Let’s (not) twist again
The facts: PepsiCo applied to register the trade mark Pepsi Twist (with and without a device) for soft drinks. The applications were opposed by Atlantic Industries (“Atlantic”) on the basis that they clashed with their existing registrations for Twist, Lemon Twist and Diet Twist in the name of Atlantic; so PepsiCo counter-applied for the cancellation of the earlier registrations.
The basis of the cancellation claim was that “twist” is a descriptive word. The SCA disagreed. It said that, although the word does have meanings in the context of drinks – for example, “a curled piece of lemon 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” – these meanings are slang, obsolete and known to very few South Africans. The court felt that most people would see Twist as an “arbitrary brand name without meaning”. It made the important point that, when it comes to brand creation, you do not always need a coined word:
“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.”
The court referred to an Australian decision, Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, where the court said that, although a word that is descriptive of the goods will be refused, this does not extend to words that are “allusive or metaphorical”. Applying this test, the SCA said this: “If ‘twist’ has any meaning as applied to soft drinks, it is ‘allusive or metaphorical’.”
Likelihood of confusion
When it came to the issue of whether the trade mark Pepsi Twist was likely to cause confusion, the SCA repeated much of what it has said in recent judgments such as Yuppiechef Epson Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd. It said that a “value judgment” is required; that this must be based on the “global appreciation of the two marks”; that “lesser similarities in marks may be counterbalanced by stronger similarities in the goods”; and that “if they (marks) share a dominant feature, there is ordinarily a greater likelihood of deception or confusion”.
The SCA also said that it was relevant that the soft drinks market is huge and diverse. It said that the market “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”.
But what about the elephant in the room, the presence of major trade mark Pepsi in Pepsi Twist, what was the relevance of that? The SCA made a number of points:
So, the trade mark registrations for Twist, Lemon Twist and Diet Twist stood and the trade mark applications for Pepsi Twist failed. Undoubtedly, a very important decision.
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