THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Not Reportable
Case no: 497/2021

In the matter between:

GOLDEN FRIED CHICKEN (PTY) LTD
APPELLANT

and

DINO VLACHOS

FIRST RESPONDENT

SOUL SOUVLAKI (PTY) LTD

SECOND RESPONDENT

Neutral citation: Golden Fried Chicken (Pty) Ltd v Vlachos and Another
(497/2021) [2022] ZASCA 150 (3 November 2022)
Coram:
PETSE
AP,
MAKGOKA,
GORVEN
AND
MABINDLA-
BOQWANA JJA and BASSON AJA
Heard:
2 September 2022
Delivered: 3 November 2022
Summary: Intellectual Property – Trade Marks Act 194 of 1993 – infringement
proceedings – registered mark – test for deception or confusion under s 34(1)(a) of
Trade Marks Act – sufficient distinction between the marks – deception or confusion
not established.

__________________________________________________________________
ORDER
______________________________________________________________________________
On appeal from: Gauteng Division of the High Court, Johannesburg (Yacoob J
sitting as court of first instance):
The appeal is dismissed with costs.

__________________________________________________________________
JUDGMENT
__________________________________________________________________
Gorven JA (Petse AP, Makgoka and Mabindla-Boqwana JJA and Basson AJA
concurring)

[1] This appeal concerns the alleged infringement of a registered trade mark under
the Trade Marks Act 194 of 1993 (the Act). The parties trade in food services in the
restaurant sector. The appellant, Golden Fried Chicken (Pty) Ltd, trades as ‘Chicken
Licken’ through a number of food outlets. It began trading in 1981. It has registered
the words ‘Soul’ and ‘Soul Food’ under classes 29, 30, 35 and 43 of the Act. They
are used extensively in its branding. It is only the registration in class 43 as a service
trade mark which remains relevant in this appeal.

[2] The first respondent, Mr Dino Vlachos, is the guiding mind behind the second
respondent, Soul Souvlaki (Pty) Ltd, which has traded in Greek food from two
outlets under the name ‘Soul Souvlaki’ since 2012. The second respondent has

applied to register the trademark ‘Soul Souvlaki’ in classes 35 and 43. Although
there was some dispute as to the joinder of the first respondent, the two respondents
made common cause and, for the sake of convenience, I shall refer to them jointly
as the respondents unless it is necessary to distinguish them.

[3] The appellant regards the use by the respondents of ‘Soul Souvlaki’ as
infringing its mark. It accordingly approached the Gauteng Division of the High
Court, Johannesburg (the high court) to interdict the respondents from doing so. This
was met by a counter-application to remove the trade marks of the appellant from
the register in all four classes as being non-distinctive. The high court dismissed both
the application and counter-application with costs and refused the appellant leave to
appeal. The respondents sought leave to cross-appeal. The high court said that the
application for leave to cross-appeal was conditional and held that it was therefore
unnecessary to decide it. This Court granted the appellant leave to appeal against the
dismissal of its application. The respondent did not pursue its application for leave
to cross-appeal. This renders final the judgment on the counter-application.

[4] Paragraph 1 of the Notice of Motion had sought interdicts against the
respondents restraining them from infringing the marks of the appellant in classes
29, 30, 35 and 43 along with the usual ancillary relief. Before us, the appellant
abandoned any relief in all but the registrations in class 43. The registration of the
‘Soul’ mark in the various classes took place in 1994, 1996 and 2001, whereas the
‘Soul Food’ mark was registered in 2001. It should be mentioned that, before us, the
appellant did not develop its argument concerning the ‘Soul Food’ mark. It contented
itself with limiting its submissions to ‘Soul’.

[5] The relief now sought is limited to that under s 34(1)(a) of the Act which
reads:
‘(1) The rights acquired by registration of a trade mark shall be infringed by-
(a)   the unauthorised use in the course of trade in relation to goods or services in respect of
which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to
be likely to deceive or cause confusion.’1
It has been held that in order to succeed in an infringement claim under s 34(1)(a),
the appellant had to establish:
‘(i) its trade mark registrations; (ii) unauthorised use in the course of trade by the respondent of an
identical mark or a mark so nearly resembling its registered trade mark as to be likely to deceive
or cause confusion; and (iii) in relation to the goods in respect of which the mark is registered.’2
The trade mark of the appellant is registered in relation to services which cover:
‘Restaurants, snack bars, cafes, fast food outlets, canteens and roadhouses; services
connected with the sale and distribution of foodstuffs and refreshments; catering.’
The respondents’ mark relates to two food outlets which fall within this class. Their
use takes place in the course of trade and is not authorised by the appellant. It is
therefore the balance of the second of the requirements set out above which had to
be established by the appellant. That is, use of ‘an identical mark or a mark so nearly
resembling its registered trade mark as to be likely to deceive or cause confusion’.
This appeal turns on whether the appellant established this.

1 An alternative claim was framed under s 34(1)(c) of the Act which reads:
‘the unauthorised use in the course of trade in relation to any goods or services of a mark which is identical or similar
to a trade mark registered, if such trade mark is well known in the Republic and the use of the said mark 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 confusion or deception: Provided that the provisions of this paragraph shall not
apply to a trade mark referred to in section 70 (2).’
This aspect of the matter was not pressed in the appeal.
2 Lucky Star Ltd v Lucky Brands (Pty) Ltd [2016] ZASCA 77 para 4. This related to goods but the same principles
apply to service marks. See also Commercial Auto Glass (Pty) Ltd v BMW AG [2007] SCA 96; 2007 (6) SA 637 (SCA)
[2007] 4 All SA 1331 (SCA) para 3.

[6] A trade mark serves as a badge of origin of the services offered.3 Persons
seeing the mark can rest assured that the appellant is the source of the services
offered under it. For that reason, a trademark constitutes a monopoly. Due, no doubt,
to a trade mark functioning as a monopoly, it cannot ‘be interpreted to give greater
protection than that which is necessary for attaining the purpose of a trade mark
registration, namely protecting the mark as a badge of origin’.4 The proper approach
to this assessment was set out by this Court:
‘What is, accordingly, required is an interpretation of the mark through the eyes of the consumer
as used by the alleged infringer. If the use creates the impression of a material link between the
product and the owner of the mark there is infringement; otherwise there is not.’5

[7] If the marks were identical, the use of the impugned mark is taken to deceive
and confuse.6 The appellant submitted that this was the case, seeking support for that
contention in Commercial Auto Glass.7 In that matter the appellant had listed cars
which its windscreens would fit. In doing so, it used the BMW mark without
authorisation. The defence in that matter was not that the marks were not identical
but that the appellant was simply informing customers that those particular
windscreens could be used on those BMW cars. As a result, it said, it was not using
the lettering on its windscreens as trade marks. This Court rejected that contention.
To meet the submission that the marks in the present matter were identical, the
respondents called in aid the matter of Century City Apartments Property Services
CC and Another v Century City Property Owners’ Association (Century City).8 In

3 Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd [2007] ZASCA 53; 2007 (6) SA 263 (SCA) para 5.
4 Ibid para 5.
5 Ibid para 7.
6 Berman Brothers (Pty) Ltd v Sodastream Ltd 1986 (3) SA 209 (A) at 232H-233A.
7 Commercial Auto Glass fn 2.
8 Century City Apartments Property Services CC and Another v Century City Property Owners [2009] ZASCA 157;
2010 (3) SA 1 (SCA); [2010] 2 All SA 409 (SCA).

that matter, this Court referred with approval to the European Court of Justice when
it held that ‘(t)he criterion of the identity of the sign and the trademark must be
interpreted strictly. The very definition of identity implies that the two elements
compared should be the same in all respects’.9

[8] Only one aspect of the two marks is identical; the word ‘Soul’. But even
though this element forms part of the respondent’s mark, the word ‘Souvlaki’ is not
common to them. In Century City, this Court found that the marks ‘Century City’
and ‘Century City Apartments’ were not identical. This applies equally to the
comparison between ‘Soul’ and ‘Soul Souvlaki’. The marks are not identical.

[9] The question, then, is whether the appellant made out a case under the second
aspect. Here the appellant bore the onus of proving the probability of deception or
confusion. As was said by this Court:
‘There can only be primary trade mark infringement if it is established that consumers are likely
to interpret the mark, as it is used by the third party, as designating or tending to designate the
undertaking from which the third party's goods originate.’10
This dictum applies equally to services. It is important to recognise what should be
compared:
‘[In] considering the question of infringement the Court should have regard not only to the
plaintiff's actual use of his registered mark, but also to notional use, that is to all possible fair and
normal applications of the mark within the ambit of the monopoly created by the terms of the
registration’.11

9 Ibid para 12, citing LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ETMR 83 (European Trade Mark Reports) para
50.
10 Verimark fn 3 para 5. Emphasis in the original.
11 Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 641G-H, confirming the
acceptance of Botha J in Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530
(T) at 535A-D of the approach set out in the matter of Lever Brothers, Port Sunlight, Ltd v. Sunniwite Products Ltd

The actual and notional use of the owner is then compared to the actual use by the
alleged usurper to establish whether or not there has been infringement.

[10] As mentioned, the registration under class 43 relates to services including:
‘Restaurants, snack bars, cafes, fast food outlets, canteens and roadhouses; services
connected with the sale and distribution of foodstuffs and refreshments; catering.’
The appellant is thus entitled to use the mark in any of these undertakings,
irrespective of past and present uses. If it does so, its trade mark affords it protection
against infringement. The only rider is ‘that one has to assume reasonable notional
use by a trademark owner’.12 The appellant thus correctly submitted that in the
comparative exercise between the registered and impugned marks, the services in
respect of which the registered mark were actually used are ‘completely irrelevant’.

[11] Our courts have consistently applied the test set out in Plascon-Evans Paints
Ltd v Van Riebeeck Paints (Pty) Ltd13 for the approach to s 34(1)(a). It is not
necessary to repeat that entire passage since it was summed up in Bata:
‘It suffices to say that not only should the marks be compared side by side but consideration must
be given to whether the average customer in the marketplace would probably be deceived or
confused by their similarity. Corbett JA made it clear that the main or dominant features of the
marks in question as well as the general impression and any striking features were all factors to be
considered in deciding whether there was a likelihood of confusion or deception.’14
When applying the similar test in Adidas to the present matter, the approach is:

(1949) 66 R.P.C. 84. See also Bata Ltd v Face Fashions CC and Another [2000] ZASCA 192; 2001 (1) SA 844 (SCA
para 7; Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd [2010] ZASCA 140; 2010 (2) SA 600 (SCA) para
10; Lucky Star Ltd v Lucky Brands (Pty) Ltd [2016] ZASCA 77 para 9.
12 Century City fn 8 para 14.
13 Plascon-Evans at 640G-641D.
14 Bata fn 11 para 9.

‘The onus can be discharged by showing that there is a likelihood that a substantial number of
people who . . . are interested in [restaurants] will be confused as to whether the [respondents’
restaurants] are the [restaurants] of the [appellant], or as to the existence or non-existence of a
material connection between the [respondents’ restaurants] and the [appellant as an operator of
restaurants].’15

[12] No disclaimer was required on registration of ‘Soul’.16 In trade mark law the
effect is that, for purposes of matters such as this, unless or until that mark is
expunged, it must be accepted that ‘Soul’ is inherently distinctive and, in the case of
those registrations after 1994, capable of distinguishing by reason of the prior use
thereof. This is despite the word ‘soul’ being in common, everyday use.

[13] In the present matter, there is no dispute that ‘Soul Souvlaki’ is a trade mark.
Indeed, the respondents sought registration of that mark. In opposing the merits of
the main application, the respondents relied on two bases. They first contended that
the two marks were ‘visually, conceptually and phonetically different’. As a
consequence, they submitted, there was no likelihood of deception or confusion
caused by the use of their mark. Secondly, they claimed that the businesses of the
appellant and the second respondent differed substantially from each other. It is clear

15 Adidas fn 11 at 533C-E.
16 Section 15 of the Act provides:
‘If a trade mark contains matter which is not capable of distinguishing within the meaning of section 9, the registrar
or the court, in deciding whether the trade mark shall be entered in or shall remain on the register, may require, as a
condition of its being entered in or remaining on the register-
(a)   that the proprietor shall disclaim any right to the exclusive use of all or any portion of any such matter to the
exclusive use of which the registrar or the court holds him not to be entitled; or
(b)   that the proprietor shall make such other disclaimer or memorandum as the registrar or the court may consider
necessary for the purpose of defining his rights under the registration:
Provided that no disclaimer or memorandum on the register shall affect any rights of the proprietor of a trade mark
except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.’
For an illustration of a disclaimer see Cochrane Steel Products (Pty) Ltd v M-Systems Group [2017] ZASCA 189.

from what has been said above about notional use that the second of these is of no
moment.

[14] In Century City, this Court referred to Compass Publishing BV v Compass
Logistics Ltd,17 and explained:
‘The registered mark was the word “Compass” in relation, in simplified terms, to computer and
computer-related services. The defendant traded in the same fields under the name Compass
Logistics. After pointing out that the two marks were not identical in the light of LTJ Diffusion SA
v Sadas Vertbaudet SA the court proceeded to consider whether they were confusingly similar.
Laddie J said this (paras 24 - 25):
“[24] . . . The likelihood of confusion must be appreciated globally, taking account of all relevant
factors. It must be judged through the eyes of the average consumer of the goods or services in
question. That customer is to be taken to be reasonably well informed and reasonably circumspect
and observant, but he may have to rely upon an imperfect picture or recollection of the marks. The
court should factor in the recognition that the average consumer normally perceives a mark as a
whole and does not analyse its various details. The visual, aural and conceptual similarities of the
marks must be assessed by reference to the overall impressions created by the marks bearing in
mind their distinctive and dominant components. Furthermore, if the association between the
marks causes the public to wrongly believe that the respective goods come from the same or
economically linked undertakings, there is a likelihood of confusion.
[25] Applying those considerations to the facts of this case, there can be little doubt that a
likelihood of confusion exists between the Defendant's use of the sign or mark COMPASS
LOGISTICS in relation to its business consultancy services and the notional use of the mark
COMPASS used in relation to business consultancy services, including those in relation to which
the Defendant specialises. The dominant part of the Defendant's mark is the word compass. For
many customers, the word logistics would add little of significance to it. It alludes to the type of
area of consultancy in which the services are carried out.”’18
This Court then applied the notional use test in Century City:

17 Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch) ([2004] RPC 41).
18 Century City fn 8 para 13.

‘This means that one has to assume reasonable notional use by a trademark owner of the name
Century City for purposes of providing services for reserving and maintaining accommodation at
apartments. The appellant's use of Century City Apartments would to my mind have given rise to
the likelihood of confusion.’19

[15] The question before us is whether notional customers would associate
restaurant services called ‘Soul Souvlaki’ with those of the appellant if the latter was
trading in the same market and selling Greek cuisine under the name ‘Soul’. Put
differently, in that scenario, would the use of the mark ‘Soul Souvlaki’ be likely to
lead to deception or confusion in the minds of a substantial number of customers?
This is the crisp issue as I see it.

[16] The appellant set great store by PepsiCo v Atlantic Industries.20 In that matter,
Atlantic had registered the marks ‘Twist’, ‘Lemon Twist’ and ‘Diet Twist’. Pepsico,
which had registered the marks ‘Pepsi’ and ‘Pepsi-Cola’, applied to register the mark
‘Pepsi Twist’ as both a word and a device mark in the same class as those of Atlantic.
Atlantic opposed the registration whereupon Pepsico applied for the expungement
of the marks of Atlantic. The expungement application was refused but the court of
first instance upheld Pepsico’s application to register the mark ‘Pepsi Twist’. The
full court upheld the appeal of Atlantic and set aside the order allowing Pepsico to
register the mark. This Court dismissed the appeal against the order of the full court
on the basis that such registration would be likely to cause confusion among a
substantial number of consumers. It held that this conclusion was strengthened by
the fact that ‘Twist’ is non-descriptive and thus ‘has the same ability as the made-up
word ‘Pepsi’ to be memorable and distinguishing.’21

19 Ibid para 14.
20 PepsiCo v Atlantic Industries [2017] ZASCA 109.
21 Ibid para 26.

[17] The respondents urged us to take into account that there are a number of
pending applications for registration of marks containing ‘Soul’ in combination with
other words. They contended that this would serve to show that confusion is unlikely
to arise with the appellant’s mark. Reliance for this submission was placed on three
matters: Distillers Corporation (SA) Ltd v SA Breweries Ltd and Another; Oude
Meester Groep Bpk and Another v SA Breweries Ltd (Distillers);22 Dinnermates
(Tvl) CC v Piquante Brands International and Another (Dinnermates);23 and Bata.24

[18] In Distillers, evidence that some 50 marks on the register contained the word
‘Master’ or ‘Meester’ as part of the mark was admissible as one of the factors to
determine distinctiveness. And in Dinnermates, this Court held:
‘[T]he respondents are not the only entity using the word PEPPA as its prominent element. There
are other trade marks such as PICKAPEPPA and PEPPAMELT. These trade marks predate the
respondents’ marks. Proprietors or owners of these trade marks have rightly not claimed exclusive
use of the word PEPPA. In my view the use of the word PEPPA by other entities dispels the notion
that the respondents have the exclusivity or monopoly in the prefix PEPPA. I can see no reason
why the respondents’ trade mark cannot coexist with the appellant’s trade mark.’25
Finally, in Bata, evidence was led that there were numerous trade mark registrations
in South Africa in respect of clothing which included the word ‘Power’. In all three
matters, the complaint that the competing mark deceived and confused was rejected.

[19] The comparison drawn by the respondents with those matters does not hold
water. Put simply, in the present matter, the applications for registration of the mark
‘Soul’ are still pending. Unlike in those three matters, there are not a number of

22 Distillers Corporation (SA) Ltd v SA Breweries Ltd and Another; Oude Meester Groep Bpk and Another v SA
Breweries Ltd 1976 (3) SA 514 (A).
23 Dinnermates (Tvl) CC v Piquante Brands International and Another [2018] ZASCA 43.
24 Footnote 11.
25 Ibid para 21.

competing marks using the word ‘Soul’. The respondents pointed to the evidence
that, in addition to the pending applications for registration, some 200 registered
companies contain the word ‘Soul’ in their names. And 300 registered companies
have names beginning with ‘Soul’. The frequency of use in the marketplace might
be relevant on some level. In the view I take of the matter, however, it is not
necessary to decide this point.

[20] I see the present matter as distinguishable from that of Century City. As I have
indicated, this Court there held that, if the respondent trade mark owner used the
name ‘Century City for purposes of providing services for reserving and maintaining
accommodation of apartments . . . (the) appellant’s use of Century City Apartments
would to my mind have given rise to the likelihood of confusion.’ If, in the present
matter, the respondents used the mark ‘Soul Restaurants’ the same reasoning would
undoubtedly apply. That, however, is not the case. The question remains whether it
can be said that, if the appellant used the mark ‘Soul’ in restaurant services providing
Greek cuisine, customers would view the appellant as the source of the services
offered under the trade mark ‘Soul Souvlaki’.

[21] This brings into focus the marks themselves. The appellant submitted that,
since PepsiCo dealt with two non-descriptive marks, ‘Pepsi’ and ‘Twist’, the use of
‘Soul Souvlaki’ by the respondents was even more likely to cause deception or
confusion. This was so, it said, because the word ‘souvlaki’ appears in South African
dictionaries, has a meaning and is therefore descriptive. It is correct that ‘souvlaki’
is defined in the Concise Oxford Dictionary.26 It is defined as ‘a Greek dish of pieces
of meat grilled on a skewer’ and the word is said to originate from modern Greek.

26 Stevenson and Waite (eds) Concise Oxford English Dictionary 12 ed (2011) at 1381.

But this does not necessarily mean that it functions as descriptive without evidence
of widespread knowledge of that word among South African restaurant customers.
It is not used in the mark to describe the services of the respondents since a range of
Greek dishes, and not only souvlaki, is on offer at their outlets. It certainly does not
function as descriptive on the same level as do ‘Lemon’ or ‘Diet’.

[22] A comparison of the marks must be undertaken. In Bata,27 the appellant had
registered a number of trade marks including the word mark ‘Power’ and the
combination of ‘Power’ and a device mark in relation to footwear and articles of
clothing. Those marks likewise are distinctive as having been registered. The first
respondent used the marks ‘Power House’ or ‘Powerhouse’, mostly accompanied by
a distinctive dog device. The appellant sought to restrain them on the basis that their
use infringed three of the appellant’s marks under s 34(1)(a) of the Act. Dealing first
with the word ‘Power’, this Court said:
‘It is an ordinary word in everyday use, as distinct from an invented or made-up word, and it cannot
follow that confusion would probably arise if it is used in combination with another word.’28
And:
‘What has to be considered, therefore, is whether the notional customer of average intelligence,
viewing the marks as a whole or looking at the dominant features of each mark, is likely to be
confused or deceived into believing that clothing bearing the words “Power House” have a
connection in the course of trade with the “Power” trade mark.’29
The conclusion was:
‘It is not possible to ignore the word “House” in the first respondent's mark. I have considerable
difficulty in imagining that the notional purchaser of the first respondent's clothing would focus

27 Bata fn 11.
28 Ibid para 10.
29 Ibid para 11.

attention only on the word “Power”. The word “House” is as significant as the word “Power” and
the two words used together sufficiently distinguish the first respondent's clothing from that of the
appellant.’30

[23] Similar reasoning applied in Lucky Star31 where, having referred to Bata, this
Court said:
‘In my view, the common elements of the appellant’s and the respondents’ marks being the word
“Lucky” is of minor significance when the marks are looked at as a whole. The word “Fish” as
opposed to the word “Star” is distinctive and cannot be ignored. When the marks are compared
side by side, and the main or dominant features of the marks are considered, namely the words
“Star” and “Fish”, there is no likelihood of deception or confusion.’32

[24]  As in Bata, the word ‘Soul’ is a common word in everyday use. The appellant
based its choice on specific uses in the wider context, saying:
‘The meaning the SOUL brand communicates to Applicant’s consumers is of African cool, a pride
in an Afrocentric heritage typified by success against adversity, a rising above racial prejudice and
stereotypes where “blackness” is not a shortcoming but a positive advantage.
The sense of self validity was typified in the 1960s in the United States by the civil rights
movement, Martin Luther King, Malcolm X and the great “soul” singing artists such as Percy
Sledge, Isaac Hayes, Barry White, Otis Redding, Whitney Houston, Dusty Springfield and Ertha
Kitt . . . .’
From this it is clear that the appellant chose its mark in a specific social context in
which the word had meaning.

[25] In this matter, the word ‘Souvlaki’ is at least as significant as the word ‘Soul’.
It strikes me, if anything, as the more dominant of the two. It certainly cannot be

30 Ibid para 11.
31 Lucky Star fn 2.
32 Ibid para 10.

ignored. When the marks are compared side by side, the word ‘Souvlaki’ clearly
distinguishes the respondents’ mark from ‘Soul’. In my estimation, the likelihood of
deception or confusion is far more remote than in the case of ‘Pepsi Twist’ as
compared to ‘Lemon Twist’ or ‘Diet Twist’. There, all the marks comprised two
words. All were prefixes. All contained the same number of syllables. Here we have
the single word ‘Soul’. ‘Soul Souvlaki’ is far more likely to operate as did ‘Power
House’ in relation to ‘Power’ and ‘Lucky Fish’ in relation to ‘Lucky Star’. It is
unlikely that the notional restaurant customer would confuse it with a restaurant
called ‘Soul’.

[26] In summary, therefore, the direct comparison between the marks shows no
likelihood of deception or confusion. The fact that ‘Soul’ has social meaning beyond
the distinctive meaning of the appellant’s mark also serves to dilute any likelihood
of confusion between the marks. In the light of all of these considerations, I do not
view the respondents’ mark as so nearly resembling that of the appellant as to be
likely to deceive or confuse. In my view, accordingly, the mark ‘Soul Souvlaki’
sufficiently distinguishes the respondents’ services from those of the appellant in the
context of the restaurant and food sector. That being the case, the appellant failed to
establish infringement under the provisions of s 34(1)(a) of the Act.

[27] It is trite that an appeal lies against the order of a court and not its reasoning.
In the high court, the learned judge unfortunately erred in several respects. She
conflated trade mark and passing off principles. In doing so, she misdirected herself
on the law. In addition, she considered irrelevant issues. Despite this erroneous
approach and reasoning, however, the application was rightly dismissed. As a result,
the appeal must likewise fail. There is no reason why the costs should not follow the
result.

[28] In the result, the appeal is dismissed with costs.

____________________
T R GORVEN
JUDGE OF APPEAL

Appearances

For appellant:

R Michau SC
Instructed by:
Ron Wheeldon Attorneys, Johannesburg
Webbers Attorneys, Bloemfontein

For respondents:
P Cirone
Instructed by:
Christodoulou & Mavrikis Incorporated, Johannesburg
Symington & De Kok, Bloemfontein
THE SUPREME COURT OF APPEAL
REPUBLIC OF SOUTH AFRICA

MEDIA SUMMARY – JUDGMENT DELIVERED IN THE SUPREME COURT OF APPEAL

From:
The Registrar, Supreme Court of Appeal
Date:
3 November 2022
Status:
Immediate

Please note that the media summary is intended for the benefit of the media and
does not form part of the judgment of the Supreme Court of Appeal.

Golden Fried Chicken (Pty) Ltd
v
Vlachos and Another

Today the Supreme Court of Appeal dismissed an appeal from the Gauteng Division
of the High Court, Johannesburg (per Yacoob J). This appeal concerned the alleged
infringement of a registered trade mark under the Trade Marks Act 194 of 1993 (the
Act). Both parties trade in food services in the restaurant sector. The appellant trades
as ‘Chicken Licken’ through a number of food outlets and has registered the word
‘Soul’ under class 43 of the Act as a service trade mark. The respondents have
operated two Greek food outlets under the name ‘Soul Souvlaki’ since 2012. The
appellant brought infringement proceedings under s 34(1)(a) of the Act asserting that
‘Soul Souvlaki’ infringed its mark ‘Soul’ as being ‘a mark so nearly resembling it as
to be likely to deceive or cause confusion.’

With reference to the principles applicable to trade mark law, it was necessary to
determine this question on the basis that the appellant notionally used the mark to
trade in Greek food under the name ‘Soul’ and not only its present basis. The
question was whether members of the restaurant going public would be likely to

believe that the service offered by the respondents emanated from the appellant.
The Supreme Court of Appeal considered previous matters and conducted an
analysis of this question but concluded that the appellant had not proved that the
use of ‘Soul Souvlaki’ would be likely to so deceive or confuse.

Despite the high court having erred in conflating principles of passing off with trade
mark infringements and considering a number of irrelevant factors, it had correctly
dismissed the application. For this reason the Supreme Court of Appeal dismissed
the appeal with costs.