South African family business Takis Biltong, which also sells other snacks, scored a major victory over a Mexican company selling tortilla chips and other snacks, after the Mexican company used the word “Takis” for its products.
The legal battle over the trademark Takis Biltong and Takis Fuego (used by the Mexican company) have been raging for years. Takis Biltong said consumers could confuse its product with Takis Fuego, although it did not sell exactly the same products.
Grupo Bimbo, the Mexican company trades in many countries, including South Africa, and is the proprietor of the mark “Takis Fuego”.
It was registered in South Africa in 2012 and covers several goods, among them corn flour chips, wheat flour chips, corn extruded, wheat extruded and pop corns.
Takis Biltong sells biltong and other snack products in South Africa. It is the registered proprietor of two trademark.
Takis took the Mexican company on some years ago as it believed that iTakis Fuego was confusingly the same as its name.
Takis Biltong’s initial application was turned down.
On appeal before three judges, it succeeded. The majority judgment found that the marks in question were so similar that there was a likelihood of confusion or deception arising in the marketplace.
The Mexican company, however, applied for special leave to appeal the judgment, which was dismissed with costs. It said that in light of there also being a dissenting judgment, it had prospects of succeeding on appeal.
It then turned to the Supreme Court of Appeal, in which it asked the SCA to grant the special leave to appeal. But the SCA has also turned down the application, leaving Takis Biltong with the exclusive use of the name Takis Biltong for its products.
The only ground that the applicant advanced for the grant of special leave to appeal was that there was an equal split, between the judge in the court of first instance and the three judges in the full court, in their findings on the likelihood of deception or confusion arising between the two marks.
The applicant said that factor alone demonstrated special circumstances, but Judge Fayeeza Kathree-Setiloane, who wrote the SCA judgment, disagreed. She said that would mean that in every case where there was a dissenting judgment, a litigant would be entitled, without advancing more, to an order granting special leave to appeal.
She said that the undisputed photographic evidence annexed to the court papers confirmed that snack foods such as biltong and related snack products were sold in convenience and retail stores side by side to other snack products.
She said Takis Biltong had established for purposes of the Trade Marks Act that the impugned mark was wrongly entered in the trademark register as it was identical to or similar to its Takis logo marks.