In facing the elephant in the room, the Western Cape High Court had to decide on the battle of the liqueur trademarks - the well-known South African Amarula vs. Afrula, which was said to be a newcomer to the South African market.
The Southern Liqueur Company (applicant) turned to the Western Cape High Court to protect its Amarula trademark against that of Noble Spirit’s (respondent) Afrula.
The Southern Liqueur Company, a producer of alcoholic beverages including the Amarula Cream Liqueur, asked for the intervention of the court to restrain Noble Spirit from infringing its rights, which have been acquired through statutory provisions and the common law.
Noble Spirit trades in the liquor and retail products industry including cream liqueur. It intends to commence the production of a marula cream liqueur under the trademark Afrula and utilizing the Afrula getup. Noble Spirit indicated that the product is currently not available in the South African market.
The Southern Liqueur Company argued that the trademark Afrula is confusingly similar to their Amarula and is likely to result in deception and confusion among the public regarding goods bearing the parties’ respective trade marks.
According to the Southern Liqueur Company, any use made by Noble Spirit of the mark Afrula is likely to exploit and take unfair advantage of its well-known Amarula mark.
The company said it learnt that the respondent applied to register the Afrula trademark in the same class as its mark.
On both products, the parties’ respective trademarks Amarula and Afrula appear prominently.
On the Amarula product, the elephant-themed device appears directly below the Amarula trademark. On the Noble Spirit label, there seems to be what the applicant sees as a side profile of an elephant head or, as they put it, an “African woman.”
The Southern Liqueur Company said that a consumer will, upon first impression, be confronted with the mark Afrula, combined with an elephant device used in relation to a liqueur product, against a background of a distinctly African motif.
Noble Spirit stated its intention to commence production and sale of a marula cream liqueur under the name and style Afrula in South Africa, subsequent to the registration of the mark Afrula.
Their belief is that there can be co-existence in the marketplace for both marks, as the similarity between the marks is confined solely to the segment “rula” and that sophisticated consumers will be able to distinguish between Afrula and Amarula when presented visually, whether on screen or store shelves.
The Southern Liqueur Company described it as having expended considerable time, money and effort in the promotion of its product in South Africa. Their advertising figures in respect of the Amarula product between 2009 to 2018 topped R373 million.
Over the years, the Amarula brand has received various awards and accolades and received particularly extensive coverage during the 2010 FIFA World Cup Tournament in South Africa.
Acting Judge RK Parker said consequently, Noble Spirit’s conduct is likely to take unfair advantage of the distinctive character and reputation of the “Amarula” mark in a manner that is unfair. The judge, however, noted that the respondent’s product is not yet on the shelves and thus is without a market presence at this stage.
“In my view, there is no passing off as yet... I am though satisfied that the applicant’s registration of its trademarks protects its rights from infringement,” the judge said.
Noble Spirit was interdicted from infringing on the Amarula trademark.
Cape Times