Lawyers representing a local biltong company are hot on the heels of a Mexican multinational snack foods firm over its alleged failure to pay legal fees from a bitter dispute relating to a trademark infringement.
They have set their sights on having 89 trademarks registered by the Grupo Bimbo group in South Africa attached to recover their funds.
The Supreme Court of Appeal (SCA) had last year found in favour of Takis Biltong and dismissed with costs an application for special leave to appeal a majority court judgment cancelling trademark registration no 2012/14977 TAKIS FUEGO (the impugned mark).
Judge Kathree Setiloane found: “The respondent (the biltong company) had succeeded in satisfying the requirements of ss 10(12), 10(14) and 10(17) of the Trade Marks Act. Accordingly, the majority concluded, correctly so, that the applicant’s impugned mark was an entry wrongly made in, and wrongly remaining on, the trademark register and it thus fell to be cancelled in terms of ss 10(12), 10(14) and 10(17) of the Trade Marks Act.”
Court documents explained that section 10(17) of the Trade Marks Act provides that a mark can be opposed or cancelled if it is identical to or similar to a trademark which is already registered and which is well known in South Africa.
The court noted that the two marks were very similar.
Grupo Bimbo, the proprietor of the impugned mark, trades in many countries including South Africa.
It was registered in South Africa on June 6, 2012, and covers goods such as bread, pastry, corn flour chips, wheat flour chips, corn extruded, wheat extruded, and popcorn.
Takis Biltong sells biltong and other snack products in South Africa. It is the registered proprietor of two trademarks (the registered TAKIS LOGO marks).
Both registered TAKIS LOGO marks were registered on May 8, 2007, in class 29. They cover goods such as meat, fish, and poultry, and game, preserved meats, meat extracts and sausages.
On April 24, 2015, the local company applied to register a TAKIS LOGO mark and three TAKIS word marks.
These applications are still pending. The goods covered by these pending applications are: (a) class 29 – meat, meat products, processed meat, biltong, meat extracts, potato crisps and chips, processed nuts, dried fruit; class 30 – sweets and confectionary; and class 31 – nuts of all kinds (unprocessed), raisins, snack foods of all kinds included in this class.
The local company then approached the high court to expunge the impugned mark.
Initially the application was dismissed but on appeal, the majority court cancelled the impugned mark.
“The majority found that on comparison of the marks in question, they are so similar that there is a likelihood of confusion or deception arising in the marketplace.”
Now after the 9-year long legal battle, trademark litigator and partner at KISCH IP Attorneys, Andrew Papadopoulos, who represented Takis Biltong, said Grupo Bimbo failed to pay legal costs accumulated over the period.
“Grupo Bimbo refuses to pay Takis Biltong’s legal costs as ordered by the Supreme Court of Appeal and so, the Sheriff of the Court has attached Grupo Bimbo’s only assets in South Africa – its 89 trademark registrations – which will now be sold, and the proceeds used to settle the costs order,” said Papadopoulos.
He could not disclose the amount owed.
Grupo Bimbo did not respond to requests for comment by deadline on Wednesday.
Cape Times