ZIMBABWE: No Peering—Supreme Court Sets Standard for Trademark Comparison in Infringement Matters

On October 5, 2021, the Supreme Court ruled in favor of Cairns Food Limited (appellant), whose application for an interdict against the use of an infringing trademark by Netrade Marketing (Pvt) Ltd (respondent) had previously been dismissed by the High Court. The appellant had sought to stop the respondent from using the ROYAL SUN trademark for jams in light of the appellant’s well-known SUN with device trademark, also used for jams.

Cairns Food Limited appealed to the Supreme Court on the basis that, among other things, the High Court had erred in its assessment on infringement by considering only the sun device and not the word SUN in combination with the sun device as registered, and in the manner in which it had compared the two trademarks. The High Court had conducted what was considered a forensic examination of the similarities and differences between the marks.

The Supreme Court decided that the High Court had not applied the proper test for a comparison of an infringing trademark and that if it had done so, it would have concluded that the notional customer would be confused and or deceived by the respondent’s ROYAL SUN product in the marketplace.

The Supreme Court set out the below standard for trademark comparison in infringement matters:

• The mark to be considered in a query as to infringement is the mark as registered, that is, the mark that is protected;
• In a comparison of the infringing trademark and the registered trademark, the court is not required to peer closely at the two trademarks; and
• The test to be applied when comparing the infringing trademark and the registered trademark is an assessment of the impact which the infringing mark would have on the average customer by its general impression and not the details.

The Supreme Court prohibited the respondent from using the ROYAL SUN trademark for its jam products.

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