The brand stop 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 worth unpacking.
The plaintiff’s case
The plaintiff, Golden Fried Chicken (Pty) Ltd, is the owner of Chicken Licken and owns, among othersthe following trademark registrations in South Africa:
- SOUL KITCHEN in class 43 (catering services).
- SOUL in classes 29 and 30 (food), as well as 43.
The plaintiff claimed that its recordings had been infringed by the defendant, a restaurant in Plettenberg Bay called East Coast Soul Kitchen, and sought an injunction against the defendant to cease using its trademarks and remove all infringing material.
In the first instance of infringement, the applicant argued that due to the restaurant’s location, the term “East Coast” is purely descriptive and therefore insufficient to distinguish the name of the restaurant from the applicant’s SOUL KITCHEN brand. . The plaintiff also alleged a second infringement through the use of the term SOUL to describe various restaurant menu offerings, such as “Soul Smash Burger” and “Soul Side Salad”.
The restaurant responded to the plaintiff’s allegations in several ways and submitted that:
- The trademarks are not identical – they trade as East Coast Soul Kitchen, not SOUL KITCHEN;
- The use of the word ‘soul’ does not take unfair advantage of the distinctive character and reputation of the applicant’s mark and in no way harms them; and
- There was no possibility of misleading people or confusing them because:
- the restaurant was located more than 100 km 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 for which the applicant had registered its marks); and
- the parties use very different logos.
The Respondent nevertheless made some changes to his name and menu to avoid litigation and, shortly before the hearing, filed what was called a “status quo affidavit” to clarify the true situation. It was common knowledge that at the time of the hearing, East Coast Soul Kitchen had changed its name to “Sol Kitchen”, updated its menu, wine list and advertising banners, and made a concerted effort to s ensuring its name is changed on its website and social media pages. The plaintiff has not updated his notice of motion in accordance with this affidavit.
The judge’s conclusion
Judge Gamble noted that there was no allegation of deceptive marketing or unlawful competition, merely trademark infringement, and as such the case must be resolved under trademark law. of business.
He said that while section 34(1)(a) of the Act requires the use of an identical mark, the respondent “changed its name to Sol Kitchen…Sol Kitchen is not an identical mark and the applicant does not claim that it is” .
The judge said that the plaintiff should have amended his Notice of Motion to seek relief with respect to ‘Sol Kitchen’ and that by not doing so, “it must therefore be accepted that the plaintiff is not offended or aggrieved by the use of the trademark ‘Sol Cuisine'”.
The judge concluded that “bans are not granted to remedy past wrongs” and that a ban in such circumstances “serves no purpose and is not warranted.”
Nor was the judge concerned that some people might still find reviews referencing East Coast Soul Kitchen: “There is nothing the restaurant can do to correct this misdescription.” As to the fact that there were isolated references to the restaurant’s former name on its website, the judge found that this was undoubtedly an oversight and granted the plaintiff an alternative remedy by ordering deletion of these references.
With respect to the second offence, the judge could not find the food offerings which the petitioner claimed infringed its SOUL mark on the respondent’s revised menu and, without establishing continued use, “the second alleged offense suffers much the same fate as the first”.
The court also criticized the applicant for not having specified how it used its respective marks:
“In order to determine whether there is a likelihood of confusion, a court must be informed of the circumstances in which the registered mark is used, in particular the nature of the market in which the plaintiff operates and the place of his “SOUL KITCHEN” in its entire product. presentation. Absent this, there is no basis on which the Court can begin to assess the possibility (or extent) of confusion in the foodservice market in which the parties to this dispute clearly operate. . »
The judge considered that no case of infringement had been established. 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 cost skirmish.” He ordered the respondent to ensure that all remaining references to East Coast Soul Kitchen on its website were removed within a week of the judgment. As to costs, each party was ordered to pay its own as neither party achieved substantial success.
The outcome of SOUL
This article could end here, but there is much more to the judgment; much 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 formal notice, the restaurant relied on this Estimate of Judge Pillay in an earlier case involving Golden Fried Chicken:
“If, indeed, Plaintiff’s SOUL brand has the remarkable ability to communicate African cool to its consumers, a pride in an Afrocentric heritage characterized by success against adversity, an elevation above racial prejudice and stereotypes where ‘darkness’ is not a defect but a positive advantage, so in the spirit of ubuntu, which is the South African conception of humanity and Africanism, the candidate should, in the national interest, to encourage rather than restrict the use of ‘SOUL’ to mend our social fractures and fissures. ‘Success against adversity’ also means enabling small businesses to survive the onslaught of large, economically powerful corporations like the plaintiff.”
This citation is particular in that the respective size and market power of the parties are irrelevant in determining trademark infringement, and it seems contrary to the fundamental principles of trademark law to encourage third parties to use the trademark of a third party without permission. Maybe what the judge meant by that obiter shouldn’t the SOUL brand, especially in relation to food and restaurant services, have been allowed to be registered in the first place?
This seems to be supported by another note invoked by the respondent, this time of Judge Yacoob in another case involving Golden Fried Chicken:
“Golden cannot claim that it alone has the right to exploit the culture and meanings associated with the words ‘soul’ and ‘soul food'”. This would be inconvenient and discouraging not only to companies wishing to use the words, but also to the way the associated culture can be disseminated and developed in the market. Admittedly, for example, Golden cannot claim to benefit alone from the popularity of American soul music, or American soul food.
Nonetheless, Judge Yacoob found that the SOUL trademarks in this case had acquired the ability to distinguish Golden’s products in the fast food market (but no more), and declined to order their removal from the trademark register.
To finish, there are these words of Justice Gamble in this case:
“The court is none the wiser and must speculate on the true nature and origin of ‘soul food.’ Is it the food that has its roots in the eponymous African-American musical genre of the 1960s and 1970s launched by favorites such as James Brown and Aretha Franklin? Or is it wholesome food that is perhaps meant to soothe the soul of a hungry or troubled diner?”
Judge Gamble found that because of the manner in which the plaintiff had pleaded, in failing to provide evidence of the nature and extent of Golden’s operations and the manner in which it uses its various SOUL marks, “this court has little before it to assess the complaint. by the applicant from the prospect of confusion on the part of the owners of the two businesses parties to this dispute”.
In short, a resolutely atypical case, but which has a lot of soul!