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Defending Amarula: Ensuring Brand Integrity in a Trademark Dispute

A trader in liquor and retail products, intending to launch a marula cream liqueur under the brand name Afrula, has been ordered by the Western Cape High Court to refrain from infringing on the trademark of Amarula Cream Liqueur.

Acting Judge Rehana Parker explicitly ordered Noble Spirits (Pty) Ltd to refrain from infringing upon the trademarks owned by Southern Liqueur Company Limited:

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  • Its registered marks by using the mark Afrula or any similar marks in the trade of alcoholic beverages, as such use is likely to mislead or confuse consumers under the Trade Marks Act; and
  • The advantages gained from the well-known Amarula trademarks by using the trademark Afrula or any other mark which may unfairly benefit from or harm the distinctiveness of the renowned and registered Amarula trademarks.

Nonetheless, Parker dismissed Southern Liqueur’s claim of passing off against Afrula, primarily because the product is not currently available in the South African market.

Southern Liqueur operates as a wholly owned subsidiary of South African Distillers and Wines (SA) Limited, which is entirely owned by Distell Group Limited.

Southern Liqueur’s case

Acting Judge Parker indicated that Southern Liqueur had to seek an interdict and other remedies against Noble Spirits following the application for the trademark “Afrula.”

The basis for Southern Liqueur’s application was trademark infringement and passing off concerning the use of the mark and associated Afrula branding.

Southern Liqueur asserted:

  • The trademark Afrula is confusingly or deceptively similar to its registered trademarks Amurula and Amarula, leading to potential deception and confusion among the public regarding the products associated with each party’s trademarks.
  • Any usage of the mark Afrula by Noble Spirits is likely to exploit, gain an unfair advantage, or harm the distinct character and reputation of the well-known Amarula trademark;
  • The Afrula branding/label closely resembles its Amarula branding, likely causing public confusion and leading consumers to believe that the Afrula product is sourced from Southern Liqueur.

Elephant or African woman?

Acting Judge Parker noted that the trademarks Amarula and Afrula are prominently displayed on their respective products.

On the Amarula product, the elephant-themed design is situated directly below the Amarula trademark, while Noble Spirits’s label features what Southern Liqueur interprets as a side profile of an elephant head, which Noble Spirits describes as an “African woman.”

Parker indicated that this distinction might not be immediately clear to consumers when they first encounter the Noble Spirits product.

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Southern Liqueur claimed that consumers would initially see the Afrula mark combined with an elephant motif against a distinctly African backdrop in relation to a liqueur product.

Parker noted that this impression leads to the conclusion that Noble Spirits has essentially copied the key components of its African-themed Amarula branding, specifically “the AMARULA mark and the ELEPHANT design.”

Both marks ‘can co-exist’

Noble Spirits stated its goal is to begin the production and sale of a marula cream liqueur named Afrula in South Africa following the registration of the mark Afrula in various countries, including 17 predominantly French-speaking African nations within the African Intellectual Property Organisation (OAPI), as well as Kenya, Tanzania, and the EU.

Noble Spirits, which planned to commence operations in South Africa by August 2021, is confident that both marks can coexist in the marketplace.

The company contested the claim that there exists a significant likelihood that Afrula will be mistaken for Amarula, arguing that the average liqueur buyer is a sophisticated, intelligent adult capable of reading.

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Noble Spirits emphasized that since a considerable portion of its business occurs online, it is crucial for consumers to be discerning and informed to manage e-commerce transactions and possess a credit or debit card.

Thus, it is highly unlikely that the average customer would be misled, deceived, or fooled into confusing one product for the other, and consumers are capable of distinguishing Afrula from Amarula when it comes to visual presentation, whether in stores or online.

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The sound or appearance of marks could cause confusion

Noble Spirits argued that the distinction between the key components of the respective marks, “AMA” and “AF,” effectively eliminates any potential for confusion because the average consumer would likely recognize that “AFrula” is a distinct marula cream liqueur from “AMArula,” and if they intend to purchase Amarula, they will realize they are looking at the wrong product.

Conversely, Southern Liqueur argued that “AFRULA” and “AMARULA” both start with “A” and end with “RULA,” increasing the likelihood of consumer confusion regarding the sounds or appearance of the respective marks.

Acting Judge Parker affirmed that the similarities between the marks are sufficiently comparable according to the Trade Mark Act.

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“Not only do the marks carry similarities, but it is also evident that the mark is designated to be used concerning the same goods for which the Amarula mark has gained recognition and become well-known.

“Thus, the requirement for easily recognizable similarity between the two marks, in my opinion, is met,” she stated.

Parker concluded that Southern Liqueur has demonstrated the likelihood that Noble Spirits’s use of the Afrula mark directly competes with it in the same market, without regard to whether it may succeed in a lower price bracket, and is likely to dilute the uniqueness of the Amarula mark.

Passing off claim

However, Parker acknowledged that Southern Liqueur faces a challenge with the passing off claim because, in the absence of market presence, assessing misrepresentation and passing off is practically unfeasible at this point.

“There is no evidence that the product is on the market or available on shelves.

“If the product becomes available, then the Applicant [Southern Liqueur] is entitled to the requested relief.

“At this moment, I am cautious in finding liability for passing off, recognizing that no damage can occur if the product is not commercially accessible,” she said.

Parker noted that while Noble Spirits has established a new facility in Cape Town, which was expected to be operational by August 2021 with an anticipated workforce of approximately 45 in production, marketing, and sales, it remains inactive.

She pointed out that Southern Liqueur has provided no evidence to substantiate that the Afrula product is available in the South African market.

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