THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Reportable

Case No: 983/2016
In the matter between

PEPSICO INC
APPELLANT

and

ATLANTIC INDUSTRIES
RESPONDENT

Neutral citation: PepsiCo v Atlantic Industries (983/16) [2017] ZASCA 109 (15
September 2017)

Coram:
Lewis, Cachalia & Petse JJA & Lamont & Rogers AJJA
Heard:
28 August 2017
Delivered:
15 September 2017

Summary:
Trade marks: respondent’s registered marks TWIST, LEMON TWIST
and DIET TWIST inherently capable of distinguishing its soft drinks: such marks not
purely descriptive of products or their characteristics: appellant’s expungement
application correctly dismissed.
Trade marks: appellant’s proposed marks, consisting of or incorporating the words
PEPSI TWIST, likely to deceive or cause confusion by virtue of similarity to
respondent’s marks: respondent’s opposition to appellant’s trade mark application
correctly upheld.

___________________________________________________________________

ORDER
___________________________________________________________________

On appeal from: A full court of the Gauteng Division of the High Court, Pretoria (per
Louw J, Prinsloo & Meyer JJ concurring), sitting on appeal from a judgment of the
Gauteng Division of the High Court, Pretoria (Preller J)
The appeal is dismissed with costs, including those attendant on the employment of
two counsel.

JUDGMENT
___________________________________________________________________

Rogers AJA (Lewis, Cachalia & Petse JJA and Lamont AJA concurring)
Introduction
[1] The appellant, PepsiCo Inc (PepsiCo), is the registered proprietor in South
Africa of various trade marks consisting of or incorporating the words PEPSI and
PEPSI-COLA. The respondent, Atlantic Industries (Atlantic), a wholly owned
subsidiary of The Coca-Cola Company, is the registered proprietor in South Africa of
the trade marks TWIST, LEMON TWIST and DIET TWIST. Both parties’
registrations are in class 32, a class which includes ‘mineral and aerated waters and
other non-alcoholic drinks’.
[2] In 2006 PepsiCo applied for the registration, also in class 32, of a word mark
PEPSI TWIST and of a device mark incorporating the words PEPSI TWIST. The
representation of the device mark in the record is monochrome though I assume
there is no colour limitation.1 Below is a monochrome depiction of the proposed
device mark as it would appear on a canned beverage (the small text above the
words ‘Pepsi Twist’ does not form part of the proposed mark):

1 Section 32 of the Trade Marks Act 194 of 1993.

[3] Atlantic opposed the registrations. PepsiCo countered by applying for the
expungement of Atlantic’s marks. In accordance with a request by the parties, the
Registrar of Trade Marks referred the matter to the Gauteng Division of the High
Court, Pretoria, for determination. On 5 May 2014 that court (per Preller J)
dismissed PepsiCo’s application for the expungement but granted PepsiCo’s
application for the registration of its PEPSI TWIST marks. Each side appealed to a
full court against their respective defeats. On 24 May 2016 the full court upheld
Atlantic’s appeal and dismissed PepsiCo’s cross-appeal. Having obtained special
leave, PepsiCo appeals to this court against the whole of the full court’s judgment.

Expungement of Atlantic’s marks
[4] It is convenient to start with PepsiCo’s expungement application. Section 24
of the Trade Marks Act2 entitles an interested party to apply to have the trade mark
register rectified inter alia by removing any entry ‘wrongly made in or wrongly
remaining on’ the register. PepsiCo’s expungement application asserted that
Atlantic’s marks wrongly remained on the register because they fell foul of
ss 10(2)(a) and 10(2)(b). Section 10 provides that certain marks shall not be
registered as trade marks or, if registered, shall be liable to be removed from the
register. Sections 10(2)(a) and (b) apply to a mark which:
‘(a) is not capable of distinguishing within the meaning of section 9; or

2 Act 194 of 1993.

(b) consists exclusively of a sign or an indication which may serve, in trade, to designate the
kind, quality, quantity, intended purpose, value, geographical origin or other characteristics
of the goods or services, or the mode or time of production of the goods or of rendering of
the services’.
[5] Section 9(1) requires that in order to be registrable a mark must be capable
of distinguishing the goods or services of the proprietor from the goods or services
of another person. Section 9(2) states that a mark shall be considered to be capable
of so distinguishing if, at the date of application for registration, it is inherently
capable of so distinguishing or if it is capable of so distinguishing by reason of prior
use. By virtue of the proviso to s 10, a registered mark is not liable to be removed if,
by the date of the expungement application, it has become capable of distinguishing
within the meaning of s 9.
[6] PepsiCo’s case on ss 10(2)(a) and (b) rests on the same essential
contention, namely that the word ‘twist’ is a common English word which is merely
descriptive of the kind, quality or characteristics of the goods to which Atlantic’s
marks relate and is not inherently capable of distinguishing its beverages from those
of other proprietors. In support of these contentions PepsiCo referred to the New
Shorter OED3 which includes, among the meanings of ‘twist’ as a noun, ‘a curled
piece of lemon etc. peel used to flavour a drink’ and ‘a drink consisting of a mixture
of two different spirits or other ingredients, such as gin and brandy etc’.
[7] The courts below were right to reject these contentions. ‘Twist’ as meaning a
beverage of mixed ingredients is described by the New Shorter OED and in the
unabridged OED4 as slang. In the 1961 edition of Eric Partridge’s dictionary of
slang,5 this slang was said to be obsolete. It does not appear in other dictionaries of
slang.6 This obsolete British slang is likely to be known to very few, if any, South
Africans, even those whose first language is English.  Those familiar with cocktails
may know that ‘twist’ can mean a curled piece of citrus peel though the word would

3 The New Shorter Oxford English Dictionary.
4 The Oxford English Dictionary 2 ed (1989).
5 Partridge Dictionary of Slang and Unconventional English 5 ed (1961). This remained the recordal
in the last edition (8 ed, 1984). The entry was omitted altogether in Dalzell & Victor The New
Partridge Dictionary of Slang and Unconventional English (2006).
6 See The Oxford Dictionary of Slang (1998) and Duckworth’s online Dictionary of Slang: English
Slang and Colloquialisms Used in the United Kingdom.

not be so used in isolation – one would speak of ‘a twist of lime peel’ etc.7 ‘Twist’ in
this sense would at most create a mental association between the word and a
refreshing or exotic drink.
[8] It is probable that for most South African consumers the word ‘Twist’ as
applied to Atlantic’s beverages is an arbitrary brand name without meaning. Like a
made-up word, a common word which is arbitrary when applied to a particular
product is the exemplar of a mark inherently capable of distinguishing.8 Such words
are to be contrasted with descriptive words. It is a common feature of trade mark
legislation that purely descriptive marks may not be registered. The reason is that
other traders should not be barred from using them in relation to their goods. Lord
Parker in W & G Du Cros9 formulated the test as being ‘whether other traders were
likely, in the ordinary course of their business and without any improper motive, to
desire to use the same mark . . . in connection with their goods’. More succinctly, in
order for a word to be really distinctive of a proprietor’s goods it ‘must generally
speaking be incapable of application to the goods of anyone else’ (see this court’s
decision in On-line Lottery10 quoting with approval a dictum of Lord Russell in
Shredded Wheat11). For as Lord Simonds said in Copper Works:12
‘Paradoxically perhaps, the more apt a word to describe the goods of a manufacturer, the
less apt it is to distinguish them: for a word that is apt to describe the goods of A, is likely to
be apt to describe the similar goods of B.’

[9] In the High Court of Australia, Kitto J in Clark Equipment13 expressed the
same idea well when he said that the question whether a mark is adapted to
distinguish should be tested
‘by reference to the likelihood that other persons, trading in goods of the relevant kind and
being actuated only by proper motives - in the exercise, that is to say, of the common right

7 This is borne out by the illustrative quotations given in the unabridged OED.
8 See eg Orange Brand Services Ltd v Account Works Software (Pty) Ltd [2013] ZASCA 158 para 15.
9 Registrar of Trade Marks v W & G Du Cros Ltd [1913] UKHL 588; [1913] AC 624 at 634, cited with
approval inter alia in Joshua Gibson Ltd v Bacon 1927 TPD 207 at 203 and Distillers Corporation
(SA) Ltd v Stellenbosch Farmers Winery Ltd 1979 (1) SA 532 (T) at 536G-H.
10 On-line Lottery Services (Pty) Ltd v National Lotteries Board & another [2009] ZASCA 86; 2010 (5)
SA 349 (SCA) para 16.
11 Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd [1938] 55 RPC 125 (PC).
12 Copper Works application (1953) 71 RPC 150 at 153.
13 Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 para 5.

of the public to make honest use of words forming part of the common heritage, for the sake
of the signification which they ordinarily possess - will think of the word and want to use it in
connexion with similar goods in any manner which would infringe a registered trade mark
granted in respect of it.’

[10] The approach in Du Cros and Clark Equipment was recently affirmed by the
High Court of Australia in Cantarella14 where the following was stated:15
‘When the "other traders" test from Du Cros is applied to a word  . . . the test refers to the
legitimate desire of other traders to use a word which is directly descriptive in respect of the
same or similar goods. The test does not encompass the desire of other traders to use
words which in relation to the goods are allusive or metaphorical.’
[11] As I have said, ‘twist’ is not descriptive of Atlantic’s beverages. No trader,
acting legitimately and not wishing to take advantage of the reputation of Atlantic’s
brand, would wish to use the word ‘twist’ in relation to its soft drinks. To adapt Kitto
J’s words, such a trader could not honestly say that he desired to apply the word
‘twist’ to his soft drinks for the sake of the signification which the word ordinarily
possesses. If ‘twist’ has any meaning as applied to soft drinks, it is ‘allusive or
metaphorical’.
[12] The present case is readily distinguishable from one of the authorities to
which we were referred, Pepkor Retail,16 where this court found that the mark THE
LOOK in relation to apparel was not inherently capable of distinguishing the
proprietor’s goods. This was because of a factual finding that in the fashion retail
industry the expression ‘the look’ carried ‘the universal ordinary meaning of
fashionable or trendy clothing or outfits’ rather than being a ‘covert or skilful allusion’
to such goods.17
[13] I am thus satisfied that the mark TWIST, as applied to soft drinks, is
inherently capable of distinguishing Atlantic’s beverages from those of other

14 Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; (2014) 254 CLR 337,
particularly paras 70-71.
15 Para 59.
16 Pepkor Retail (Pty) Ltd v Truworths Ltd [2016] ZASCA 146.
17 Para 17.

producers and that its registration was not precluded by virtue of its being purely
descriptive. It is thus unnecessary to explore whether possible deficiencies when the
marks were registered have been cured by subsequent use. I content myself by
saying that there is overwhelming evidence that Atlantic and its predecessors have
used TWIST widely as a trade mark on millions of cans and bottles of soft drinks
and through substantial advertising expenditure. The following statement by Harms
JA in Groupe LFE18 concerning the use of the SWARTLAND mark in relation to wine
could equally be applied to the present case:
‘The Winery’s wines have been known for many decades as Swartland wines and by no
other name (save for the use of the non-distinctive ‘Winery’ suffix). No other wine has been
sold under that name. How, under these circumstances, it can be suggested that the mark
did not become distinctive is impossible to fathom.’
[14] The courts below were thus correct in concluding that PepsiCo’s
expungement application should fail.

Registration of PepsiCo’s marks
[15] PepsiCo’s proposed marks cannot be registered if PepsiCo has no bona fide
claim to proprietorship thereof (s 10(3)). And in terms of s 10(14), registration of a
mark is prohibited if it 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 as 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’.
[16] These are the two grounds on which Atlantic opposed registration of the
marks. In view of my conclusion on s 10(14) it is unnecessary to consider the scope
and applicability of s 10(3).

18 Groupe LFE (SA) (Pty) Ltd v Swartland Winery Ltd & another [2011] ZASCA 4 para 16.

[17] The proposed mark PEPSI TWIST is not identical to Atlantic’s registered
marks. The question is whether there it is sufficient similarity to create a likelihood of
deception or confusion.
[18] Since similar language is used in s 34(1) in relation to infringement, cases
dealing with infringement can be consulted for guidance. In Yuppiechef19 this court
summarised the test thus:
‘What is required is a value judgment on the question of the likelihood of deception or
confusion based on a global appreciation of the two marks and the overall impression that
they leave in the context of the underlying purpose of a trademark, which is that it is a
badge of origin. The value judgment is largely a matter of first impression and there should
not be undue peering at the two marks to find similarities and differences.’
[19] There is an inter-relationship between the similarity of the marks and the
similarity of the goods to which the marks apply. Lesser similarities in the marks
might be counter-balanced by stronger similarities in the goods but ultimately the
question remains whether in combination there is a likelihood of confusion or
deception.20 In regard specifically to the goods to which the respective marks are
applied, relevant considerations will include (i) the uses of the respective goods;
(ii) the users of the respective goods; (iii) the physical nature of the goods; and
(iv) the trade channels through which the goods respectively reach the market .21
[20] In testing for deception and confusion, courts will usually identify the features,
if any, of the respective marks which are dominant. If they share a dominant feature,
there is ordinarily a greater likelihood of deception or confusion. As recently affirmed
by this court, in the global assessment of the marks ‘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’.22
[21] Here the goods to which the competing marks would be applied are identical.
If the proposed marks were registered, PepsiCo would be entitled to use them in

19 Yuppiechef Epson Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd [2016] ZASCA 118 para
26.
20 Mettenheimer & another v Zonquasdrif Vineyards CC & others 2014 (2) SA 204 (SCA) para 11.
21 Mettenheimer para 13.
22 Distell Ltd v KZN Wines and Spirits CC [2016] ZASCA 18 para 10.

relation to carbonated beverages with similar flavours to Atlantic’s carbonated
beverages. From the proposed device mark one can infer that PepsiCo intends to
apply the proposed marks to a lemon-flavoured carbonated beverage. At any rate, if
the marks were registered, their notional fair and reasonable use would include use
in relation to a lemon-flavoured carbonated beverage. Such a product might be
practically indistinguishable, in taste, from Atlantic’s Lemon Twist.
[22] The soft drinks to which PepsiCo would be entitled to apply the proposed
marks would be directed at the same consumers who buy Atlantic’s soft drinks. The
trade channels, too, would be the same – supermarkets, cafes, convenience stores,
retail outlets, bars and restaurants. In some instances the beverages might be
displayed in close proximity to each other; in other instances an outlet might carry
the one product but not the other or might display them apart from each other.
[23] As to similarity in the marks, PepsiCo’s proposed marks will incorporate the
whole of Atlantic’s mark TWIST and part of Atlantic’s marks LEMON TWIST and
DIET TWIST. In the latter two instances TWIST is the dominant and distinctive
feature, LEMON and DIET being purely descriptive. In the case of LEMON TWIST
there is an endorsement on the registration that the mark gives no right to the
exclusive use of the word ‘lemon’ in its ordinary signification and apart from the
mark. Although there is no similar disclaimer for DIET TWIST, Atlantic could not
claim a monopoly on the word ‘diet’ in relation to beverages.
[24] PepsiCo’s proposed marks thus incorporate the sole distinctive feature of
Atlantic’s marks. Does the insertion of PEPSI before TWIST avoid the confusion
which would undoubtedly arise without the insertion? Aurally, the two elements have
equal prominence. In their barest written form, PEPSI and TWIST have equal
prominence (they each comprise five letters) but in fair and reasonable notional use
PepsiCo could choose to give TWIST greater visual prominence than PEPSI. In the
device mark, TWIST is more prominent than PEPSI – the font is larger and fancier.
And in fair and reasonable notional use Atlantic could depict its mark TWIST in
much the same way as the same word appears in PepsiCo’s proposed device mark
and in any of the ways in which PepsiCo might choose to depict its proposed word
mark.

[25] The appellant’s contention that PEPSI is the dominant component rests on an
assertion that PepsiCo has an existing mark PEPSI which is so widely known that
consumers will instantly notice and remember it (I shall call this conceptual
prominence). Whether, in making the comparison for purposes of s 10(14), we may
have regard to the existence and reputation of PEPSI as a registered mark is
doubtful. The appellant’s own counsel opened the appeal by submitting that in
applying s 10(14) one must simply place the marks side by side in the market place;
the court is not entitled to have regard to extraneous matter arising from the actual
use of the marks, though the comparison must take account of all fair and normal
uses to which the proprietors might notionally put their marks. Although counsel was
making this point in support of an argument that in the opposition proceedings we
should disregard evidence of Atlantic’s use of the TWIST marks, the argument, if
sound, applies equally to extraneous matter such as the existence and reputation of
the PEPSI mark. That such extraneous matter should be disregarded was certainly
the view of Harms J writing for the full court in Upjohn Company23 and he returned to
this question, without finally deciding it, in Cowbell.24
[26] We were not fully addressed on the question and it is unnecessary to decide
it because on either approach the result is the same. If, in line with Upjohn
Company, one were to disregard the existence and reputation of PEPSI as an
existing mark, one could not say that PEPSI enjoys greater conceptual prominence
than TWIST in the proposed marks. Because TWIST in this context is non-
descriptive, it has the same ability as the made-up word PEPSI to be memorable
and distinguishing. As I have said, in fair and reasonable use PepsiCo could choose
to give more prominence to TWIST than PEPSI. In the proposed device mark,
TWIST is visually more prominent than PEPSI though this prominence may be offset
to some extent by the non-verbal components of the device.
[27] Assuming, on the same basis, that one must ignore the evidence of the
actual use by Atlantic and its predecessors of the TWIST marks, what one cannot
ignore is that TWIST is on the register and is thus recognised as being distinctive of

23 The Upjohn Company v Merck & another 1987 (3) SA 221 (T) at 226H-227D, dealing with s 17(1)
of the Trade Marks Act 62 of 1963, the equivalent provision of the current s 10(14).
24 Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) para 17.

Atlantic’s beverages.25 The incorporation of the sole distinctive feature of Atlantic’s
TWIST marks into the proposed PEPSI TWIST marks as an element with no less
prominence than the word PEPSI, and in relation to identical products, is such as to
create a likelihood of deception or confusion.
[28] If, on the other hand, the court may take into account the existence and
reputation of the PEPSI mark, this means no more than that the average South
African consumer would take it for granted that a beverage called Pepsi Twist is a
product from the same stable as other Pepsi beverages. While the incorporation of
PEPSI into the proposed mark would avoid creating in the minds of ordinary
consumers the mistaken belief that Pepsi Twist was produced by a party
independent of the Pepsi stable, consumers might be deceived into thinking that, or
be confused about whether, the producer of beverages under the name Twist (ie
Atlantic) is part of the Pepsi stable. The greater the similarity in the ways in which
the producers chose to depict TWIST on their products, the greater the likelihood of
this confusion. I have already observed that in fair and reasonable notional use the
parties might depict TWIST in similar styles. Having regard to actual use, there is
already some similarity in the way in which Atlantic depicts TWIST on its products
and the manner in which PepsiCo depicts TWIST in the proposed device mark – in
each case the word slants upwards from left to right and the letter ‘i’ is not
capitalised and has a dot above it.
[29] Another relevant consideration is that PEPSI would be regarded by most
consumers as a primary identifying mark of all PepsiCo’s products. Where a second
word is added to a primary mark in order to distinguish the producer’s products from
each other, the second word has a unique and important function in identifying the
product – eg Pepsi-Cola, Pepsi Zero, Pepsi Max, Pepsi Wild Cherry and (if it is
registered) Pepsi Twist. In the case of primary and sub-brands, the sub-brand is
important to consumers. They will not look for Pepsi products in general but for a
particular product. Because Pepsi-Cola was the first and probably still is the most
widely sold Pepsi beverage, the word ‘Pepsi’ on its own would probably be

25 Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd & another 1991 (4)
SA 850 (A) at 861G-H; Lawsa 2 ed vol 29 para 110.

understood as referring to Pepsi-Cola. For other Pepsi products, the emphasis
would fall on the sub-brand, in the present case the TWIST component.
[30] It is not necessary to find that all or most consumers would be confused. It is
enough that a substantial number of them are likely to be confused. And the
confusion need not be a settled belief that Pepsi is the source of all beverages
under the name Twist. It is sufficient that uncertainty on that score would be created
in the minds of consumers.26 In that regard one must remember that the universe of
consumers for carbonated soft drinks is large: it includes persons of all ages, the
rich and the poor; the sophisticated and unsophisticated. Soft drinks are often
bought on a whim. Consumers would not ordinarily subject the bottle or can to
careful scrutiny.
[31] One should also bear in mind that consumers will not always have the bottles
or cans in front of them when choosing their soft drink. In a bar or restaurant setting
consumers would order beverages from a bar attendant or waiter. Because
consumers are likely to equate a ‘Pepsi’ with the well-known Pepsi-Cola beverage, a
consumer wanting a Pepsi Twist might drop ‘Pepsi’ and simply ask for a ‘Twist’. I
can envisage that a bar attendant or waiter might, in response to a request for a
‘Twist’, bring the customer either a Pepsi Twist or a Lemon Twist.
[32] The respondent’s counsel referred us to Medion,27 a judgment of the
European Court of Justice (ECJ), which is particularly apposite. Medion was the
registered proprietor of the trade mark LIFE for leisure electronic devices. It brought
infringement proceedings in Germany against Thomson for using the mark
THOMSON LIFE in relation to leisure electronic devices. The German court referred
the interpretation of Article 5(1)(b) of the European Union’s Trade Mark Directive to
the ECJ. Article 5(1)(b) is similar to our s 10(14). The ECJ distilled the essence of
the referring court’s question as being:
‘whether Article 5(1)(b) . . . is to be interpreted as meaning that where the goods or services
are identical there may be a likelihood of confusion on the part of the public where the

26 Roodezandt Ko-operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd & another [2014] ZASCA
173 para 6; Shimansky & another v Browns the Diamond Store (Pty) Ltd [2014] ZASCA 214 para 12.
27 Medion AG v Thomson multimedia Sales Germany & Australia GmbH [2005] EUECJ C-120/04.

contested sign is composed by juxtaposing the company name of another and a registered
mark which has normal distinctiveness and which, although it does not determine by itself
the overall impression conveyed by the composite sign, has an independent distinctive role
therein.’
[33] After setting out the general principles on which a comparison should be
made for purposes of Article 5(1)(b) – very similar to the principles applied in this
country28 – the ECJ continued (citation of authority omitted):29
‘However, beyond the usual case where the average consumer perceives a mark as a
whole, and notwithstanding that the overall impression may be dominated by one or more
components of a composite mark, it is quite possible that in a particular case an earlier mark
used by a third party in a composite sign including the name of the company of the third
party still has an independent distinctive role in the composite sign, without necessarily
constituting the dominant element.
In such a case the overall impression produced by the composite sign may lead the public
to believe that the goods or services at issue derive, at the very least, from companies
which are linked economically, in which case the likelihood of confusion must be held to be
established.
The finding that there is a likelihood of confusion should not be subject to the condition that
the overall impression produced by the composite sign be dominated by the part of it which
is represented by the earlier mark.’

[34] The respondent’s counsel also referred us to a decision of an appeal court in
Paris30 where the court found in favour of the proprietor of the registered mark E.ON
in its opposition to the registration of a proposed mark HYUNDAI EON. The appeal
court agreed with the earlier proprietor that the HYUNDAI element of the proposed
mark had ‘no defined semantic value which would be added to that of the brand
EON to form a conceptually different whole with regard to the previous brand E.ON’.
The same conclusion, I may add, was reached in the United Kingdom in

28 Paras 23-29.
29 Paras 30-32.
30 E.ON AG v Hyundai Motor Company Appeal Court of Paris Division 5 Case 12/05489, 22
December 2011. The respondent's counsel provided us with a sworn translation of the French
decision.

proceedings between the same parties before the Registrar of Trade Marks31  where
the Hearing Officer spoke of the trend towards the use of sub-brands (in that case
HYUNDAI as the primary brand and EON as the sub-brand) and said that the
average consumer would assume that the identical and similar goods at issue came
from undertakings which were economically linked.
[35] The exposition in Medion is consistent with the principles of our law and
fortifies me in the conclusion I have reached on the s 10(14) issue. I thus consider
that the full court was right to uphold Atlantic’s appeal against the dismissal of its
opposition to the registration of PepsiCo’s marks.
Conclusion
[36] Accordingly the following order is made:
The appeal is dismissed with costs, including the costs of two counsel.

______________________
OL Rogers
Acting Judge of Appeal

31 In re Hyundai Motor Corporation Appn 2577601 per Hearing Officer, Mr CJ Bowen,14 November
2012; upheld on appeal to the Appointed Person, Ms A Michaels, Appeal 0-313-13, 1 August 2013.

Appearances

For the Appellant
R Michau SC (and with him I Joubert)

Instructed by

Spoor & Fisher, Centurion c/o Phatshoane
Henney Attorneys, Bloemfontein

For the Respondent
P Ginsberg SC (and with him F Southwood)

Instructed by

Adams
&
Adams,
Pretoria
c/o
Honey
Attorneys, Bloemfontein
THE SUPREME COURT OF APPEAL OF SOUTH AFRICA

MEDIA SUMMARY – JUDGMENT DELIVERED IN THE SUPREME COURT
OF APPEAL

FROM
The Registrar, Supreme Court of Appeal
DATE
15 September 2017
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.

PepsiCo Inc v Atlantic Industries (983/16) [2017] ZASCA 109

The Supreme Court of Appeal (the SCA) today dismissed an appeal against a
judgment of a full court of the Gauteng Division of the High Court, Pretoria, in
which the full court had (i) dismissed an appeal by PepsiCo against the
dismissal, by a single judge, of PepsiCo’s application for the expungement of
certain registered trade marks of which Atlantic is the proprietor and
(ii) upheld an appeal by Atlantic against the single judge’s granting of
PepsiCo’s application for the registration of certain trade marks.

Atlantic Industries Is the registered proprietor of the trade marks TWIST,
LEMON TWIST and DIET TWIST in relation to non-alcoholic drinks. PepsiCo
applied to have these marks expunged and applied for the registration of the
word mark PEPSI TWIST and of a device mark incorporating the words
PEPSI TWIST. PepsiCo applied for the expungement of Atlantic’s marks on
the basis that the word ‘Twist’ was not capable of distinguishing a proprietor’s
goods and was purely descriptive. The SCA rejected these contentions,

finding that the word ‘Twist’ in relation to non-alcoholic drinks was an arbitrary
non-descriptive word and that any association with non-alcoholic drinks was
at most allusive or metaphorical. There was in any event overwhelming
evidence that through extensive use the mark TWIST had become distinctive
of Atlantic’s beverages.

In regard to PepsiCo’s application for the registration of its marks, the SCA
held that the incorporation, in the proposed marks, of the sole distinctive
feature of Atlantic’s marks, namely TWIST, was likely to deceive or cause
confusion as to the origins of the beverages manufactured by Atlantic and
PepsiCo respectively. The likelihood of deception or confusion was not
avoided by inserting PEPSI before TWIST because the latter word played an
independent distinctive role in the composite sign.

~~ end~~