Today on IPcopy we have a guest post from Tyrone Walker of Moore Attorneys on the subject of a soft drink trade mark battle in South Africa. This post has been reproduced with the permission of the author. 

The soft drink battle of “PEPSI TWIST” versus “LEMON TWIST” continued in South Africa in the Supreme Court of Appeal.

In 2006, PepsiCo had applied for the registration of the trade mark “PEPSI TWIST”. Atlantic Industries (“Atlantic”), a wholly owned subsidiary of The Coca-Cola Company had opposed these trade mark applications. The basis of Atlantic’s opposition was that “PEPSI TWIST” was confusingly similar to their current trade marks  “TWIST”, “LEMON TWIST” and “DIET TWIST”. PepsiCo responded with a counter action by applying for the expungement (“removal”) of Atlantic’s marks.

The basis of the (“removal”) application by PepsiCo was that it believed the word “TWIST” is a common English word which meant “a beverage of mixed ingredients”. A common word that is used in the industry cannot be protected by means of a trade mark. A good example is that no third party can have exclusive rights to the word “APPLE” if they are a fruit and vegetable shop. However, “APPLE” in relation to computers and cell phones is very distinctive and unique and hence why Apple Inc. have registered their brand as a trade mark in nearly every country in the world.

PepsiCo argued that Atlantic’s marks are not capable of distinguishing its beverages from those of other proprietors/owners of soft drinks. The Supreme Court of Appeal rejected PepsiCo’s contention and commented that this definition was “obsolete English slang, known by very few, if any, South African consumers, even those whose first language was English”.

The Supreme Court of Appeal found that most South African consumers would perceive the word “TWIST” as an arbitrary brand name without meaning and thus capable of distinguishing Atlantic’s beverages from those of others.

Atlantic presented overwhelming evidence that “TWIST” has been widely used as a trade mark on millions of cans and bottles of soft drinks and through substantial advertising expenditure.

The Supreme Court then dealt with the opposition to the registration of the “PEPSI TWIST” trade mark. The Court found that the word “TWIST” was the dominant feature and there would be a likelihood of deception or confusion when comparing the “LEMON TWIST” or “DIET TWIST” trade marks with “PEPSI TWIST”.

It also looked at the use of the word “TWIST” as a sub-brand, as there is a worldwide trend of companies using primary and sub-brands, e.g. Pepsi-Cola and Pepsi Wild Cherry. The Court stated that the sub-brand is important to consumers and they may refer to the sub-brand when identifying or requesting the product. The Court found that there would be confusion if PEPSI used the word “TWIST” as a sub-brand.

In conclusion, the Supreme Court of Appeal dismissed PepsiCo’s appeal with costs. Atlantic protected its valuable “TWIST” or “LEMON TWIST” brand.

Tyrone Walker  12 October 2017