Cape Town - In a David-and-Goliath-like legal pickle, the Supreme Court of Appeal (SCA) has ruled in favour of a local fish and chips company, Lucky Fish and Chips, which Lucky Star had attempted to prevent from using its name.
The SCA upheld last year’s Western Cape High Court judgment dismissing Lucky Star’s case with costs.
Lucky Star had applied for a relief declaring that Lucky Fish and Chips was confusingly similar to its trademark names, Lucky Star Ltd, and had also asked for an order directing Lucky Brands to change its trading name. Lucky Fish and Chips runs several restaurants in Cape Town.
Handing down judgment in Bloemfontein, the SCA said the common elements of the Lucky Star and Lucky Brand being the word “Lucky” were of minor significance when looked at as a whole.
Lucky Star had to show in terms of section 11(2)(b) of the Companies Act that the company name of Lucky Brands was confusingly similar to its registered trademarks Lucky Star and Oceana Brands.
The court said the word “Fish”, as opposed to “Star”, was distinctive and couldn’t be ignored.
Judge Kevin Swain said: “As I understood the argument, the word ‘fish’ was descriptive of the product sold and not distinctive because the product sold by both parties was fish, in whatever form.
“I disagree, the distinctiveness of this word is not diminished simply because it also serves to describe the product sold.”
Swain said the impression created was that the brand marks did resemble each other closely, and the average customer would not be confused or deceived into believing Lucky Fish restaurants was associated with Lucky Star.
“The issue of whether the goods and or services of the respondent are, or will be the same as, or similar to those proposed by the appellant, does not have to be considered.”
Oceana Group said it was reviewing the judgment and would “proceed accordingly”.
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