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A trade mark case with soul

The trade mark judgment of Golden Fried Chicken (Pty) Ltd v Soul Kitchen Restaurant is highly unusual. While the judgment is certainly interesting, it’s not always easy to follow and is worth unpacking.

The applicant’s case

The applicant, Golden Fried Chicken (Pty) Ltd, is the owner of the Chicken Licken business, and owns, inter alia, the following trade mark registrations in South Africa:

  • SOUL KITCHEN in class 43 (restaurant services).
  • SOUL in classes 29 and 30 (foodstuffs), as well as 43.

The applicant claimed that its registrations had been infringed by the respondent, a Plettenberg Bay-based restaurant called East Coast Soul Kitchen, and sought an interdict against the respondent to cease using its trade marks and remove all infringing materials.

Image source

Image source

In the first instance of infringement, the applicant claimed that due to the restaurant’s location, the term “East Coast” is purely descriptive and therefore insufficient to distinguish the restaurant’s name from the applicant’s trade mark SOUL KITCHEN. The applicant also alleged a second infringement through the use of the term SOUL to describe various offerings on the restaurant’s menu, such as “Soul Smash Burger” and “Soul Side Salad”.

The defences

The restaurant responded in several ways to the applicant’s allegations and submitted that:

  • The trade marks aren’t identical – it trades as East Coast Soul Kitchen and not SOUL KITCHEN;
  • The use of the word “soul” does not take any unfair advantage of, nor is it in anyway detrimental to, the distinctive character and repute of the applicant’s trade mark; and
  • There was no possibility of misleading or confusing people as:
    • the restaurant was situated more than 100km from the nearest Chicken Licken;
    • does not operate in the same market as Chicken Licken (notwithstanding the technical overlap between its goods and services and those in respect of which the applicant had registered its trade marks); and
    • the parties use very different logos.

The respondent nonetheless made some changes to its name and menu to avoid litigation and shortly before the hearing, filed what was termed a “status quo affidavit”, to clarify the true state of affairs. It was common cause that by the time of the hearing, East Coast Soul Kitchen had changed its name to “Sol Kitchen”, updated its menu, wine list and advertising bunting, and made a concerted effort to ensure that its name was changed on its website and social media pages. The applicant did not update its notice of motion pursuant to this affidavit.

The judge’s finding

Judge Gamble made the point that there was no claim of passing off or unlawful competition, simply trade mark infringement, and as such the case must be decided squarely within the ambit of the Trade Marks Act.

He said that, whereas section 34(1)(a) of the Act requires the use of an identical mark, the respondent “has changed its name to Sol Kitchen...Sol Kitchen is not an identical mark nor does the applicant claim that it is”.

The judge said that the applicant should have amended its notice of motion to seek relief in relation to “Sol Kitchen” and that by not doing so, “one must accept therefore that the applicant is not offended or prejudiced by the use of the mark ‘Sol Kitchen’”.

The judge concluded that “Interdicts are not granted to address past wrongs” and that an interdict in such circumstances “serves no purpose and is not warranted”.

The judge was also unconcerned about the fact that some people might still find some reviews referring to East Coast Soul Kitchen: “There is nothing that the restaurant can do to correct that misdescription”. As for the fact that there were isolated references to the restaurant’s old name on its website, the judge found that this was no doubt an oversight and granted alternative relief to the applicant by ordering the removal of such references.

As regards the second infringement, the judge could not find the food offerings that the applicant alleged infringed its SOUL trade mark on the respondent’s revised menu and, without establishing ongoing use, “the second alleged infringement suffers much the same fate as the first”.

The court also criticised the applicant for not clarifying how it used its respective trade marks:

“In order to determine whether confusion might arise, a court must be informed of the circumstances under which the registered mark is used, particularly the nature of the market in which the applicant operates and where its “SOUL KITCHEN” fits in to its overall product presentation. Absent this, there is no basis upon which this Court can begin to assess the possibility (or extent) of confusion in the food services market in which the parties to this dispute evidently operate.”

The judge held that no case of infringement had been made out. He said that when the restaurant strategically changed its name to Sol Kitchen the battle was effectively over and all that remained was a potential skirmish about costs”. He ordered the respondent to ensure that all remaining references to East Coast Soul Kitchen on its website be removed within one week of the judgment. As for costs, each party was ordered to pay its own as neither achieved substantial success.

The issue of SOUL

This article could end here, but there’s far more to the judgment; a great deal of it is devoted to the meaning of the word “soul”. This takes us into South African cultural and political issues, and these are always interesting.

In its initial response to the applicant’s letter of demand, the restaurant relied on this quote from Judge Pillay in an earlier case involving Golden Fried Chicken:

“If, indeed the applicant’s SOUL brand has the remarkable capacity to communicate to its consumers 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, then in the spirit of ubuntu, which is the South African conception of humanity and Africanism, the applicant should in the national interest, encourage rather than restrain the use of ‘SOUL’ to mend our social fractures and fissures. ‘Success against adversity’ also means allowing small businesses to survive onslaughts by large, economically powerful corporates like the applicant.”

This quote is peculiar in that the respective sizes and market power of the parties is irrelevant in determining trade mark infringement, and it seems contrary to the fundamental principles of trade mark law to encourage third parties to use a third party’s trade mark without permission. Perhaps what the judge intended by this obiter is that the trade mark SOUL, especially in relation to food and restaurant services, should not have been allowed to be registered in the first place?

This appears to be supported by another quotation relied on by the respondent, this time from Judge Yacoob in a further case involving Golden Fried Chicken:

“Golden cannot contend that only it has the right to exploit the culture and meanings associated with the words ‘soul’ and ‘soul food’’. This would be impractical and chilling not only on businesses wishing to use the words, but also on the manner in which the associated culture may be disseminated and grown in the market. Certainly, for example, Golden cannot claim to have sole benefit of the popularity of American soul music, or of American soul food.”

Nevertheless, Judge Yacoob found that the SOUL trade marks in that case had acquired the ability to distinguish Golden’s products within the fast food market (but no more), and declined to order their removal from the Trade Marks Register.

Finally, there are these words from Judge Gamble in the present case:

“The court is none the wiser and is left to speculate as to the true nature and origin of ‘soul food’. Is it food that has its roots in the eponymous Afro-American music genre of the 1960s and 1970s pioneered by such favourites such as James Brown and Aretha Franklin? Or is it wholesome food which is perhaps intended to assuage the soul of a hungry or troubled diner?”

Judge Gamble found that due to the way the applicant had pleaded, by not providing evidence of the nature and extent of Golden’s operations and the way in which it uses its various SOUL trade marks, “this court has precious little before it to evaluate the complaint by the applicant of the prospect of confusion arising on the part of patrons of the two businesses which are the parties to this litigation”.

All in all a decidedly unusual case, but one with a lotta soul!

Reviewed by Gaelyn Scott, head of ENSafrica’s IP department.

Jeremy de Beer

IP | trainee associate 

jdebeer@ENSafrica.com