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