Take Away food giant Chicken Inn has won its appeal against local competitor Chicken Slice, regarding trademark infringement rights over Chicken Slice’s use of the word and spelling “luv”, which Chicken Inn had set as a trademark and Chicken Slice is now banned from using that spelling.
Chicken Inn, owned by Simbisa Brands but with the owner
listed in court papers as Inscor Africa, the original owner before it was split
into four independent companies, had sued Slice Distributors at the High Court
last year for using the word “luv” in the Chicken Slice and Burger trademark
which reads “I luv it”.
The issues for determination were whether Chicken Slice
infringed Chicken Inn’s registered trademark in any way and whether the Slice
company passed off any of its products as those of Chicken Inn as alleged.
In the end, the High Court early this year, rejected the
Chicken Inn application ruling that Chicken Inn had no exclusive right to the
word “luv”, adding that consumers would not be confused by the two products
anyway. This prompted Inscor to approach the Supreme Court on appeal.
The court yesterday decided that Chicken Slice violated the
trademarks of Chicken Inn.
Chicken Inn came up with the word “Luv” when it made “Luv
dat chicken” a trademark in 1987.
In addition, Chicken Inn said Chicken Slice’s colours
scheme was strikingly similar to its own and the similarity in the trademarks
and colours caused confusion among consumers.
Chicken Inn lost an original action against Chicken Slice
soon after the competitor opened in around 2012 for using a logo similar to
Chicken Inn, with the courts taking the view that there were enough differences
not to amount to an infringement.
This time a three-judge panel of the Appeals Court
comprising Justice Lavender Makoni, Justice Antonia Guvava and Justice Nicholas
Mathonsi unanimously found merit in the appeal on the use of the word “Luv” and
quashed the lower court’s decision. But Chicken Inn could not sustain its
argument that Chicken Slice was trying to pass off its products as those of
Chicken Inn.
The judges agreed with Inscor lawyers Advocate Tawanda
Zhuwarara and Advocate Rino Zhuwarara that Chicken Slice owned by Slice
Distributors had violated trademarks owned by Innscor when it used the word
“luv” in its advertising and promotions.
Justice Makoni who wrote the judgment for the court noted
that, Chicken Slice, which is in the same business as Chicken Inn, has been
advertising and marketing its goods and services, which are similarly offered
by Chicken Slice in the same way as Chicken Inn through social media and print
media.
“Chicken Slice cannot not seriously contend that there is
no trademark infringement by its continued use of the phrase “I luv it” in
respect of its product under the Chicken Slice mark,” she said.
“One wonders why the first respondent (Chicken Slice) could
not find another phonetic equivalent of the word ‘love’ which is different from
that used by the appellant (Chicken Inn) and depicted in a different font and
colour.
“We agree with Mr Zhuwarara that the court a quo erred in
failing to properly apply the legal tests attendant to trademark infringement
claims.
“The appellant is entitled to the interdict it seeks as the
continued use of the phrase “l luv it,” in products under The Chicken Slice
mark, creates deception and confusion between the appellant’s products and the
first respondent’s products as viewed by the notional consumer.”
The judgement is an indication that the Zimbabwean Courts
stand ready to enforce trademarks once they are registered. This decision also
serves as a warning to all businesses who attempt to carry out
misrepresentation of a mark, to take advantage of the reputation of a
competitor’s product, by copying or creating a confusingly similar mark,
thereby leading to illegal and unfair competition.
In October 2021, the Supreme Court settled the long-running
trademark and trade dress infringement row pitting Cairns Foods Limited and
Netrade Marketing Private Limited ruling that in Zimbabwe its unlawful to copy
another person’s trademark to sell your own products with branding likely to
mislead ordinary customers.
Cairns Foods had appealed against a High Court decision
dismissing its lawsuit against Netrade, which was producing and selling a
product called Royal Sun Jam, featuring the trademark and tread patterns that
infringed Cairns Foods trademark.
This violated the Trade Marks Act because the name Sun Jam
is a registered trademark of Cairns foods. The trademark is 50 years old.
Interestingly Cairns Foods was represented by Adv Zhuwarara
in that case.
Both cases establish
Zimbabwe as a jurisdiction that takes commercial rights seriously. Herald:
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