.
He decided to apply for registration of a trade mark which is the subject of opposition in this matter during 2010. Mr Rauch contended that at the time of application he was not aware of any trade mark confusingly similar to the one sought to be adopted by the Applicant, being PEPPAMATES. Annexure ‘RR1’ was a result of a search conducted at the South African Trademarks Office. The word PEPPA was not exclusive to the first Opponent because the search disclosed that three trade marks using the word had been registered prior to the Opponents registration and that there were various proprietors who used or intended to use the word PEPPA. He contended that the adoption of the word PEPPAMATES was done in good faith and that it was different from existing registered trademarks in the marketplace and that it was not intended to be deceptive or confusing.
[6] The Applicant contended that the Opponent had failed to provide sufficient proof that it had acquired and made extensive use of its trademark in South Africa and that reference to international standing in this regard was irrelevant. They disputed the accuracy of the figure provided regarding the volume of sales.
[7] The First Opponent contended in reply that anyone who reproduced the variety of piquante pepper which it was growing and had branded as PEPPADEW (R) would be infringing its Plant Breeder’s Rights duly registered with the Department of Agriculture. Any demand for this product was created by the Opponents hard work and that the adoption by the Applicant of ‘two distinctive features contained in the Opponents’ trademark was an attempt to take unfair advantage of the reputation of the Opponent to sell its products. According to the Opponents a search conducted prior to the application by the Applicant being filed would have disclosed that the First Opponent was the only proprietor who used the word PEPPA together with a device being a ‘single rounded fruit and stalk device’.
[8] The Applicants launched an application in terms of Rule 6 (15) of the Rule of Court, to strike out the following portions in the founding and replying affidavits:
“(a) the words “and internationally” in the second line of paragraph 9 of the of the Opponents Founding Affidavit, the word “international” in line five of that paragraph 9, and the words “and three times that amount is sold internationally each year” in the second last and last line of that paragraph 9 as well as Annexure ‘NDH 3’ of the Opponents’ Founding Affidavit;
(b) paragraph 6.2, the second sentence of paragraph 6.3 and paragraph 14.1 of the Opponent’s Replying Affidavit.”
This application was opposed.
[9] In my enquiry into the opposition and the determination of the application to strike out, I have not taken into account the Applicant’s supplementary answering affidavit because leave was not sought to file such affidavit.
[10] Section 10 of the Act provides as follows:
“10. The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of sections 3 and 70, be liable to be removed from the register:
10(14) subject to the provisions of section 14, a mark which is identical to a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same or similar to the goods or services in respect of which such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark;”
10 (17) 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, unless the proprietor of the trade mark consents to the registration of such mark,......”
SECTION 10(14) OF THE ACT
[11] Where there is opposition to the registration of a trade mark the applicant seeking registration bears the onus of proving that there is no reasonable probability of deception or confusion arising between the registered trade mark of the opponent and the trademark which the applicant seeks to register, Upjohn Company v Merck and Another 1987(3) SA 221 at 224 G-H; Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Pic 1995 (2) SA 903 (A) at 909G-910H.
In Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) at 947 H to 948D it was determined that section 17 (1) of the 1963 Act created an absolute bar to registration if there was a probability to deceive or confuse and that the danger of confusion and deception had to be real. The ‘ultimate test' that the court had to engage was to make a value judgment, having conducted a comparison of the two marks, whether there was a probability that there might be confusion and deception when the two marks were used together in a ‘normal and fair manner during the ordinary course of business’. The value judgment involved:
“the 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”
[12] Counsel for the Opponent argued that in using the notional test the Applicant had failed to discharge its onus by illustrating that the products would not be served or sold on the same shelves in the wholesale or any other trade. Counsel for the Applicant conceded that Applicant bore the onus but argued that the trite Plascon Evans rule in dealing with disputes of fact still had to be observed.
I am in agreement with the submissions in the heads of argument for the Opponent on the approach to be adopted in opposition applications and this approach was affirmed in Orange Brand Services Ltd and Account Works Software (Pty) Ltd (an unreported judgement of the SCA case number 970/12) where Nugent JA stated at paragraphs 6 and 7:
Paragraph 6
“.....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, that is, how they might notionally be used.
In this case if both marks were to be registered, the respective parties would be entitled to use them in relation to computer software, including software for accounting and the question is whether it would be likely to cause confusion if both marks were to be used in that way”
Paragraph 7
“As it was expressed in Bristol Laboratories Inc v Ciba Ltd 1960 (1) SA 864 (A) at 871 C-E which was affirmed in Adcock Ingram Intellectual Property (Pty) Ltd 2012 (4) SA 238 (SCA) paras 14-15... The question is not what the appellant says it intends doing, but what it will be permitted to do if its application is granted in respect of ail goods in class 3. In my opinion it is correct to say as Romer J held in Jellinek’s Application, 63, RPC, 59 at p. 78 that:
“The onus must be discharged by the applicant in respect of all goods coming within the specification applied for, and not only in respect of those goods on which he is proposing to use (the mark) immediately, nor is the onus discharged by proof only that any particular method of the user will not give rise to confusion, the test is, what can the applicant do”
[13] In the Orange matter supra, the factors espoused in order to establish the probability of confusion or deception in the locus classicus, Plascon- Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) by Corbett JA at 640 G-H and 641 A-D was again affirmed:
“In an infringement action the onus is on the plaintiff to show the probability or the likelihood of deception or confession. It is not incumbent upon the plaintiff to show every person interested or concerned (usually as customer) in the class of goods for which his trade mark has been registered would probably be deceived or confused. It is sufficient if the probabilities establish a substantial number of such persons will be deceived or confused. The concept of deception or confusion is not limited to inducing in the minds of interested persons the erroneous belief or impression that the goods in relation to which the defendant’s mark i.e the plaintiff, or that there is a material connection between the defendant’s goods and the proprietor of the registered mark; it is enough for the plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of such a connection.
The determination of these questions involves essentially 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. This notional customer must be conceived of as a person of average intelligence, having proper eyesight and buying with ordinary caution. The comparison must be made with reference to the sense, sound and appearance of the marks. 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. It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant’s mark, with an imperfect recollection of the registered mark and due allowance must be made for this.
If each of the marks contains 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 a photographic recollection of the whole. And finally consideration must be given to the manner in which the marks are likely to be employed as, for example, the use of name marks in conjunction with a generic description of the goods. ”
[14] Counsel for the Applicant, correctly conceded that the determination of this matter did not hinge upon the revelation of the thousands of hits of the use of the word PEPPA in an Internet search, even though he argued it was meant to show that the spelling variations were commonplace and that the Opponents were not the originators of the word PEPPA. Counsel for the Opponent argued that evidence of the search had to be disregarded because the Applicant failed to comply with the provisions for the admissibility of computer evidence as envisaged in the Electronic Communications and Transactions Act, 25 of 2002.
[15] It was further submitted for the Applicant that annexure ‘RRI’ revealed that the registration of various trade marks incorporating the word PEPPA was indication that the Opponent was not the originator of the word PEPPA and could not claim exclusive rights to the word. An analyses of the last column of the annexure under the heading ‘status of mark’ does not exclusively reflect registered trade marks. The Opponent argued that production of ‘RR1’ which was also not dated, was not relevant to the determination of the matter,. What was called for was evidence that there was common use of the word in the trade in all respects. An example was given of PEPPAMELT which was registered by Spur and which it was said could coexist with that of the opponent because the goods and services were different. The document was therefore not proof that there were many registrations using PEPPA. Furthermore that according to the annexure only three proprietors had marks incorporating PEPPA but these did not incorporate the use also of the device and that coexistence was permissible because the proprietors dealt with different goods and services.
[16] Now reverting back to the value judgement and the process to be engaged. The question is whether there is a probability of deception to the ordinary consumer who is used to a particular brand, that is, the Opponent’s when confronted with the Applicant’s brand. It was argued for the opponents that it was not about the Opponent, seeking a monopoly of the use of the word. What had to be considered was the conduct of the ordinary person of average intelligence who uses a particular brand but does not pay attention to the particularity of that brand and, what the same person would do when encountering the Applicant’s product in a store or any other trade. In Piascon-Evans Paints Ltd matter supra reference was made to:
‘the sense, sound and appearance of the marks viewed as encountered in the market place against the background of surrounding circumstances’.
The Applicants must satisfy the court that there shall be no reasonable probability of confusion or deception arising.
[17] In this matter there are three aspects to look at, being the word PEPPA, the adoption of the ‘single rounded pepper and stalk device’ and the goods and services for which the trade marks are registered against the goods and services applied for. The difference in words PEPPADEW and PEPPAMATE were in the -DEW and MATE. After removal of the DEW and MATE one is still left with the device and a comparison of the goods and services under the registered trademark in classes 29 and 30 and, those in the Application in classes 29, 30 and 31. In determining the opposition in terms of section 10 (14) of the Act, I am of the view that the similarities do exist to such a degree that there was probability of confusion and deception arising and that the Opponent has made out a proper case.
SECTION 10 (17) OF THE ACT
[18] Counsel for the Applicant argued that the Opponent had failed to deal with sections 10 (6) and 35 of the Act, in order to establish international reputation. He contended that the Opponents trade marks were not in the league of the famous McDonalds, Coca-Cola or Rolls Royce. The opposition could therefore not succeed on the basis of section 10 (17) because the Opponent had failed to prove that the marks were similar or that the Opponents’ marks were well known in the Republic of South Africa. It did not matter whether they were well-known internationally. He argued further that the purpose of the section was ‘to protect against trade mark dilution even though there was no possibility of deception or confusion’.
Counsel for the Opponent contended that the Applicant was attempting, to ride on the back of the reputation of the Opponent and to obtain some unfair advantage in relation to similar goods. She argued that what was important to consider was that the trade mark PEPPADEW was an invented word related to a specific picuante pepper, which was marketed as such locally and internationally. Furthermore, that while the word was not descriptive of the product, the adopted word together with the device and the goods and services constituting the registered trademark, distinguished the Opponents’ product from those of other proprietors.
[19] In the ‘McDonald’s’ case (McDonald’s Corporation vJoburgers Drive-In Restaurant (Pty) Ltd; McDonald’s Corporation v Dax Prop CC; and McDonald's Corporation vJoburgers Drive-In Restaurant 1997 (1) SA 1 (A)), which had to do with an application under section35 of the Act, Grosskopf JA stated that in developing the meaning of a Well-known’ trade mark, the common law test of determining whether a proprietor had a reputation to succeed in a passing off action, was applicable. There the ‘well-known’ trade mark was said to be one that was known by a substantial number of persons. In Triomed (Pty) Ltd v Beecham Group Pic 2001 (2) SA 522 (T) 556 C-D, it was found to be appropriate to extend the meaning so assigned in McDonald’s supra, ‘to the interpretation of ‘well-known in the Republic' as this expression appears in section 34(1 )(c) of the Act”. In my view the same meaning could be attached to section 10(17) of the Act.
[20] Counsel for the Opponent submitted as outlined in her heads of argument that, as recommended by authors Webster and Page (para 12.27 and para 12-56)
our courts:
“should give consideration to additional factors listed in the United States Federal Trade Mark Dilution Act (which are essentially the same as the practice guidelines for determining reputation for the purposes of section 10(3) of the United Kingdom Trade Marks Act of 1994 suggested to the United Kingdom Government by the Trade Mark Association)
5.6.1 The degree of inherent or acquired distinctiveness of the mark;
5.6.2 The duration and extent of use of the mark in connection with the goods or Services;
5.6.3 The duration and extent of advertising and publicity of the mark;
5.6.4 The geographical extent of the trading area in which the mark is used;
5.6.5 The channels of trade for the goods or services with which the proprietor’s mark is used;
5.6.6 The degree of recognition of the proprietor’s mark in the respective parties trading areas and channels of trade; and
5.6.7 The nature and extent of use of the same or similar sign by third parties.”
The courts in the cases of McDonald’s and Triomed supra were given extensive evidence which made it possible to apply the necessary factors to be considered in determining the reputation of the offending trade marks. I find such information lacking in this regard. As I see it, the enquiry into section 10(17) of the Act was not about taking judicial notice, as was argued for the Opponent, of the reputation of the Opponent. The enquiry should be about whether the use or intended use by the Applicant had the potential of taking unfair advantage and of diluting the ‘uniqueness or distinctive nature’ of the registered trade mark of the Opponent. In this matter the objective enquiry into the opposition was limited to what was contained in paragraphs 9 and 12 to the founding affidavit, and paragraphs 6.2, 6.3 and 14.1 to the replying affidavit, notwithstanding the fact that certain contents of these paragraphs are the subject of the striking out application. I am therefore not satisfied that the Opponent has made out a case to support its opposition based on section 10(17). Consequently, it is not necessary to consider the striking out application.
[21] In the circumstances I give the following order:
1. The application in terms of Rule 6(15) is dismissed and each party is to pay its own costs;
2. The trade mark application nos. 2010/09721-3 PEPPAMATES &  DEVICE in classes 29, 30 and 31 in the name of Dinnermates (TVL) CC is refused;
3. The trade mark Applicant is to pay costs of the main application
TLHAPI V. V 
(JUDGE OF THE HIGH COURT)
MATTER HEARD ON : 24 MARCH 2014
JUDGMENT RESERVED ON: 27 MARCH 2014
ATTORNEYS FOR THE APPLICANTS: DM KISCH INC
ATTORNEYS FOR THE RESPONDENTS: BERDOU ATT.
C/O FRIEDLAND HART 
SOLOMON & NICOLSON