A battle of the peanut butters has raged in the Gauteng High Court, Johannesburg, with the owners of the trademark “Vita Nut” challenging a competitor’s use of the name “Vita Nuts” for its product.

Solo Foods said it had obtained the registered trademark “Vita Nut”, with one of the goods classified under this trademark being peanut butter.

However, Kalinda Trading also produces peanut butter and the company said it had been making use of the mark “Vita Nuts” in relation to their product prior to May 2018, when Solo Foods officially obtained the trademark.

Solo Foods, relying on its trade mark registration, asked for an interdict, in terms of the Trade Marks Act, to prevent Kalinda Trading and other respondents from using the mark “Vita Nuts”.

Kalinda Trading did not dispute that the mark “Vita Nuts” is, at the very least, confusingly or deceptively similar to Solo Foods’ registered trademark. Instead, it tried to defeat the main application with a counter application for the cancellation of Solo Foods’ trade mark registration. Kalinda Trading alleged that it had made extensive use of the trade mark “Vita Nuts”, and had therefore acquired a reputation and goodwill associated with the mark.

On this basis, it contends that the entry of Solo Foods’ “Vita Nut” mark on the register of trademarks was wrongly made by the Registrar of Trademarks.

Solo Foods, meanwhile, said it had been operating a peanut butter manufacturing mill since 2003. Its primary business has been to supply peanut butter to underprivileged school children and mines.

It also claims its peanut butter products have been, and continue to be, sold to various outlets. These include retailers, prisons, mines, independent “cash and carry” outlets and school feeding schemes across South Africa, Namibia and Botswana.

It says it has been using the “Vita Nut” trademark for its peanut butter and paste products since at least 2003, and over the years it has built significant goodwill and reputation in the market for these products.

Despite this, Solo Foods only applied for the registration of this trademark in May 2018. During this time, Solo Foods became aware that Kalinda Trading had also started marketing and selling peanut butter products identified by the trademark “Vita Nuts”.

It sent a letter of demand to Kalinda Trading, advising it that the applicant had been using the mark and selling an identical product for numerous years, and demanded that Kalinda Trading cease using the trademark “Vita Nuts”. But the latter did not give this undertaking.

Kalinda Trading, in its counter application, maintains that Solo Foods’ registered mark “Vita Nut” is liable to be removed from the register on the basis that its use is likely to deceive or cause confusion.

Kalinda Trading contended that it commenced use of the trademark “Vita Nuts” and acquired an extensive reputation and goodwill associated exclusively with this trademark prior to the registration date of Solo Foods’ trademark.

Kalinda Trading also placed great reliance on its marketing activities in relation to its “Vita Nuts” products.

But the court said it was not persuaded that Kalinda Trading had developed a sufficient reputation with its “Vita Nuts” products prior to the registration by Solo Foods of its similar trademark.

“Certainly, its sales do not point to that conclusion at all. The creativity of its marketing strategies notwithstanding, they do not appear to have yet reached a substantial number of possible customers by May 16, 2018 (when Solo applied for the trademark),” the court said.

It added that in the court’s view, Solo Foods has proven that it commenced using the mark many years before Kalinda Trading.

The court subsequently interdicted the respondents from infringing on Solo Foods’ peanut butter trademark.

Pretoria News

zelda.venter@inl.co.za