A cook-off is a social event in which competitors, in a friendly manner, create their own recipes and produce dishes which are judged by a panel of impartial third parties. On 1 September 2016 Yuppiechef, online retailer of kitchenware, challenged Yuppie Gadgets, an online retailer of various gadgets, to a cook-off, of a not so friendly nature, in Bloemfontein’s most well equipped kitchen also known as The Supreme Court of Appeal. All knives were out as Yuppiechef tried to get Yuppie Gadgets to wear the black apron which has TRADE MARK INFRINGER written all over it.

In choosing its ingredients Yuppiechef used a well known cook book, also referred to as the Trade marks Act 194 of 1993 (“Act”), and chose to compete with 4 dishes namely:

Trade mark infringement in terms of Section 34(1)(a)
Trade mark infringement in terms of Section 34(1) (b) and
Trade mark infringement in terms of Section 34(1) (c) of the Act; and
Passing-off
Yuppie Gadgets on the other hand was playing defence and its plan was to sabotage each of these dishes.

Yuppiechef approached its cooking station and kicked off with its first dish:

Section 34(1)(a) of the Act

This dish required Yuppiechef had to prove that the mark YUPPIE GADGETS is identical or confusingly similar to its mark, that the use thereof is unauthorised, in relation to the same goods that are covered by the YUPPIECHEF trade mark and that the use is likely to cause confusion.

Yuppie Gadgets immediately picked up a flaw in Yuppiechef’s recipe and approached the judges, and requested that this dish be thrown out of the kitchen. Yuppie Gadgets’ chef argued that the mark YUPPIECHEF is registered in relation to goods whereas the mark YUPPIE GADGETS is used in relation to services as it is only being used to identify its business of selling stock in trade. The judges, agreed with this argument.

In an attempt to save the dish from disqualification Yuppiechef’s chef argued that both marks contain the element YUPPIE and since this is the dominant feature of both marks, people of the public is likely to be confused, but the judges remained unconvinced And referred to a previous cook-off in which the judges in that case stated that one must have regard to the descriptive elements in the marks They held further that the nature of online shops and all the security systems in place when shopping online reduce the risk of possible confusion arising.

On this basis Yuppiechef’s first dish was disqualified.

Yuppiechef’s cook, now only with 3 chances left, carefully began his next dish:

Section 34(1)(b) of the Act

According to the recipe book for this dish to be successfully produced Yuppiechef had to prove that the mark YUPPIE GADGETS is identical or confusingly similar to its mark, that the use thereof is unauthorised, in relation to similar goods that are covered by the YUPPIECHEF trade mark and that through the use of the mark it is likely for confusion to arise in the market place.

Once again the judges referred to the fact that Yuppiechef’s marks are registered in relation to goods whereas Yuppie Gadgets uses its mark in relation to services and as such cannot be referred to as “similar goods” Wallis AJ held further that YuppieChef is simply trying to bridge the gap between service and goods marks by instituting proceedings in terms of Section 34(1)(b).

On this basis, the second dish was disqualified.

Yuppiechef’s cook was now running out of ideas and felt that it was time to bring out the main course:

Section 34(1)(c) of the Act:

This dish is most appropriate when a well know mark is being diluted by another party’s mark (identical or similar) and being used in relation to any goods or services. The main feature of the dish is its ability to protect the reputation of a mark.

For Yuppiechef to be successful in this regard they had to prove that the mark YUPPIE GADGET is similar to its YUPPIECHEF mark and that the use of the YUPPIE GADGET mark would be detrimental to the reputation of the mark YUPPIECHEF.

After considering the dish the judges, referred to an earlier battle in the kitchen where it was held that “it requires more than a slight resemblance” and stated that the only similarity between the marks, being the word YUPPIE, is not sufficient to constitute a similarity in terms of Section 34(1)(c).

The judges held further that for this dish to work it must prove damage to the reputation of Yuppiechef’s mark to the court’s satisfaction. However, the judges held, Yuppiechef failed to prove any detriment to its trade mark registration and this dish was also disqualified. Yuppiechef’s only remaining option was to produce something spectacular with only one dish left on the menu. This was the last chance it had to make Yuppie Gadgets wear the black apron.

Passing off

If there were any chances of this dish winning the day Yuppiechef had to prove that its YUPPIECHEF mark has acquired a reputation, that Yuppie Gadgets was misrepresenting itself as being part of the business of Yuppiechef and prove actual damage to the goodwill of its name. Yupiechef’s cook unsuccessfully substantiated this claim by arguing that when customers type in its website domain or searched for it via a search engine they might arrive at the Yuppie Gadgets site. Furthermore, that Yuppie Gadget’s website has the same look and feel which will contribute to the likelihood of confusion.

However, the judges were not convinced that the respective sites have a similar “look and feel” and concluded that no further discussion was required in respect of the similarity of the marks as the issue was duly dealt with earlier in the matter.

Ultimately, the head chef found in favour of Yuppie Gadgets and Yuppiechef was sent home empty handed.