THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Reportable
Case no: 1088/2015
In the matter between:
YUPPIECHEF HOLDINGS (PTY) LTD
APPELLANT
and
YUPPIE GADGETS HOLDINGS (PTY) LTD
(FORMERLY YUPPIE STUFF ONLINE CC)          RESPONDENT
Neutral citation: Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets
Holdings (Pty) Ltd (1088/2015) 2016 ZASCA 118 (15
September 2016)
Coram:
LEWIS, WALLIS, SWAIN and DAMBUZA JJA and
SCHOEMAN AJA
Heard:
1 September 2016
Delivered: 15 September 2016
Summary: Trade mark – online retailer – whether mark used in relation
to goods in respect of which mark registered – s 2(3)(a) of Trade Marks
Act 194 of 1993 – whether marks confusingly similar or calculated to
deceive – registered mark a composite of words in common use – attempt
to secure a monopoly in the word ‘Yuppie’ – no likelihood of confusion –
marks not similar in terms of s 34(1)(c) of Trade Marks Act – no passing
off.

ORDER

On appeal from:  Western Cape Division of the High Court (Mayosi AJ
sitting at first instance):
The appeal is dismissed with costs.

JUDGMENT

Wallis JA (Lewis, Swain and Dambuza JJA and Schoeman AJA
concurring)

[1] The word ‘yuppie’ entered the lexicon of the English language in
the early 1980’s1 as an acronym derived from ‘young, urban or upwardly-
mobile, professional person’. It described a person who was young,
aspiring and affluent with a lifestyle of conspicuous consumption and
even a measure of excess in the flaunting of affluence. It soon acquired
derogatory overtones and its use fell away,2 but it has seen a resurgence
in recent years and describes:
‘a member of a socio-economic group comprising young professional people working in
cities and noted for their careerism and affluent lifestyle’.3
Some people falling within this description regard it as a badge of pride
to be described as a yuppie.

1 A book entitled The Yuppie Handbook by Marissa Piesman and Marilee Hartley was published in
January 1983 and Newsweek magazine pronounced 1984 to be ‘The Year of the Yuppie’.
2 Notwithstanding its American roots it is not mentioned in The American Heritage Dictionary (1991).
3 New Shorter Oxford English Dictionary 6 ed, (2007), Vol 2 at 3700 sv ‘yuppie’. See also Collins
English Dictionary 6 ed, (2003) at 1865; Cassell Giant Paperback Dictionary (1993) at 1520.

[2] The word ‘chef’ has a far longer pedigree in English, as a
description of a professional cook. When the two are combined, as has
been done by the appellant, Yuppiechef Holdings (Pty) Ltd (Yuppiechef),
in its mark ‘Yuppiechef’, the resulting word conveys an impression of
young people living an affluent lifestyle with a serious interest in culinary
matters. And that is precisely the image that its progenitor, Mr Shane
Dryden, sought to convey when he and Mr Andrew Smith founded their
successful business under the name Yuppiechef. It principally sells
kitchen equipment, although it does sell some other household and garden
goods and is expanding into food and beverages. From humble
beginnings in 2006 it had secured a substantial turnover by 2014, when
the present proceedings were commenced.

[3] Yupppiechef has registered the name ‘Yuppiechef’ as a mark, in
terms of the Trade Marks Act 194 of 1993 (the Act), in respect of the
goods described in classes 8, 11 and 21. These classes encompass
different types of kitchen equipment, which was the primary focus of the
business when it was established, as well as other items of household
equipment. Its primary complaint is that the respondent, now a company
bearing the name Yuppie Gadget Holdings (Pty) Ltd (Yuppie Gadgets), is
infringing these marks by using, in relation to its own online business
selling quirky and unusual items and gadgets for household and office
use, the unregistered mark ‘Yuppie Gadgets’. In the alternative it
contends that Yuppie Gadgets is passing its business off as that of
Yuppiechef. Mayosi AJ, in the Western Cape Division of the High Court,
dismissed its claims, but granted leave to appeal to this court.

The facts
[4] Yuppiechef’s business is that of an online retailer of kitchen and
household goods. It is aimed at the younger and more affluent section of
the market consisting of the people who are most comfortable with
shopping online. Overwhelmingly, the goods that it sells bear well-known
marks, such as Le Creuset and Jamie Oliver cookware, Wusthof knives or
Weber braai equipment. It apparently sells some goods bearing its own
mark, but we were not given any examples of these. It advertises its
business extensively both in conventional media such as magazines, but
also through social media, such as Facebook or Twitter, and on the
internet, particularly through the medium of Google Ads. In all of its
advertising the mark Yuppiechef is prominent.

[5] Yuppie Gadgets’s business is also that of an online retailer. It
started operations in 2010, initially under the name ‘Urban Gadgets’. Its
focus is different from that of Yuppiechef, although there is a limited
degree of overlap in the goods that they market. Its main target market
consists of younger, more affluent, consumers who are attracted by what
it describes as ‘hot’ and ‘cool’ gadgets and gizmos. These are quirky,
slightly unusual items of household and office equipment, decorative
items and unusual gadgetry. They are best described as novelty items. To
illustrate the point the papers include a large and fairly expensive mirror
in the shape of a pair of sunglasses. Other items referred to in the papers
include multi-function tools, a dinner utensil in the shape of a bulldozer, a
vase in the shape of a whale, a self-stirring cup and a lampshade in the
shape of a bowler hat. Not all are unconventional. A home cinema
popcorn maker, a camp stove and stackable cutlery set all feature on their
website.

[6] The bone of contention between the parties arises from Yuppie
Gadgets’s decision in April 2011 to change the name under which it
conducted its business from Urban Gadgets to Yuppie Gadgets.4 The
founders of the business, Ms Chantal Kisten and Mr Lukas Swart,
explained the change of name as being prompted by the fact that their
existing name was mundane and not apt for their typical customers. They
considered using the name ‘Yuppie Stuff’ but decided that this ‘lacked
pizzazz’. Eventually they settled on Yuppie Gadgets. Although both Ms
Kisten and Mr Swart were aware of appellant’s business and name, they
disavowed any intention to imitate what was already a successful
business, or to try and ride on its coattails. Their attitude was that there
was relatively little overlap between the two businesses, no real
possibility of confusion between them or the deception of potential
customers, and that this was an endeavour by Yuppiechef to create a
monopoly in the use of the word ‘yuppie’ in the course of trade.

[7] It is appropriate to say something about the nature of an online
retail business. These depend on customers accessing the website of the
business. If the customer knows the name of the business or has its
website address this can be entered into the search box on a search engine
(Google, Bing, Yahoo or the like) and that website will be shown as one
of the results for the search, although not necessarily the first result,
because of the impact of advertisements. Repeat customers may
‘bookmark’ the site, which enables them to go directly to the site without
a search.

4 At the same time it changed its name from Nanini 444 CC to Yuppie Stuff Online CC, but it has now
converted from a close corporation to a company under the name Yuppie Gadgets Holdings (Pty) Ltd.

[8] The concern in this case is largely with potential customers rather
than established clientele, although there was some evidence claiming
that established customers may be led to believe that there is a connection
between the two businesses. Potential customers must first find the
website from which the business operates. They can do this in one of two
ways. If they are aware of the existence of the business, for example
because they have seen an advertisement or been told about it by
someone else, they will search specifically for that business. This
involves typing into the search box of the search engine as much of the
name of the business as they know or can remember and then pressing the
search button or ‘enter’ on the keyboard of their device. This generates a
number of hits ranked in order of relevance, that is, the likelihood that
they are what is being searched for.  The algorithms that operate the
search engine determine the ranking. By working their way through these
possibilities, and perhaps refining the search while doing so, customers
will try to find the site they are looking for.

[9] The other route they can follow is to search for sites that sell goods
fitting the general description of those that they are looking for. So, a
person looking for a mixer or a set of kitchen knives will enter those
words as a search term, whether alone or with others that occur to them,
and then navigate the sites that the search engine generates to try and find
a retailer who can supply what they are looking for. If they are seeking
goods of a particular brand it is likely that they will include the brand
name in their search.

[10] Alongside the ‘natural’ or ‘organic’ results produced by the search
other results appear in the form of ‘sponsored links’ or ‘Ads’. These are
advertisements and are a major source of revenue for the operator of the

search engine. They appear on the search result page because the search
term used by the potential customer is linked to a keyword or keywords
that the advertiser has secured by paying a fee to the operator of the
search engine. As one would expect the more that is paid by the
advertiser to link its website with the keywords, the more prominently is
its advertisement displayed. The aim is that the person engaged in the
search will click on the advertisement and be taken to the advertiser’s
website.5

[11] One of the central complaints by Yuppiechef is that when the word
‘Yuppie’ is typed into the Google search engine a drop down menu
appears below the search box showing both Yuppiechef and Yuppie
Gadgets. They submit that this is proof of the similarity of the two marks
and that it must inevitably result in the diversion of customers from their
site, even if it is only idle curiosity on the part of the browser that takes
them to Yuppie Gadgets when they were looking for Yuppiechef. As Mr
Price, a digital marketing specialist employed by Yuppiechef, said in his
affidavit:
‘… even those customers who are not confused are likely to find out about [Yuppie
Gadgets] by searching for the Applicant [ ie Yuppiechef] on the internet’
and
‘This function [the drop down menu] could further increase the visibility of [Yuppie
Gadgets’s] website, which is lesser known than the Yuppiechef website and cause
users to be misdirected or to assume that the websites are associated.’

5 A fuller explanation of the workings of GoogleAds is to be found in Cochrane Steel Products (Pty)
Ltd v M-Systems Group (Pty) Ltd and Another [2016] ZASCA 74; [2016] 3 All SA 345 (SCA) para 4,
quoting the relevant portion of the judgment of Kitchin LJ in Interflora Inc v Marks and Spencer Plc
[2014] EWCA Civ 1403 (CA). Neither of those cases is directly relevant to the present one as they
involved the use by a competitor of a registered trade mark as a key word in order to prompt the search
engine to show their advertisement on the search result page.

In support of these contentions Yuppiechef referred to some incidents that
it said demonstrated actual confusion. I will revert to these.

[12] Yuppiechef pursued its claim of trade mark infringement under
each of ss 34(1)(a), (b) and (c) of the Act and added a claim based upon
passing off under the common law. It is convenient to deal with each in
turn.

Section 34(1)(a) of the Act

[13] In Rembrandt Fabrikante & Handelaars (Edms) Bpk v Gulf Oil
Corporation6 Trollip J said that the statutory system of trademark
protection ‘is designed to protect, facilitate and further the trading in the
particular goods in respect of which the trademark is registered’. Save
that, since he said that, it has become possible to register trademarks in
respect of trading in services as well as goods, the statement remains
apposite.7 The trademark serves as a badge of origin of the goods or
services to which it is applied. 8 The reference to a badge of origin is
directed at the original source of the goods or services, not the
mechanism through which they were acquired. Thus, to say that one
bought a pair of shoes at A&D Spitz or some other well-known shoe store
merely identifies the shop where the goods were purchased and not their
origin. The shoes in question will in turn bear a trademark, such as
Carvela or Kurt Geiger or Jimmy Choo. Those are the marks that indicate

6 Gulf Oil Corporation v Rembrandt Fabrikante & Handelaars (Edms) Bpk 1963 (2) SA 10 (T) at 24D-
E .
7 McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd & another; Mc Donald’s
Corporation v Dax Prop CC & another; McDonald’s Corporation v Joburgers Drive-Inn Restaurant
(Pty) Ltd and Dax Prop CC [1996] ZASCA 82;1997 (1) SA 1 (A) at 29H-30; Arjo Wiggens Ltd v Idem
(Pty) Ltd & another [2001] ZASCA 109; 2002 (1) SA 591 (SCA) para 10.
8 Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd [2007] ZASCA 53; 2007 (6) SA 263
(SCA) (Verimark) para 5.

their origin. The mark A&D Spitz identifies the shop and not the goods
that can be purchased there.

[14] The marks that Yuppiechef seek to protect are registered in respect
of goods in three classes. It is common cause that there is at least some
overlap between the goods sold by Yuppie Gadgets and the goods
specified in these classes. In terms of s 34(1)(a) the three marks would be
infringed by the unauthorised use in the course of trade in relation to the
goods referred to in those classes of an identical mark or one so nearly
resembling it as to be likely to deceive or cause confusion. That
highlights both the scope and the limits of the protection provided by
registration of the mark. It is prohibited use to use an identical, deceptive
or confusingly similar mark in relation to goods falling within those
classes. But the use of the same mark on other goods or services, falling
outside the class of goods or services covered by the registration, does not
amount to an infringement under this section.

[15] That brings me to the first line of defence of Yuppie Gadgets. It
contended that it did not use its unregistered mark at all in relation to
goods, but only in relation to the conduct of their business as an online
retailer of goods. As the registered mark is a mark in respect of goods,
and the use of Yuppie Gadgets was as a mark to identify its business, it
contended that its use did not infringe in terms of s 34(1)(a).  It said that
this was use as a service mark in terms of the Act and the Yuppiechef
marks are not service marks, so that the use of Yuppie Gadgets was not
an infringement under s 34(1)(a).

Use in respect of goods
[16] In terms of s 2(3)(a) of the Act references in the Act to the use of a
trade mark in relation to goods shall be construed as references to the use
thereof ‘upon, or in physical or other relation to’ such goods. Yuppiechef
did not contend that the mark Yuppie Gadgets was being used on or in
physical relation to goods. Instead it argued that by using the mark
Yuppie Gadgets on its website, which advertised for sale goods that
apparently bore no other mark, the mark was being used ‘in other
relation’ to those goods. It submitted that there was nothing to make a
shopper suspect that the goods appearing on the website were not those of
Yuppie Gadgets and that consumers would accordingly assume that the
goods originated from Yuppie Gadgets and hold it liable for any defects
in the goods.

[17] I do not think that the fact that a website bears the retailer’s mark
would ordinarily convey to a prospective customer that the goods
advertised for sale on that site emanate from the retailer. The position
might be different when dealing with a speciality retailer, but in the case
of a retailer of a range of general goods customers do not ordinarily
expect the goods to originate with the retailer. One does not walk into a
shop selling household goods for the kitchen expecting that the cutlery
and crockery, the pots and pans, and the other utensils and pieces of
equipment, ranging from toasters to mixers, frying pans to corkscrews, all
originate from the owner of the store. An online retailer is no different.
As regards liability for defects in the goods, that will depend upon the
terms of the contract of sale and consumer protection legislation, rather
than being an indication of the use of a mark in relation to the goods sold.

[18] Section 2(3)(a) of the Act reproduces exactly the corresponding
section in the previous Trade Marks Act 62 of 1963. The expression ‘in
other relation to’ was considered by this court in Miele et Cie GmbH &
Co v Euro Electrical (Pty) Ltd.9 Beyond saying that ‘in relation to’ –
which may not be quite the same – is a phrase susceptible of a wide
meaning, the court made no attempt to define further what it meant. It
said that this would be for a court to decide in each case given the
context. On the facts it held that the use of the registered mark Miele in
the name of a shop trading in household electrical equipment and
providing technical services was use in relation to goods of the kind for
which the mark was registered, although the use was not as a mark.

[19] There is a brief passage in Webster and Page10 that says that use in
‘physical relation’ to goods covers use in physical juxtaposition to the
goods, such as use on containers or wrappers for the goods or on tickets
or tags, while use in ‘other relation’ to goods covers use physically
divorced from the goods, but of such a nature as to be identifiable with
those goods. The authors suggest this would include use on invoices or
other documents relating to the goods. In my view both propositions are
too broadly stated. Online retailers may well package the goods they sell
for transmission by post or courier in packaging that identifies them as
the retailer. Anyone who has purchased something from Amazon will be
aware that it will arrive in packaging reflecting that fact, but this is not,
nor is it intended to be, any indication of the provenance of the goods

9 Miele et Cie GmbH & Co v Euro Electrical (Pty) Ltd [1988] ZASCA 1; 1988 (2) SA 583 (A) 599G-
600B.
10 GC Webster and NS Page South African Trade Marks 4ed (1997) para 4.3. The authors cite Abbott
Laboratories and Another v UAP Crop Care (Pty) Ltd and Others [1999] 1 All SA 502 (C) 514D-I in
support of this proposition but that case dealt with comparative advertising and not the issue with
which I am concerned. It is accordingly unnecessary to consider the correctness of the reasoning in that
decision.

inside the package. The same, I think, goes for Yuppie Gadgets, whose
packaging also reflects that the goods were purchased from it. As to the
proposition that use of a mark on an invoice for goods is a badge of origin
of those goods, it manifestly cannot be correct in relation to goods that
bear some other mark and would not ordinarily be the case in relation to
any goods.

[20] It does not seem to me that Yuppie Gadgets uses its mark on, or in
physical relation to, or in other relation to goods. That would be contrary
to its business model. As with any other retailer it uses the mark to
identify its business of selling its stock in trade. In that it is no different
from household names in the world of bricks and mortar, such as Macy’s
in New York, Harrod’s in London, or Galeries Lafayette and Carrefour in
Paris. Misleading use of such names could found actions based on
passing off, but if they were not used in relation to goods they were
incapable of being registered as trade marks.11 Such registration only
became permissible in the circumstances outlined below.

[21] When registration of trade marks in respect of the provision of
services became possible, retailers in both England and South Africa
attempted to register their well-established trading names as trade marks.
Those endeavours failed12 because of the difficulty of identifying the
service provided by a retailer of goods. Bingham LJ13 summarised the
difficulty in the following way:

11 Use of the trading name in relation to house brands or house lines would of course be use in relation
to goods and could be protected by registration of the name as a mark in respect of the classes of goods
covered by the house brand or line.
12 Dee Corporation plc & others [1990] RPC 159 (CA) (Dee); Tool Wholesale Holdings (Pty) Ltd v
Action Bolt (Pty) Ltd & another [1990] ZASCA 135; 1991 (2) SA 80 (A).
13 Dee 183 line 32 to 184 line 9.

‘There must be many providers of distinctive professional, financial, commercial or
person services who could reasonably claim that their activities deserve the same
statutory protection as has been given to manufacturers and sellers of goods.
Trademark legislation provides a convenient and rather summary means of protecting
goodwill; the goodwill of one who sells a service is not the less in need of protection.
I do not, however, think that a retailer of goods (who may obtain trademark protection
for the goods he sells) can sensibly be regarded as trading in the provision of retail
services. Doubtless these applicants, and other retailers, take great care and use much
imagination and spend large sums of money to provide attractive premises and an
attractive range of goods and an attractive and helpful sales staff and an efficient and
convenient selling procedure. But these services (if one calls them such) are not
services which the retailer sells as such; they are simply things he does to promote
sales and maximise his profits as a retailer. Most of the services are available for
customers who do not buy as well as those who do; and even those who do buy do not
pay for the services as such, although doubtless the price paid usually covers the costs
of sale. I find nothing in the Act to suggest that the essentially simple process of
selling goods by retail is to be broken down so as to label part of the process that of
rendering a retail service and the balance that of trading in goods.’

[22] In Tool Wholesale Holdings,14 Hoexter JA, after considering in
some detail the decision in Dee, said that it provided authority for three
propositions that were equally of application in South Africa, namely
that:
‘(1)
Service marks are designed to provide statutory protection for the goodwill of
persons who trade in the provision of services;
(2)
The business of a retailer of goods is not the provision of services calculated to
facilitate the sale. The business of a retailer is the sale itself;
(3)
Services which are purely ancillary or incidental to retail selling are logically
indissociable therefrom.’

14 At 91A-D

It appears that this was also the approach of the Court of Justice of the
European Union,15 which said that the purpose of a trade name or shop
name is to designate the business that is being carried on and such use is
not use in relation to goods or services. It is only where the trading name
is attached to the goods that are marketed, as occurs with a house brand,
that it becomes use in relation to goods.

[23] In view of the difficulties in regarding retail or wholesale trading as
a service, the definition of ‘services’ in s 2(1) of the Act is now qualified
by the statement that:
‘Services’ includes the offering for sale or the sale of goods in the retail or wholesale
trade’.16
That gives effect to the provisions of the International Classification of
Goods and Services for the purposes of Registration of Marks (the Nice
Classification, 8 ed, 2001) to which South Africa adheres. Class 35,
which is the first class under the general heading of services, refers to:
‘Advertising; business management; business administration; office functions.’
In the explanatory note it is said that:
‘This Class includes, in particular:
─ the bringing together, for the benefit of others, of a variety of goods (excluding the
transport thereof), enabling customers to conveniently view and purchase those
goods; such services may be provided by retail stores, wholesale outlets, through mail
or per catalogues or by means of electronic media, for example, through web sites or
television shopping programmes’.

[24] The effect of all this is to place the mark of a retailer or wholesaler,
when used only to identify their business and not on, or in any relation,
physical or otherwise, to any goods, squarely within the field of a service

15 Céline SARL v Céline SA [2007] EUECJ C-17/06; [2007] ECR 1-7041 paras 21 and 22.
16 Blockbuster Entertainment Corporation v Registrar of Trade Marks 1994 (3) SA 402 (T) 404C-F.

mark. That is apparent from the following passage in the judgment in PPI
Makelaars & another v Professional Provident Society of South Africa:17
‘The latter marks are inherently different: services are ephemeral; they are often
concerned with the provision of trade-marked products of third parties; they are not
offered side by side enabling customers to make instant comparisons; quality control
is difficult, if not absent. In addition, service-marks such as those relating to vague
topics like financial services are more indefinite than goods marks relating to, say,
clothing.’ (Emphasis added.)

[25] If Yuppiechef had been registered as a service mark in class 35 for
retail services its complaint against Yuppie Gadgets would have been
restricted to the question whether the two marks so nearly resembled one
another that the use of Yuppie Gadgets was likely to deceive or cause
confusion. Its endeavour to shoehorn the Yuppie Gadgets mark into the
category of a mark in relation to goods arose from the fact that it had not
registered Yuppiechef as a services mark. It could not overcome this by
contending that the Yuppie Gadgets mark was used in other relation to
goods. In my view its case based on the use of the mark Yuppie Gadgets
in other relation to goods must fail.

The likelihood of deception or confusion
[26] The second string to the defence of the claim under s 34(1)(a) was
that in any event the two marks did not so nearly resemble one another
that there was a likelihood of deception or confusion. The tests for this
are by now well-established and there is little point in repeating, or
seeking to restate, them. What is required is a value judgment on the
question of the likelihood of deception or confusion based on a global

17 PPI Makelaars & another v Professional Provident Society of South Africa [1997] ZASCA 88; 1998
(1) SA 595 (SCA) at 603D-E.

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.18 It is nonetheless not sufficient for
judges merely to say that their impression is that the alleged infringing
mark is, or is not, likely to deceive or cause confusion. There is an
obligation to explain why the judge holds that view.

[27] The obvious point of similarity between the two marks lies in the
use of the word ‘Yuppie’. Counsel sought to argue that this is the
dominant feature of the two marks and that the addition of ‘chef’ in the
one and ‘Gadgets’ in the other does not alter the initial impression. I do
not agree. Those additions are an integral part of the two marks and, in
the case of ‘Yuppiechef’, the two words have been deliberately combined
to form a single composite word. One cannot simply disregard the
additional elements of the two marks.19 Both visually and aurally the two
marks are different. While ‘yuppie’ is common to both, ‘chef’ and
‘gadgets’ are incapable of being confused, either when seen or when
spoken. The one consists of a single syllable, the other of two. In addition
the concepts conjured up by the words ‘chef’ and ‘gadgets’ are worlds
apart.

18 Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd [1984] ZASCA 51; 1984 (3) SA 623 (A)
at 641A-E; National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd [2001] ZASCA 17; 2001 (3) SA
563 (SCA) (National Brands) para 6; Cowbell AG v ICS Holdings Ltd [2001] ZASCA 18; 2001 (3) SA
941 (SCA) paras 10-15; Puma AG Rudolph Dassler Sport v Global Warming (Pty) Ltd [2009] ZASCA
89; 2010 (2) SA 600 (SCA) paras 8-9 and Century City Apartments Property Services CC & another v
Century City Property Owners’ Association [2009] ZASCA 157; 2010 (3) SA 1 (SCA) para 13.
19 Distell Ltd v KZN Wines and Spirits CC [2016] ZASCA 18 para 16.

[28] Counsel for Yuppiechef laid considerable stress on the evidence of
actual confusion elicited by Yuppiechef. He correctly emphasised the fact
that in many cases such evidence is hard to come by and submitted that
this should be decisive. In four cases affidavits were delivered by the
persons concerned and in the other five instances reliance was placed
solely on the contents of email exchanges between members of the public
and Yuppiechef. In dealing with the evidence I will anonymise the names
of the persons concerned.

[29] MG saw an advertisement on the social media site Facebook for a
general discount of fifteen percent on all goods. The advertisement was
placed by Yuppie Gadgets. Her affidavit reflected the ephemeral nature
of communication on social media, because she saw an advertisement for
‘Yuppie(something)’ and leapt to the conclusion that this was
Yuppiechef, with which she was familiar. Her response to the
advertisement was to email Yuppiechef and ask if the discount applied to
all goods and would be available all day. Her affidavit does not indicate
why she did this, that is, whether she simply had an eye for a bargain or
saw an opportunity to make a purchase already in contemplation at a
better price. When told that Yuppiechef did not have a sale on she went
back to the advertisement and responded ‘Oh sorry man, its my mistake,
it was Yuppie Gadgets that were advertising it.’ In other words her
confusion arose from her jumping to a conclusion without reading the
advertisement. Had it been an advertisement by ‘Yuppie Goods, Yuppie
Food or Yuppie Home’ her reaction was likely to have been the same.

[30] In October 2012 BJ had purchased various items – a bottle holder,
fridge magnets, an Asado Flameboy, a Fairground popcorn machine, a
Fairground treat dispenser, a backwards clock and an icecream doorstop –

from Yuppie Gadgets at a price of nearly R2 000. He had paid by way of
an electronic funds transfer, which would have required him to enter
Yuppie Gadgets with his bank as a party to which payment could be
made using electronic banking. In May 2013 he wanted to buy another
icecream doorstop, so he attached a copy of the previous order, clearly
addressed to Yuppie Gadgets, to an email addressed to Yuppiechef. He
claimed to be confused between the two businesses, but it is unclear on
what basis he made that claim or why on this second occasion he had not
exhibited the same degree of care with his order as he had eight months
earlier. The facts demonstrate that he made an error, but not that he was
confused between the two marks.

[31] PM was an office administrator. She said that she knew
Yuppiechef as an online retail store. In September 2013 she prepared a
purchase order for 180 Solarmonkey Adventurers at a price of R1 300
each, totalling R234 000. These were gifts to be handed out at an event
for a client. The order correctly identified Yuppie Gadgets as the party
from whom the goods were to be purchased and included a supplier
number that could only have emanated from Yuppie Gadgets. This
indicated that there must have been prior communication between her and
Yuppie Gadgets. The order contained internal references for the
purchaser’s records and accurately set out its delivery address.
Notwithstanding all of this and the fact that her email header said that it
was a purchase order addressed to Yuppie Gadgets, PM sent the order to
Yuppiechef, who pointed out that she had sent it to the wrong address.
Her response was to say in a joking fashion ‘you can see where my
allegiances lie   haha.’  There was no explanation for the error. If she had
previously purchased goods from Yuppiechef, as appears to be likely, it
may be that in preparing the email her computer automatically completed

the address by inserting it from her record of addressees previously used
and she failed to notice.20 Nothing in her affidavit suggested that she was
confused between the two marks.

[32] The last deponent to an affidavit was NDP. He sent an email to
Yuppiechef on 23 October 2012 reading:
‘Just
out
of
curiosity,
I
take
it
you
guys
are
not
affiliated
with
http://www.yuppiegadgets.co.za right?’
It is not clear to me how a statement that the two businesses are not
related to one another can constitute evidence of confusion between them.
NDP did not disclose his reasons for contacting Yuppiechef to ask about
this and his affidavit says that he doubted a connection between the two
because of the ‘poor quality and presentation’ of the Yuppie Gadgets
website. As he said that he was a software engineer that fact perhaps lay
behind his enquiry, but in the absence of an explanation it is not evidence
of confusion between the two marks.

[33] The emails can be dealt with more summarily. In the first a
recipient of Yuppie Gadgets vouchers enquired whether she could use
them at Yuppie Chef. That may have been more in hope than expectation.
In the second an order was sent to Yuppie Gadgets for items all of which
were marked as appearing on the Yuppiechef website. Why this occurred
is unclear. The person concerned was aware of the existence of both
websites as she was corresponding with the Yuppie Gadgets site and
giving references to the Yuppiechef website. The third email started with
the following:

20 This is a common feature of email programs. For example there are a number of judges names in my
email address book. When I commence addressing an email to ‘Judge’ the program automatically
shows the names of the judges in the address book. It is very easy in those circumstances inadvertently
to select an incorrect addressee.

‘I thought I recently saw a mini desk vacuum advertised in one of your newsletters.’
The tentative nature of this enquiry did not indicate any confusion
between the marks, and when Yuppiechef pointed out that it did not stock
such items the response was ‘Aha thanks so much’, not a complaint of
confusion.

[34] The fourth email involved a person who said “I recently saw a self-
stirring mug on Yuppiechef, however the link could not open.’
Presumably the link had been typed into the Yuppiechef site search
engine, because if the link had been typed into a general search engine,
such as Google, it would have taken the enquirer to the Yuppie Gadgets
site. Why the enquirer did this does not emerge from the subsequent
exchange of emails nor did she complain of being confused. Finally, the
fifth and last email read:
‘Is Yuppiegadgets your business or one calculated to deceive the public? Just asking –
confused!!’
In the absence of an affidavit it is impossible to say what gave rise to this
email.

[35]     Overall the affidavits and emails reflect nine instances of
claimed confusion over an extended period in relation to a business where
a typing error and too rapid pressing of the ‘send’ button can result in an
email being misdirected even in the absence of confusion. In my view the
evidence does not establish a substantial risk of confusion or deception
between the two marks.

[36] In considering the likelihood of deception or confusion it is
necessary to ask whether the nature of the two enterprises, that is, online
retailers, affects the matter. The type of customer is one who is

moderately familiar with computers and not afraid to shop online. They
will be familiar with search engines and willing to visit several sites to
find what they are looking for. They will be aware that the first
suggestion by the search engine is not necessarily their target and will
probably
have
some
appreciation
of
the
distinction
between
advertisements and other listings. They will also be familiar with drop
down menus and how to navigate these to find the desired site. Lastly I
think they will accept that occasionally haste, inadequate typing skills or
failure to read thoroughly may take them to a destination other than the
one they had in mind. If they encounter separate websites with no
hyperlink connecting them they will not expect them to be connected.

[37] There is an inherent safeguard against confusion between sites in
the light of the mechanism for purchasing items on online retail sites.
This is not as simple as handing over a credit card or cash at a shop
counter. Substantial security features are built into the process because it
involves the use of a credit card. The purchaser will have to create an
identity and provide information such as their name, address (both
physical and email), telephone number and importantly credit or debit
card details. Usually the identity will include a password and these details
are retained by the online retailer. As the customer selects an item to
purchase it is placed in a metaphorical basket, trolley or cart and the
customer is asked whether they wish to continue shopping or proceed to
check out. At every stage of the check out and payment process details
will have to be confirmed. So the shopping process always provides time
for reflection. A person confronted at every stage of this process with
Yuppie Gadgets is unlikely at the end of this to believe that they are
dealing with Yuppiechef. When dealing with return customers the process
is not repeated as they are usually invited to log in to their existing

account. So the possibility of confusion is restricted to persons being led
astray in initially accessing the site.

[38] All of these features to my mind serve to minimise the risk of
deception or confusion. At the end of the day the argument revolved
around the centrality of the word ‘yuppie’ in Yuppiechef’s brand identity.
As to that there are many cases in which it has been said that it is not the
purpose of trade marks or copyright to enable people to secure
monopolies on the commons of the English language. Yuppie is an
ordinary word in common use. And as Lord Simonds said in Office
Cleaning Services:21
‘So long as descriptive words are used by two traders as part of their respective trade
names, it is possible that some members of the public will be confused whatever the
differentiating words may be. I am ready to believe that in this case genuine mistakes
were made. I think they ought not to have been made.’

[39] For those reasons, in my view both of the defences raised by
Yuppie Gadgets to the claim of infringement under s 34(1)(a) had to
succeed and the appeal under that head must fail.

Section 34(1)(b) of the Act
[40]  The claim under this head must fail for the second reason in
respect of the claim under s 34(1)(a). The section provides that
infringement occurs by the unauthorised use of a mark, which is identical
or similar to the registered mark, in the course of trade in relation to
goods or services that are so similar to the goods or services in relation to
which the mark is registered, that in such use there exists the likelihood of

21 Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 at
43.

confusion or deception. It therefore extends the scope of protection
beyond the goods or services in respect of which the mark is registered to
use of a similar mark, likely to cause confusion or deception, in relation
to goods or services that are similar to those in respect of which the mark
is registered, while not being covered by that registration.

[41] Yuppiechef argued that, given that the goods sold on the Yuppie
Gadgets website were the same as some of the goods in respect of which
its marks were registered, it followed that an outlet selling those goods is
similar to the goods themselves. I am not sure that this is correct, as it
appears to be an attempt to bridge the gap between a goods mark and a
services mark. I have held that Yuppie Gadgets uses its mark in relation
to the services it provides as a retailer of goods. It is unclear to me that
those, or any other, services could ever be ‘similar’ to goods. The
intrinsic nature of goods is wholly different from the intrinsic nature of
services and vice versa. It may be that similarity in this section, when
dealing with a services mark, refers only to similar services and, when
dealing with a goods mark, refers only to similar goods.22 However, the
question was not fully explored in argument before us and the matter can
be resolved without reaching any conclusion on this issue, so it is better
to refrain from deciding the point.

[42] The claim based on s 34(1)(b) must fail for the second of the
reasons in relation to the s 34(1)(a) claim, namely that the marks are not
so similar that the use thereof is likely to cause deception or confusion.
That requires no further discussion.

22 Mettenheimer and Another v Zonquasdrif Vineyards CC and Others [2013] ZASCA 152; 2014 (2)
SA 204 (SCA) dealt with two different categories of goods.

Section 34(1)(c) of the Act
[43] This is the anti-dilution provision of the Act.23 It prohibits the
unauthorised use in the course of trade in relation to any goods or
services of a mark identical or similar to a registered mark, if the
registered mark is well-known in the Republic and the use of the alleged
infringing mark would be likely to take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the registered
mark. The section casts its net more broadly than the earlier sub-sections
in that it applies in the absence of confusion or deception. It does not
require trade mark use by the alleged infringer, nor does it necessarily
require an attack on the badge of origin function of the registered mark.
Its purpose is to protect the reputation, advertising value and selling
power of a well-known mark.24 In order to succeed in this claim it was
necessary for Yuppiechef to show that the mark Yuppie Gadgets was
similar to its mark and that its use would take unfair advantage of its
mark or would be detrimental to the distinctive character or repute of its
mark.

[44] Whether the alleged infringing mark is similar to the registered
mark must be considered without regard to its potential to create
confusion or deception. This court said in Bata25 that it requires more
than a slight resemblance between the two marks and that ‘a marked

23 There is a full discussion of the background to and origins of this provision in Laugh It Off
Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International
[2004] ZASCA 76; 2005 (2) SA 46 (SCA) paras 13-18. The discussion of the section’s purpose, on
appeal from that decision in Laugh It Off Promotions CC v South African Breweries International
(Finance) BV t/a Sabmark International (Freedom of Expression Institute as Amicus Curiae) [2005]
ZACC 7; 2006 (1) SA 144 (CC); 2005 (8) BCLR 743 (CC) paras 34-42, is consistent with that in this
court.
24 Verimark supra para 13.
25 Bata Ltd v Face Fashions CC and Another [2000] ZASCA 192; 2001 (1) SA 844 (SCA) para 14.

resemblance or likeness’ is the appropriate meaning. It is not wholly clear
how the two marks can exhibit a marked resemblance or likeness without
so nearly resembling one another that there is a likelihood of deception or
confusion,26 but I need not resolve that conundrum. In my view the only
similarity between the two marks lies in the use of the word ‘Yuppie’ and
that does not make them similar for the purposes of s 34(1)(c).

[45] In any event the further requirements of the section are not
established. In Verimark27 it was rightly said that the unfair advantage or
the detriment must be properly substantiated to the satisfaction of the
court. In other words it must be established on a balance of probabilities.
That was not done in this case. There was no evidence to show that in the
absence of confusion or deception Yuppie Gadgets would obtain an
unfair advantage or Yuppiechef would suffer any detriment. On both legs
therefore the claim based on s 34(1)(c) must fail.

Passing off
[46]  This was the last string to the Yuppiechef bow. It was based on the
reputation in the Yuppiechef name, which is not only its trading name but
also the domain name of its website. The basis for alleging confusion or
deception on the part of Yuppie Gadgets was a contention that persons
typing in the website’s domain or searching for it using a search engine
might arrive at the Yuppie Gadgets site when they were searching for the
Yuppiechef site.  A makeweight point was added that the two websites
‘have a similar look and feel’. Even after having accepted the invitation
in the heads of argument to visit both sites, the similarity in look and feel

26 National Brands supra para 12.
27 Verimark supra para 14.

escaped me. And as to the similarity in the names that has been
adequately dealt with and disposed of earlier in this judgment. The claim
based on passing off must fail.

Result
[47]  In the result the appeal is dismissed with costs.

M J D WALLIS
JUDGE OF APPEAL

Appearances

For appellant:
G Marriott
Instructed by:
Von Seidels Attorneys, Cape Town,
Honey Attorneys, Bloemfontein
For respondent:
O Salmon SC

Instructed by:
Schindlers Attorneys, Johannesburg,

Webbers Attorneys, Bloemfontein.