THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Reportable
Case no: 293/2022
In the matter between:

GRUPO BIMBO S.A.B. DE C.V.
APPELLANT

and

TAKIS BILTONG (PTY) LTD
RESPONDENT

Neutral citation:
Grupo Bimbo S.A.B. v Takis Biltong (293/2022) [2023] ZASCA
175 (14 December 2023)
Coram:
MOLEMELA P, NICHOLLS and MEYER JJA, KOEN and KATHREE-
SETILOANE AJJA
Heard:
8 November 2023
Delivered:
This judgment was handed down electronically by circulation to the
parties’ representatives by email, published on the Supreme Court of Appeal website,
and released to SAFLII. The date and time for hand-down is deemed to be 11h00 on
14 December 2023.
Summary:
Reconsideration of dismissal of application for special leave to appeal ─
cancellation of applicant’s trade mark ─ Takis Fuego ─ likely to deceive or cause
confusion by virtue of similarity to respondent’s Takis Biltong mark.

___________________________________________________________________

ORDER
___________________________________________________________________

On appeal from: Gauteng Division of the High Court, Pretoria (Davis J and Nemavhidi
AJ concurring and Makgoba J dissenting, sitting as court of appeal):

The application for the reconsideration of the order of this Court granted on
8 March 2022 dismissing the applicant’s application for special leave to appeal is
dismissed with costs.
___________________________________________________________________

JUDGMENT
___________________________________________________________________________

Kathree-Setiloane AJA (Molomela P, Nicholls and Meyer JJA and Koen AJA
concurring):

[1] This is a reconsideration of the order of this Court, dated 8 March 2022,
dismissing the application for special leave to appeal against the order of Davis J and
Nemavhidi AJ (the majority), in the Gauteng Division of the High Court, Pretoria (the
high court). The majority made an order cancelling trademark registration no.
2012/14977 TAKIS FUEGO device in class 30 (the impugned mark). On 31 October
2022, the decision dismissing the application for special leave to appeal against that
order was referred by Petse AP (as he then was) for reconsideration and, if necessary,
variation, in terms of s 17(2)(f) of the Superior Courts Act 10 of 2013 (the Superior
Courts Act). He also referred the application for special leave to appeal for oral
argument in terms of s 17(2)(d) of the Superior Courts Act.

Background
[2] The applicant, Grupo Bimbo S.A.B.DE C.V (the applicant), a Mexican company
which trades in many countries including South Africa, is the proprietor of the
impugned mark. It was registered in South Africa on 6 June 2012 and covers the
following class 30 goods: ‘Bread, pastry, corn flour chips, wheat flour chips, corn
extruded, wheat extruded, pop corns’. The impugned mark is depicted as follows:

[3] The respondent, Takis Biltong Pty Ltd (the respondent), is a South African
company which sells biltong and other snack products in South Africa. It is the
registered proprietor of the following two trademarks (the registered TAKIS LOGO
marks):

[4] Both registered TAKIS LOGO marks were registered on 8 May 2007 in class
29. They cover the following goods: ‘Meat, fish, poultry, and game, preserved meats,
meat extracts, sausages’. On 24 April 2015, the respondent applied to register a
TAKIS LOGO mark and three TAKIS word marks. These applications are still
pending.1 The goods covered by these pending applications are: (a) class 29 – meat,
meat products, processed meat, biltong, meat extracts, potato crisps and chips,
processed nuts, dried fruit; class 30 – sweets and confectionary; and class 31 – nuts
of all kinds (unprocessed), raisins, snack foods of all kinds included in this class’.

[5] The respondent applied to the high court, in terms of s 242 of the Trade Marks
Act 194 of 1993 (the Trade Marks Act), to expunge the impugned mark. Vorster AJ

1 The respondent relied on all these marks in its expungement application.
2 Section 24 of the Trade Marks Act provides:

(the court of first instance) dismissed the application. The respondent appealed
against that decision to the full court. On appeal, the majority set aside the order of
the court of first instance and replaced it with one cancelling the impugned mark. The
majority found that on comparison of the marks in question, they are so similar that
there is a likelihood of confusion or deception arising in the marketplace. Concerning
the goods in question, the majority applied the test in British Sugar PLC v James
Robertson & Sons Ltd3 (British Sugar) and concluded that the goods are similar. It also
found that there was sufficient uncontroverted evidence establishing the requisite
reputation of the respondent. The majority, accordingly, held that the requirements of
ss 10(12), 10(14), 10(16), and 10(17) of the Trade Marks Act4 had been satisfied. The
minority (Makgoba J) found, to the contrary, that although the marks in question are
similar, the goods in question are not. It concluded that there is no likelihood of
deception or confusion arising in the marketplace.

[6] For the applicant to succeed in the application for special leave to appeal
against the order of the majority, it must show something more than the existence of
reasonable prospects of success on appeal. 5 In Cook v Morrison and Another this
Court held:6
‘The existence of reasonable prospects of success is a necessary but insufficient precondition
for the granting of special leave. Something more, by way of special circumstances, is needed.
These may include that the appeal raises a substantial point of law; or that the prospects of
success are so strong that a refusal of leave would result in a manifest denial of justice; or that
the matter is of very great importance to the parties or to the public. This is not a closed list…’

‘(1) In the event of non-insertion in or omission from the register of any entry, or of an entry wrongly
made in or wrongly remaining on the register, or of any error or defect in any entry in the register, any
interested person may apply to the court or, at the option of the applicant and subject to the provisions
of section 59, in the prescribed manner, to the registrar, for the desired relief, and thereupon the court
or the registrar, as the case may be, may make such order for the making, removing or varying the
entry as it or he may deem fit.
(2) The court or the registrar, as the case may be, may in any proceedings under this section decide
any question that may be necessary or expedient to decide in connection with the rectification of the
register.
(3) In the event of the registrar being satisfied that any entry relating to the registration, assignment or
transmission of a trade mark has been secured mala fide or by misrepresentation or that any such entry
was wrongly made or wrongly remains on the register, he shall also have locus standi to apply to the
court under the provisions of this section.’
3 British Sugar PLC v James Robertson & Sons Ltd [1997] ETMR 118, [1996] EWHC 387 (Ch), [1996]
RPC 281.
4 These provisions are quoted later in the judgment.
5 PAF v SCF [2022] ZASCA 101; 2022 (6) SA 162 (SCA) para 24.
6 Cook v Morrison [2019] ZASCA 8; 2019 (5) SA 51 (SCA) para 8.

[7] The only ground that the applicant advanced for the grant of special leave to
appeal was that there is 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 in question. The applicant contends that this
factor alone demonstrates special circumstances. I disagree as this would mean that
in every case where there is a dissenting judgment, a litigant would be entitled, without
more, to an order granting special leave to appeal in terms of s 16(1)(d) of the Superior
Courts Act.

[8] Although the applicant’s failure to establish special circumstances is sufficient
reason to dismiss the application for special leave to appeal, I will nevertheless
proceed to consider whether there would be a reasonable prospect of success on
appeal. The test of what constitutes a reasonable prospect of success is well
established. The applicant must convince the court that there is ‘a realistic chance of
success on appeal’. In other words, it must demonstrate that ‘there is a sound rational
basis to conclude that there is a reasonable prospect of success on appeal’.7

Are the marks so similar that there is a likelihood of deception and confusion
arising?
[9] The respondent sought to expunge the impugned mark from the trademark
register in terms of s 24 read with ss 10(12), 10(14), 10(16) and 10(17) of the Trade
Marks Act. Section 24 entitles an interested party to apply to court to have the
trademark register rectified by inter alia removing any entry ‘wrongly made in or
wrongly remaining on the register’. Section 10 provides in relevant part:
‘The following marks shall not be registered as trademarks or, if registered, shall subject to
the provisions of sections 3 and 70, be liable to be removed from the register:
. . .
(12)
a mark which is inherently deceptive or the use of which would be likely to deceive or
cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any
class of persons;
. . .
(14)
subject to the provisions of section 14, a mark which is identical to a registered
trademark belonging to a different proprietor or so similar thereto that the use thereof in

7 MEC for Health, Eastern Cape v Mkhitha and Another [2016] ZASCA 176 paras16-17.

relation to goods or services in respect of which it is sought to be registered and which are the
same as or similar to the goods or services in respect of which such trade mark is registered,
would be likely to deceive or will cause confusion, unless the proprietor of such trade mark
consents to the registration of such mark;
. . .
(16)
a mark which is the subject of an earlier application as contemplated in paragraph (15),
if the registration of that mark is contrary to existing rights of the person making the later
application for registration as contemplated in that paragraph;
(17)
a mark which is identical or similar to a trade mark which is already registered and
which is well-known in the Republic, if the use of the mark sought to be registered would be
likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute
of the registered trade mark, notwithstanding the absence of deception or confusion:
‘Provided that a mark shall not be refused registration by virtue of the provisions of paragraph
(2) or, if registered, shall not be liable to be removed from the register by virtue of the said
provisions if at the date of the application for registration or at the date of an application for
removal from the register, as the case may be, it has in fact become capable of distinguishing
within the meaning of section 9 as a result of use made of the mark.’

[10] Two questions arise for determination in so far as the application of s 10(12) of
the Trade Marks Act is concerned. The first is whether the marks are so similar that
there is a likelihood of deception and confusion arising, and the second is whether the
respondent enjoys a protectable reputation in its registered TAKIS LOGO mark.8 In
relation to the latter question, the applicant has conceded that the respondent enjoys
a protectable reputation in its registered TAKIS LOGO mark in respect of biltong and
droëwors products and can rely on that use and reputation for the purposes of an
attack based on ss 10(12) and 10(17) of the Trade Marks Act.

[11] For purposes of determining the first question, it is important to draw a
distinction between deception and confusion in the comparison of trademarks. Where
two trademarks belonging to different proprietors are compared, deception would
result if their similarity were to cause consumers to assume that goods bearing the
trade marks come from the same source. Conversely, confusion would occur if the
similarity in the trade marks would cause consumers to wonder if the goods had a

8 The wording of s 10(12) is akin to a passing off.

common origin.9 In comparing the marks to determine whether such confusion or
deception is likely to arise, the court must have regard to the impact which the marks
would make on a notional person of average intelligence, having proper eyesight and
buying with ordinary caution and, who is likely to buy the goods to which the marks
are applied.10 The notional use test envisages the use of the trade mark ‘…in a fair
and normal manner in relation to any or all of the goods or services in respect of which
the existing mark is registered and in respect of which the other mark is sought to be
registered’.11

[12] The court must not compare the marks ‘…in the calm, quiet intellectual
atmosphere of a court room or of a study…’ but must notionally transport itself to the
marketplace and stand in the shoes of the potential customer.12 Where the marks
contain a dominant feature or idea, it is the impact which this dominant feature is likely
to make on the mind of the consumer which must be taken into account. This Court,
in Pepsico Inc v Atlantic Industries,13 (Pepsico Inc) articulated the test as follows:
‘In testing for deception and confusion, courts will usually identify the features, if any, of the
respective marks which are dominant. If they share a dominant feature, there is ordinarily a
greater likelihood of deception or confusion. As recently affirmed by this court, in the global
assessment of the marks ‘the visual, aural and conceptual similarities of the marks must be
assessed by reference to the overall impressions created by the marks bearing in mind their
distinctive and dominant components.’

[13] Trademarks are remembered by general impressions or some significant or
striking feature and not by a photographic recollection of the whole.14 The idea
conveyed by a mark is likely to impress itself on the mind and remain in the memory
even though the details of the two marks may be very different. This is why the
comparison is to be made between the dominant impression of the mark, or the main
idea or impression left on the mind by each of the marks, having regard to any
essential or salient or leading or striking feature or features in each.15 Since the first

9 Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd and Another 2014 BIP 24
(SCA) para 4.
10 Plascon-Evans Paints (Pty) Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 640G-641E.
11 G C Webster & N S Page South African Law of Trade Marks 3 ed (1986) at 6-27 paras 6-12.
12 Oude Meester Groep Bpk & Another v SA Breweries Ltd 1973 (4) SA 145 (W) at 161C-E.
13 Pepsico Inc v Atlantic Industries [2017] ZASCA 109 para 20.
14 Ibid.
15 International Power Marketing (Pty) Ltd v Searles Industries (Pty) Ltd 1983 (4) SA 163 (T) at 168H.

impression of a mark is particularly important, a court must not peer too closely at the
marks to find similarities or differences. In considering whether a mark is confusing
and deceptive, the court must remain mindful that the consumer would not have had
the opportunity of carefully considering the marks and comparing them side-by-side.16
In making the comparison, the court must assume that the trademark applicant will
make normal and fair use of its mark. If the mark is likely to be abbreviated in use, this
must also be considered.17

[14] Applying these considerations to the marks in question, it is evident that the
dominant, integral, or essential element of both marks is the identical word TAKIS. It
is undisputed, in this regard, that TAKIS is an invented word. It has no meaning in the
English language. It is these features of the registered TAKIS LOGO mark which give
it an inherent distinctiveness, such that no person can claim an entitlement to use the
word in a descriptive context. This means that the addition of any other word or logo
will not serve to distinguish. As pointed out by the respondents, the registered TAKIS
LOGO mark has the inherent degree of distinctiveness that puts it into the category of
a class of trademarks such as, for example, SAMSUNG, TOYOTA, MOTOROLA, and
NOKIA. It is the distinct and unique character of the registered TAKIS LOGO mark that
distinguishes it from the SOUL SOUVLAKI matter,18 where this Court found that the
word ‘soul’ is a common word in everyday use.19 On the contrary, TAKIS is not a
common word in everyday use.

[15] A matter which is not intrinsic to the mark, and which has no trade mark
significance must be excluded from the comparison.20 Importantly in this regard, the
word FUEGO21 in the impugned mark does not serve to distinguish the marks. It is a
secondary word which, as disclosed by the applicant, serves to describe the flavour of
the product in a range of TAKIS flavour variations.22 The majority correctly excluded
the word FUEGO from the comparison as it has no trademark significance. By the

16 Adidas AG and Another v Pepkor Retail Limited [2013] ZASCA 3 para 22.
17Oude Meester supra at 161F-G; Budweiser Budvar National Corporation v Anheuser Busch
Corporation 2002 BIP 126 (RTM) at 130.
18 Golden Fried Chicken (Pty) Ltd v Vlachos and Another [2022] ZASCA 150.
19 Supra para 24.
20 Standard Bank of South Africa Ltd v United Bank Ltd 1991 (4) SA 780 (T) at 782G-H and 796J-797A.
21 It is not disputed that ‘fuego’ means ‘fire’ in Portuguese – i.e. hot flavoured chips.
22 Other examples disclosed by the applicant include, TAKIS ORIGINAL, TAKIS SALSA BRAVE, TAKIS
HUAKAMOLE, TAKIS PASTOR and TAKIS FUEGO.

same token, the words ‘biltong’ and ‘very lekker’ in the registered TAKIS LOGO marks,
must also be excluded.

[16] Both marks contain the dominant distinctive common element TAKIS. As held
by the majority, this dominant element renders the marks phonetically, visually, and
conceptually, deceptively or confusingly similar. Visually, it is the word TAKIS that the
consumer sees branded on the goods. The marks are also aurally and conceptually
identical to the consumer. The marks are so similar, if not identical, that they arguably
meet the standard required to be the same in all respects,23 for the purposes of being
deceptively or confusingly similar. Suffice it to say, the marks must only be deceptively
or confusingly similar on one level of comparison.24

[17] Given its distinctive character, the applicant has made no attempt to distinguish
the registered TAKIS LOGO marks from the impugned one. The assertion, in its
answering affidavit, that it intends to oppose the respondent’s pending class 30
applications comes as no surprise. By intending to do so, the applicant has accepted
that the two marks are deceptively or confusingly similar. In the face of this concession,
I see no sound or rational basis for concluding that there is a reasonable prospect of
success on this ground. To sum up on this point, the two marks are sufficiently similar
to create a likelihood of deception or confusion as contemplated in s 10(12) of the
Trade Marks Act.

Are the goods similar?
[18] In New Media Publishing (Pty) Ltd v Eating Out Webservices CC and Another,25
it was held that there is an interdependence between the ‘comparison of marks’ test
and the ‘comparison of goods’ test. As confirmed by this Court in Mettenheimer and
Another v Zonquasdrift Vineyards CC and Others, the greater the similarity between
the marks in question the lesser will be the degree of similarity required between the
goods, and vice versa.26 This is of particular significance in this matter because the

23 Century City Apartments Property Services CC and Another v Century City Property Owners’
Association (Century City) 2010 (3) SA 1 (SCA) para 12.
24 Laboratoire Lachartre SA v Armour-Dial Incorporated 1976 (2) SA 744 (T) at 746H.
25 New Media Publishing (Pty) Ltd v Eating Out Web Services CC 2005 (5) SA 388 (C).
26 Mettenheimer and Another v Zonquasdrift Vineyards CC and Others (Mettenheimer) 2014 (2) SA 204
(SCA) para 11.

trade marks in question are very similar, if not identical. Thus, the lesser will be the
required degree of similarity between the goods in question.

[19] The applicant’s primary ground of appeal is that the majority erred in concluding
that the goods in question are similar. Its core complaint is that because the impugned
marks are registered in different classes, the goods are clearly different. The one
covers plant products and the other meat products. Their only similarity is that they
are both food products, but their composition is vastly different. This argument is
unsustainable as it is common cause that the goods covered by both marks are ‘snack
foods’. The applicant admitted as much in its answering affidavit when it said:
‘Although both are snack foods, [the applicant] is primarily involved in the sale of tortilla chips,
falling into class 30, whereas [the respondent] is primarily involved in the sale of meat
products, falling into class 29. The products of [the respondent] are considered more ‘healthy’
snack foods ….’
‘It is submitted that the meat products (and, indeed, the rest of the range that the [respondent]
claims to sell are considered, by members of the public, as being more ‘healthy’ snacks. I
submit, in this group, are nuts and dried fruit. Crisps are considered as one of the unhealthiest
snacks.’

[20] However, the applicant does not dispute that class 29 meat products on which
the respondent’s registered TAKIS LOGO mark is used include, amongst others,
biltong, dry wors, chicken biltong, game biltong, biltong crisps, stokkies, chilli biltong
crisps, chilli biltong, peri-peri biltong, ostrich biltong, chilli stokkies, beef strips, salami
sticks and cabanossi sticks etc. It, nevertheless, seeks to differentiate biltong crisps
and chilli biltong crisps (as meat products) from ‘potato or corn or other conventional
types of crisps’. In view of its concession that all the goods in question are ‘snack
products’ – which de facto make them similar and related goods – this attempt to
differentiate the goods is pointless.

[21] The undisputed photographic evidence annexed to the respondent’s founding
affidavit confirms that snack foods such as biltong and related snack products are sold
in convenience and retail stores side by side to other snack products including
crisps/chips, ice-creams, popcorn, peanuts, and nuts in general. Not only did the
applicant concede this in its answering affidavit, but it also conceded that the goods in
question are sold in the same trade channels and to the same consumers. Notably,

the Sunday Times’ GenNext Survey lists the registered TAKIS LOGO mark, in its 2012
to 2015 brand survey, as one of the top ten snack food brands, together with other
chip and/or crisp brands. It is common cause, in this regard, that the average
consumer is accustomed to offerings of snack foods such as chips and/or crisps and
biltong at social functions and parties.

[22] In assessing the similarity of the goods concerned, the majority was correct in
taking into consideration the factors set out in British Sugar.27 These factors include
(a) the respective uses of the goods; (b) their respective users; (c) the physical nature
of the goods; (d) the trade channels; (e) where they are found in the supermarkets;
and (f) whether or not they are competitive. On applying these factors to the marks in
question, it is clear that:
(a)
the respective uses of the respective goods are identical – all the goods are
snack foods, and they are consumed as snack foods.
(b)
the consumers who use the goods are identical – a consumer is anyone who
purchases snack foods irrespective of age, gender, race, nationality etc.
(c)
the physical nature of the goods is identical or similar – depending on what
goods are considered. Chips and crisps are identical – be they made of potatoes or
tortillas. This is conceded by the applicant in its answering affidavit. Meat crisps are
also similar to potato or tortilla crisps – they are all crisps. Biltong, droëwors, nuts,
Japanese crackers and other savoury snack foods are similar in nature to snack goods
such as chips and crisps;
(d)
the trade channels through which the goods reach the market are identical;
(e)
the goods are sold, in the case of self-service consumer items in, amongst
others, the same or the identical convenience and retail stores and are placed side by
side on display shelves or even on the same shelf; and
(f)
the goods compete as they are snack foods.

[23] The respondent has, accordingly, established for purposes of s 10(14) of the
Trade Marks Act that the impugned mark was wrongly entered in the trade mark
register as it is (a) identical to or so similar to the respondent’s registered TAKIS LOGO

27 British Sugar fn 3 supra which has been imported into our law. See Mettenheimer fn 26 para 11;
Pepsico Inc fn 13 para 19.

marks; (b) used on the same or similar goods (snack foods) as the respondent’s
registered TAKIS LOGO marks are used; and (c) likely to deceive or cause confusion.

Is the impugned mark likely to take advantage of, or be detrimental to, the
respondent’s registered mark?
[24] Section 10(17) of the Trade Marks Act provides that a mark can be opposed or
cancelled if it is identical to or similar to a trade mark which is already registered and
which is well-known in the Republic, if the use of the mark sought to be registered
would be likely to take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the registered trade mark, notwithstanding the absence of
deception or confusion. The applicant has conceded that the respondent’s registered
TAKIS LOGO mark is well-known for biltong in South Africa. This means, without the
need for more, that the respondent has the requisite reputation to sustain its s 10(17)
case that the impugned mark is similar to the TAKIS LOGO mark which was registered
some six years prior to it.  As indicated, the two marks are, in fact, very similar if not
identical.

[25] What remains for determination is whether the impugned mark would be likely
to take advantage of, or be detrimental to, the distinctive character or repute of the
registered TAKIS LOGO mark. As held by this Court in National Brands Limited v Cape
Cookies CC and Another (Cape Cookies):28
‘Concrete evidence of actual advantage or detriment is not required under s 10(17). Only a
likelihood needs to be shown. It seems to me that a well-founded basis for why it would be
likely that an unfair advantage would be gained if registration takes place suffices. I agree that,
as opposed to bare assertions, facts supporting such an inference must be put up. In any
event, at the time that opposition proceedings are launched, concrete evidence may well not
yet have emerged.’

[26] The applicant’s use of the impugned mark is likely to take unfair advantage of,
or be detrimental to, the distinctive character or the repute of its registered TAKIS
LOGO marks. The respondent has provided the following supportive evidence in its
founding affidavit:

28 National Brands Limited v Cape Cookies CC and Another [2023] ZASCA 93; [2023] 2 All SA 363
(SCA) para 38.

‘[T]he the average consumer would be confused and deceived into believing that the
[applicant’s] product emanates from the [respondent] or is in some way associated with the
[respondent]. The [applicant] will thus unfairly benefit from the reputation for quality and good
products that the [respondent] has worked so hard to achieve over almost 40 years. The
[applicant] will simply get a free marketing reputation at the expense of the [respondent]. It will
enter the marketplace with a substantial reputation and consumer base already in place, and
it will generate revenue at the expense of the [respondent]. This is so because the [applicant]
will be selling snack foods that are identical to and similar to the [respondent’s] products and
it will in fact compete with the [respondent’s goods]. The [applicants] goods will thus divert
sales from the [respondent] and thus negatively impact on [its] revenue and profitability.’
The applicant responded with a bare denial.

Does the respondent have prior existing rights in class 30 goods?
[27] Section 10(16) of the Trade Marks Act allows for the expungement of a mark
which is the subject of an earlier application from the trademark register, if the
registration of that mark is contrary to existing rights of a person making the later
application for registration. The respondent had sought to demonstrate that in respect
of its pending applications in respect of class 30 goods, it had existing rights as of
6 June 2012.29

[28] However, as correctly pointed out by counsel for the applicant during argument,
the respondent had, in so far as its reliance on s 10(16) of the Trade Marks Act is
concerned, only pleaded existing rights in respect of its class 29 goods and not its
class 30 goods. The argument that the applicant thus advanced, is that the majority
had erred in concluding that the respondent had satisfied the requirements of s 10(16)
of the Trade Marks Act. This is not a basis to grant the application for special leave to
appeal. I take this view because the provisions of s 10 of the Trade Marks Act are self-
standing grounds to either oppose the registration of a mark or seek its expungement
from the trademark register. If any one of these grounds is established, then the court
must either refuse the registration or expunge the mark from the register, whichever
is the case.30

29 In terms of s 29(1) of the Trade Marks Act, the registration date of a trade mark is deemed to be the
date when the application for registration was lodged. The applicant lodged its application to register
the impugned mark on 6 June 2012.
30 Cape Cookies fn 28 para 17.

[29] The respondent had succeeded in satisfying the requirements of ss 10(12),
10(14) and 10(17) of the Trade Marks Act. Accordingly, the majority concluded,
correctly so, that the applicant’s impugned mark was an entry wrongly made in, and
wrongly remaining on, the trademark register and it thus fell to be cancelled in terms
of ss 10(12), 10(14) and 10(17) of the Trade Marks Act. For these reasons, I am of the
view that the proposed appeal has no reasonable prospects of success. More
importantly, the applicant has failed to establish special circumstances. The
application for special leave to appeal must, therefore, be dismissed with costs.

[30] In the result, I make the following order:
The application for the reconsideration of the order of this Court granted on 8 March
2022 dismissing the applicant’s application for special leave to appeal is dismissed
with costs.

_______________________
F KATHREE-SETILOANE
ACTING JUDGE OF APPEAL

Appearances

For the appellant:

CE Puckrin SC and R Michau SC
Instructed by:

Hahn & Hahn Inc, Pretoria
Webbers Attorneys, Bloemfontein

For the respondent:

P Cirone
Instructed by:

Kisch IP, Sandton
Phatshoane Henney Inc, Bloemfontein

THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
MEDIA SUMMARY OF JUDGMENT DELIVERED IN THE SUPREME COURT OF APPEAL

From:
The Registrar, Supreme Court of Appeal
Date:

14 December 2023
Status:
Immediate
The following summary is for the benefit of the media in the reporting of this case and does
not form part of the judgments of the Supreme Court of Appeal
Grupo Bimbo S.A.B. v Takis Biltong (293/2022) [2023] ZASCA 175 (14 December 2023)
Today the Supreme Court of Appeal (SCA) handed down judgment dismissing with costs an appeal
against the decision of the Gauteng Division of the High Court, Pretoria (the high court).
The applicant, Grupo Bimbo S.A.B.DE C.V (the applicant), a Mexican company which traded in many
countries including South Africa, was the proprietor of the impugned mark. It was registered in South
Africa on 6 June 2012 and covered the following class 30 goods: ‘Bread, pastry, corn flour chips, wheat
flour chips, corn extruded, wheat extruded, pop corns’. The respondent, Takis Biltong Pty Ltd (the
respondent), was a South African company which sold biltong and other snack products in South Africa.
Both registered TAKIS LOGO marks were registered on 8 May 2007 in class 29. They covered the
following goods: ‘Meat, fish, poultry, and game; preserved meats, meat extracts, sausages’. The
respondent applied to the high court, in terms of s 24 of the Trade Marks Act 194 of 1993 (the Trade
Marks Act), to have the impugned mark expunged. Vorster AJ (the court of first instance) dismissed the
application. The respondent appealed against that decision to the full court. On appeal, the majority set
aside the order of the court of first instance and replaced it with one cancelling the impugned mark. The
majority found that on comparison of the marks in question, they were so similar that there was a
likelihood of confusion or deception arising in the marketplace. It also found that there was sufficient
uncontroverted evidence establishing the requisite reputation of the respondent. The majority,
accordingly, held that the requirements of ss 10(12), 10(14), 10(16), and 10(17) of the Trade Marks Act
had been satisfied. The minority (per Makgoba J) found, to the contrary, that although the marks in
question were similar, the goods in question were not. It concluded that there was no likelihood of
deception or confusion arising in the marketplace.
Aggrieved by that outcome, the appellant petitioned this Court for leave to appeal which was dismissed.
The decision dismissing the application for special leave to appeal against that order was referred by
Petse AP (as he then was) for reconsideration and, if necessary, variation, in terms of s 17(2)(f) of the
Superior Courts Act 10 of 2013 (the Superior Courts Act). He also referred the application for special
leave to appeal for oral argument in terms of s 17(2)(d) the Superior Courts Act.

For the applicant to succeed in the application for special leave to appeal against the order of the
majority, it had to show that there were special circumstances in existence. Furthermore, the applicant
had to convince the court that there was a realistic prospects of success on appeal. And in order to do
the applicant had to show that: (a) the marks were not similar and that there was no likelihood of
deception and confusion; (b) the goods were not similar; (c) the impugned mark was unlikely to take
advantage of or be detrimental to the respondent’s registered mark; and (d) the respondent did not have
prior existing rights in class 30 goods.
The SCA held that the applicant failed to establish special circumstances and that factor alone was
sufficient reason to dismiss the application for special leave to appeal. With regards to the prospects of
success, the Court held that the applicant failed to demonstrate that there was a sound rational basis
to conclude that there was reasonable prospect of success on appeal. In respect of point (a) the SCA
held that the two marks were sufficiently similar to create a likelihood of deception or confusion as
contemplated in s 10(12) of the Trade Marks Act. Relating to point (b) the SCA held that for purposes
of s 10(14) of the Trade Marks Act the impugned mark was wrongly entered in the trademark register
as it was identical to the respondent’s registered TAKIS LOGO marks. Coming to point (c) the SCA held
that the applicant had conceded that the respondent’s registered TAKIS LOGO mark was well-known
for biltong in South Africa. That meant, without the need for more, that the respondent had the requisite
reputation to sustain its s 10(17) case that the impugned mark was similar to the TAKIS LOGO mark
which was registered some six years prior to it.  And that the applicant’s use of the impugned mark was
likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the
respondent’s registered TAKIS LOGO marks. Lastly, as it relates point (d) the SCA held that the
respondent had, in so far as its reliance on s 10(16) of the Trade Marks Act was concerned, only pleaded
existing rights in respect of its class 29 goods and not its class 30 goods. And thus the majority erred
in its finding that the respondent had satisfied the requirements of s 10(16) of the Trade Mark Act. This
however, held the SCA, was not a basis to grant the application for special leave to appeal. The SCA
found that, because the provisions of s 10 of the Trade Marks Act were self-standing grounds to either
oppose the registration of a mark or seek its expungement from the trademark register. If any one of
these grounds was established, then the court must either refuse the registration or expunge the mark
from the register, whichever is the case. It further held that the respondent had succeeded in satisfying
the requirements of ss 10(12), 10(14) and 10(17) of the Trade Marks Act. Accordingly, as found by the
SCA, the majority concluded correctly that the applicant’s impugned mark was an entry wrongly made
in, and wrongly remaining on, the trade mark register and it thus fell to be cancelled in terms of ss
10(12), 10(14) and 10(17) of the Trade Marks Act. For those reasons, the Court held that the proposed
appeal had no reasonable prospects of success. More importantly, the applicant had failed to establish
special circumstances. As a result, the application for special leave to appeal must therefore be
dismissed with costs.