A liquor and retail products trader, looking to introduce a marula cream liqueur under the name Afrula, has been ordered by the Western Cape High Court to avoid violating the trademark of Amarula Cream Liqueur.

Acting Judge Rehana Parker specifically directed Noble Spirits (Pty) Ltd to abstain from infringing upon the trademarks held by Southern Liqueur Company Limited:

• Its registered trademarks by utilizing the name Afrula or any similar names in the alcoholic beverage trade, as such usage is likely to mislead or confuse consumers under the Trade Marks Act;
• The benefits derived from the well-known Amarula trademarks through the use of the mark Afrula or any other mark that may unfairly capitalize on or undermine the distinctiveness of the established Amarula trademarks.

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

Southern Liqueur functions 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 noted that Southern Liqueur had to seek an interdict and other remedies against Noble Spirits following the application for the Afrula trademark.

The foundation for Southern Liqueur’s application was based on trademark infringement and passing off concerning the use of the mark and related Afrula branding.

Southern Liqueur asserted:

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

Elephant or African woman?

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

On the Amarula product, the elephant-themed design is located directly below the Amarula trademark, while Noble Spirits’s label includes 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 evident to consumers at first glance on the Noble Spirits product.

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

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

Both marks ‘can coexist’

Noble Spirits expressed its intention to start the production and sale of a marula cream liqueur named Afrula in South Africa following the registration of the Afrula mark in several countries, including 17 predominantly French-speaking African nations within the African Intellectual Property Organisation (OAPI), along with Kenya, Tanzania, and the EU.

Noble Spirits, which planned to initiate operations in South Africa by August 2021, is confident that the two marks can coexist in the market.

The company disputed the claim that there exists a significant possibility of confusion between Afrula and Amarula, arguing that the average liqueur buyer is a discerning, intelligent adult capable of reading.

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Noble Spirits emphasized that since a considerable portion of its business operates online, it is imperative for consumers to be discerning and informed to transact in e-commerce and possess a credit or debit card.

Therefore, it is highly improbable that the average customer would be misled, deceived, or confused enough to mistake one product for another, and consumers can differentiate Afrula from Amarula based on visual presentation, whether in stores or online.

The sound or appearance of marks could cause confusion

Noble Spirits contended that the distinction between the primary components of the respective marks, “AMA” and “AF,” effectively eliminates any potential for confusion since the average consumer would likely understand that “AFrula” is a unique marula cream liqueur separate from “AMArula,” and if they intended to buy Amarula, they would recognize they are looking at the wrong product.

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

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

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“Not only do the marks exhibit similarities, but it is also clear that the mark is designated for use 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 fulfilled,” she stated.

Parker concluded that Southern Liqueur has established a likelihood that Noble Spirits’s use of the Afrula mark directly competes with it in the same market, regardless of 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 due to the lack of market presence, making it practically unfeasible to assess misrepresentation and passing off at this stage.

“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 around 45 in production, marketing, and sales, it remains inactive.

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

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