CAPE TOWN - The Western Cape High Court has dismissed an application by the owners of Chicken Licken, Golden Fried Chicken (Pty) Ltd, who alleged trademark infringements in relation to the word “soul”, against a Plettenberg Bay restaurant formerly trading as “East Coast Soul Kitchen”.
This as the company had already made efforts to remedy the situation by changing its name to “Sol Kitchen”.
The case came about in July 2021 when Chicken Licken’s attorney, Ronald Wheeldon, contended that by trading as “East Coast Soul Kitchen '”, the restaurant had infringed certain of the Chicken Licken trademarks.
They wanted Sol Kitchen to remove all material, including letterheads, business cards, signage and printed material, in its possession or under its control, which makes or contains any reference to the mark Soul or Soul Kitchen.
According to the court papers, Wheeldon argued that there had been two distinct trademark infringements by the restaurant, based on the provisions of the Trade Marks Act, 194 of 1993.
In a letter to the restaurant, Wheeldon said: “It has come to the attention of our client that you are operating what appears to be a restaurant under the trading name East Coast Soul Kitchen and that you (are) using the trade mark Soul Kitchen on what appears to be your official Facebook page. Our client further notes your use of the trade mark Soul to describe your pizza and burger offerings on your menu. Our client is the proprietor of trade mark registrations 2014/00044 Soul Kitchen in class 43, 2001/12904-5 Soul in classes 29 and 30 and 2001/12909 Soul in class 43.”
Lawyers for Sol Kitchen had initially responded that their client was not exploiting any trade mark or damaging any brand, nor possibly or potentially causing any loss of sales caused by confusion.
“The use of the word “soul” is not taking any unfair advantage of or is it anyway detrimental to the distinctive character and repute of your client’s trade mark.”
Following a back and fourth between the parties, Sol Kitchen had decided to make the changes.
In their answering affidavit they said: “Members of the public are not confused or deceived into believing that the business of the Respondent is linked to or associated with that of the Applicant. The respondent is not exploiting any trademark or damaging any brand, nor possibly or potentially causing any loss of sales caused by confusion.
“(Sol Kitchen) nevertheless decided to change the name in order to avoid unnecessary and costly litigation. A quick search of the word ‘soul’ at the Companies and Intellectual Property Office (Cipro), and its use in the food industry found that there were more than 230 companies using the word ‘soul’, and half were related to food. Many of the food companies and/or restaurants had registered their companies more than 12 to 15 years ago. The applicant’s strategy has been to intimidate the owners with aggressive legal letters and litigation demanding that they cease to trade and disclose their earnings so that they can calculate an appropriate royalty payment.”
Judge Patric Gamble this week found that: “In the circumstances, there is no evidence before the court to sustain any contention that the restaurant is currently infringing the applicant’s “SOUL” and SOUL-related marks as contemplated under s34(1)(b) of the Act.”
“When the restaurant strategically changed its name to “Sol Kitchen”, the battle was effectively over. The respondent is ordered to remove, within one week of this order, the remaining references to “East Coast Soul Kitchen” from its webpage and/or Facebook page. Save as aforesaid, the application is dismissed.”
Lawyers for both Chicken Licken and Sol Kitchen did not respond to requests for comment by deadline.