TAKIS BILTONG IN A SCA JUDGMENT: THEM RECONSIDERATION APPLICATION ARE A B......

I have watched the movie Perfect days, twice now and strangely enough, I always watch it on a Sunday. I thought about why and came to the conclusion that the acceptance of being alone without being lonely as the theme of the film, I feel, and Sundays seem to be those days wherein you feel lonely the most, and this movie provides me with the comfort of accepting that I am alone and that I do not need to feel lonely. I don't know, might not be making sense with this one. But out of all the Cinephiles movies i have watched, I really enjoy hanging out and watching this one. " Now is Now, Next time is Next Time"- it sounds cooler when said in Japanese.

The smart SEO optimization move would have been to have a Takis logo, but as you have noticed, these writings have zero thought on SEO. I come up with my own topic title, and I vibe out when selecting images. Before this turns into a diary, lets get straight to why we're here.

This is a FILAC legal case analysis wherein at the end, I postulate briefly on the impact of this judgment on our lived realities, especially the lived realities of attorneys. Like always, lets begin with the background facts........ and no, niggas where not fighting about whose biltong tastes better, the shit is serious. Okay the Facts........

1. Facts

The dispute involves two commercial entities: Grupo Bimbo S.A.B. DE C.V. (the applicant), a Mexican multinational corporation, and Takis Biltong (Pty) Ltd (the respondent), a local South African snack manufacturer.

Grupo Bimbo is the proprietor of the trademark "TAKIS FUEGO," registered in South Africa on 6 June 2012 under Class 30 for goods including corn and wheat flour chips, extruded snacks, and popcorn. Takis Biltong is the registered proprietor of "TAKIS" logo marks, registered in May 2007 under Class 29, covering meat, fish, poultry, sausages, and specifically, biltong and droëwors products.

Takis Biltong applied for the expungement of Grupo Bimbo’s mark under section 24 of the Trade Marks Act 194 of 1993, asserting that the registration was wrongly made. The court of first instance dismissed the application, but a majority in the Full Court of the High Court (Gauteng Division, Pretoria) overturned this, ordering the cancellation of Grupo Bimbo’s mark. Grupo Bimbo subsequently sought special leave to appeal to the SCA. After an initial dismissal, the matter was referred for reconsideration in terms of section 17(2)(f) of the Superior Courts Act 10 of 2013.

2. Issues

The SCA was tasked with determining the following:

• Procedural Issue: Whether "special circumstances" existed to justify the reconsideration and variation of the SCA's earlier order dismissing the application for special leave to appeal.

• Likelihood of Confusion: Whether the "TAKIS FUEGO" device was so similar to the registered "TAKIS" logo marks that its use would likely deceive or cause confusion in the marketplace under sections 10(12) and 10(14) of the Trade Marks Act.

• Similarity of Goods: Whether tortilla chips (Class 30) and biltong/meat snacks (Class 29) are the same as or similar to one another for the purposes of trademark infringement and expungement.

• Well-Known Mark Protection: Whether Grupo Bimbo’s use of the mark would take unfair advantage of or be detrimental to the repute of Takis Biltong’s well-known mark under section 10(17).

  
  

3. Applicable Legal Rules and Principles

The court relied upon several foundational IP and procedural statutes:

• Trade Marks Act 194 of 1993: Section 24 provides the general power to rectify entries in the register. Section 10 lists unregistrable marks, specifically prohibiting those likely to cause confusion (10(12)), those similar to registered marks for similar goods (10(14)), and those that dilute well-known marks (10(17)).

• Superior Courts Act 10 of 2013: Section 17(2)(f) allows the President of the SCA to refer a decision to the court for reconsideration and variation in exceptional circumstances. Section 16(1)(d) establishes the high threshold for "special leave" to appeal.

• Jurisprudential Tests:

  • The Global Assessment Test: Similarity must be assessed by reference to visual, aural, and conceptual impressions created by the marks, focusing on dominant components (Pepsico Inc v Atlantic Industries).

  • The Notional Consumer Test: Marks are compared through the eyes of an average consumer with ordinary caution (Plascon-Evans Paints).

  • The British Sugar Factors: Assessing goods based on uses, users, physical nature, trade channels, location on shelves, and competitiveness.

    
    

4. Court's Application of Legal Rules

The SCA first addressed the procedural threshold. It rejected Grupo Bimbo’s argument that a "split decision" (where lower court judges differed) constituted "special circumstances" for leave to appeal, noting this is an insufficient ground on its own.

Regarding mark similarity, the court applied the "dominant feature" test. It found that "TAKIS" is an invented word with no English meaning, making it inherently distinctive. The word "FUEGO" (Portuguese for "fire") was found to be a secondary descriptive term for flavor and did not serve to distinguish the marks. Consequently, the marks were visually and aurally identical in their dominant aspect.

On the similarity of goods, the court applied the British Sugar factors. It determined that while the goods fell into different classes (29 and 30), they were both "snack foods" intended for identical consumers, reached the market through identical trade channels (convenience and retail stores), were shelved side-by-side, and were used competitively at social functions. Applying the rule of interdependence from Mettenheimer, the court held that because the marks were near-identical, a lower degree of similarity between the goods was sufficient to establish a likelihood of confusion.

5. Judgment and Reasoning

The SCA dismissed the application for reconsideration with costs. The court reasoned that Grupo Bimbo failed to establish "special circumstances" for the grant of special leave to appeal.

Substantively, the court found the proposed appeal had no realistic prospects of success. The respondent established a protectable reputation over 40 years. The court found that Grupo Bimbo’s use of the mark would likely take unfair advantage of this reputation, generating revenue at the expense of the respondent by diverting sales through consumer confusion. The mark was thus "wrongly remaining on the register" in terms of sections 10(12), 10(14), and 10(17) of the Trade Marks Act.

6. Influence on Future Cases

This judgment serves as a vital precedent in several areas:

• Procedural Stringency: It reinforces the high bar for section 17(2)(f) reconsiderations, clarifying that a lack of unanimity in lower courts does not automatically justify the attention of the SCA.

• Expansion of "Similar Goods": It provides a robust application of the British Sugar factors, demonstrating that class divisions (Class 29 vs. Class 30) are not dispositive when the functional reality of the marketplace treats items as similar (i.e., the "snack food" category).

• Invented Word Doctrine: It highlights that invented words enjoy a higher degree of protection as they cannot be used in a descriptive context by competitors.

  
  

7. Broader Impact

The judgment has significant practical implications for both local businesses and international conglomerates. It protects the "lived realities" of local entrepreneurs who have spent decades building a brand's reputation from having that goodwill siphoned off by global entities entering the market with identical names.

For retailers and consumers, it validates the common-sense observation that biltong and chips are part of the same consumer purchase cycle. Legally, it forces practitioners to look beyond formalistic classifications (classes) and focus on the commercial reality of trade channels and shelving, ensuring that trademark law remains grounded in actual consumer behavior.

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DISCLAIMER: THIS DOES NOT CONSTITUTE LEGAL ADVISE NOR ACT AS LEGAL AUTHORITY FOR THE SUBJECT DISCUSSED. THIS IS BASED ON AN IDEA, A CURIOSITY AND DOOM SCROLLING ON SAFLII. CONSULT YOUR ATTORNEY, PREFERABLY LOCAL ATTORNEY AND TAKE IT FROM THERE