South Africa: Court Rules Yuppiechef and Yuppie Gadgets Not Similar

SOUTH AFRICA
Image Credit: Hongqi Zhang (aka Michael Zhang)

November 11, 2016 — The Supreme Court of Appeal in South Africa dismissed an appeal filed by Yuppiechef stating that Yuppiechef and Yuppie Gadgets were not so similar that the use of Yuppie Gadgets was likely to cause deception or cause confusion among shoppers who purchased from online retail stores.

In 2011, Yuppie Gadgets Holdings (Pty) Ltd changed its name from Urban Gadgets to Yuppie Gadgets. Shortly thereafter it received a letter, demanding that the company stop using the word ‘Yuppie’ in its name. Yuppiechef had registered the trademark ‘Yuppiechef’ in classes 8, 11 and 21. These classes encompass different types of kitchen equipment, which was the primary focus of the business when it was established, as well as other items of household equipment. Its primary complaint against Yuppie Gadgets was that by using the unregistered mark ‘Yuppie Gadgets’ in relation to its own online business of selling quirky and unusual items and gadgets for household and office use, it was infringing these marks and passing off its business as that of Yuppiechef.

Yuppie Gadgets refused to stop using the word Yuppie, and the case progressed to the Western Cape High Court which dismissed Yuppiechef’s claims‚ but granted leave to appeal to the Supreme Court of Appeal (SCA).

Yuppiechef appealed to the SCA in Bloemfontein.

While holding that two marks Yuppiechef and Yuppie Gadgets are not so similar that the use of Yuppie Gadgets was calculated to deceive or cause confusion among shoppers, the court also held that the Yuppie Gadgets mark was being used for a business not related to the goods of which Yuppiechef’s mark was registered.  The court further held that there was no evidence of blurring or the tarnishing of the Yuppiechef mark.

The Likelihood of Deception or Confusion

[27] The obvious point of similarity between the two marks lies in the use of the word ‘Yuppie’. Counsel sought to argue that this is the dominant feature of the two marks and that the addition of ‘chef’ in the one and ‘Gadgets’ in the other does not alter the initial impression. I do not agree. Those additions are an integral part of the two marks and, in the case of ‘Yuppiechef’, the two words have been deliberately combined to form a single composite word. One cannot simply disregard the additional elements of the two marks. Both visually and aurally the two marks are different. While ‘yuppie’ is common to both, ‘chef’ and ‘gadgets’ are incapable of being confused, either when seen or when spoken. The one consists of a single syllable, the other of two. In addition the concepts conjured up by the words ‘chef’ and ‘gadgets’ are worlds apart.

Passing off

[46] The basis for alleging confusion or deception on the part of Yuppie Gadgets was a contention that persons typing in the website’s domain or searching for it using a search engine might arrive at the Yuppie Gadgets site when they were searching for the Yuppiechef site.  A makeweight point was added that the two websites ‘have a similar look and feel’. Even after having accepted the invitation in the heads of argument to visit both sites, the similarity in look and feel escaped me. The claim based on passing off must fail.

The Supreme Court of Appeal dismissed the appeal by Yuppiechef, with costs. The full ruling is available here.

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