The battle of the milks - First Choice vs Fresh Choice - raged before the Gauteng High Court, with the owner of First Choice failing in its bid to interdict its competitor from using the Fresh Choice logo, which it claimed was similar to their trade mark.

Woodlands Dairy, a long-standing, family-owned dairy operator in the Eastern Cape, turned to the Gauteng High Court, Pretoria, to obtain an order against its competitor. It produces an extensive range of dairy products, including UHT milk, which is marketed and sold in outlets throughout South Africa. It sells these products under the name and brand First Choice and it owns this trade mark in South Africa.

Sansom Farming CC is also a dairy operator, on a substantially smaller scale than the applicant. It is based in the Buffalo City Metropolitan Municipality in the Eastern Cape. It produces milk and other dairy products under its registered trade mark Fresh Choice.

Woodlands Dairy's case was that it has statutory and common law trade mark rights in the First Choice trade mark as well as the domain name fresh-choice.co.za as it is well-known and has acquired a secondary meaning as a mark of origin of its dairy products.

It contended that the Sansom Farming CC mark is confusingly similar to its own, causing deception or confusion amongst notional consumers. It submitted that the respondent would be likely to take unfair advantage of its reputation and would enjoy a commercial benefit.

Sansom Farming CC conceded that the applicant demonstrated a reputation in its composite trade marks, which comprises more than just the descriptive words, First and Choice.

Its case was that the applicant did not make out a case for any of the relief sought in law or in common law. They argued that there was no similarity or confusion between the parties’ respective trade marks when considered as a whole.

Sansom Farming CC submitted that the words First and Choice are merely descriptive words or laudatory epithets that are commonly used in their trade, which cannot result in monopolisation of such words.

The applicant submitted that the words First Choice constitute the dominant part of the mark, being the spoken portion thereof, and that the respondent’s mark is visually and phonetically very similar, resulting in confusion or deception.

Woodlands Dairy relied heavily on the incorporation of the identical second word, “Choice.” It also submitted that there was a phonetical similarity between the words First and Fresh and that they have three letters in common, being F, R, and S.

It was submitted that the slight visual and phonetic differences were very likely to be overlooked by consumers, given their tendency to recall trade marks imperfectly.

But Judge Evette Dippenaar said she is not persuaded that Woodlands Dairy has met the necessary threshold. She said even if the disclaimed features are taken into account, the differences between the marks by far outweigh their similarities.

“Considering the respective get-ups and the respective marks as a whole from the perspective of the average consumer likely to purchase the parties’ respective dairy products, there is no likelihood that a substantial portion of those consumers are likely to be confused or deceived into believing that the respondent’s products emanate from the applicant.”

The judge added that she is not persuaded that the Woodlands Dairy has established that the respondent has attempted to ride on its coattails regarding reputation and goodwill. She subsequently turned down the application.

Cape Times