Thread by @senamisomoyo

Another week, Another #IPThursday. Sorry its late, life happened. This week we take a quick look at the “Sun Jam” case recently decided by the Zim Supreme Court.

Our story this week takes part in a Teapot country formerly known as the bread basket of Africa, Zimbabwe. Why did I just mention that we were the bread basket of Africa?

Well because its important to set the scene, just so we all understand the importance that Zimbos attach to certain food products.

You see, after independence in 1980 (maybe before then too), led by Mugabe the country would export a lot of goods to the world, this included corn, wheat, tobacco etc. and for the most part local products dominated the shelves, and we didn’t need to import as much as we do now.

The result of this was that Zimbabweans grew significantly attached to certain local products. This is important, because even during an economic crisis that has lasted over 2 decades, Zimbabweans still prefer their original products over foreign imports.

The most common examples are probably Mazoe, Cerevita and snacks such as Thingz, Jupiters and Cheesies. If you’re visiting anyone wherever you are and see all this in their cupboard, just know they are likely a Zimbo or are dating one or have an ex from Zim!

It does not matter where in the world a Zimbo is, they will find a way to have these products shipped to them. It may be nostalgia, but I think they are just high quality goods and they taste really good.

One of these is a very popular mixed fruit jam called Sun Jam. Produced by Cairns Foods, it is probably the most popular jam in the country and has been around for over 65 years. My grandparents, parents and myself probably all grew up on it.

It is made from sun ripened fruits which are hand-picked from the Eastern Highlands of Zimbabwe but like Mazoe, I think it is definitely laced with some sort of drug, it is really that good.

Its in every rural or town households, whether you’re having your bread on metal Kango or enamel Le Creuset plates. As a result, Sun Jam is easily one of the most recognisable and longstanding brands in the country. Who can forget this brilliant ad!

So in 1995, Cairns registered the trade mark of a logo which consists of the word “SUN” with various fruits under it. When the mark was registered, Cairns entered a disclaimer for the use of fruit images.

For those who don’t remember….when you register a trade mark, the Registrar can ask you to enter a disclaimer against the non-distinctive elements of your trade mark.

This just informs the public that you do not claim rights to that non-distinctive element and other people are free to use it in relation to those goods. Cairns had only agreed to enter a disclaimer on the images of fruits and not the word “Sun”, this will be important later.

This brings us to the next party in our story, a company called Netrade Marketing. I’m not sure when exactly they were established but in 2011, they registered the trade mark ROYAL SUN in class 29 in relation to a wide range of products including jam.

Eventually, probably around 2017, they moved into the Jam market and came up with a logo which said ROYAL SUN and the words “Mixed Fruit Jam” at the bottom.

Cairns wasn’t at all happy about this, and in August 2017, they dragged Netrade to court for trade mark infringement and passing off. Cairns argued that the use of the mark by Royal Sun in relation to Jam together with the words “Mixed Fruit Jam” was likely to cause confusion.

In fact, Cairns had evidence that one of their merchants had ordered the Royal Sun jam by mistake, thinking it was the Cairns SUN JAM.

The High Court compared the two marks and didn’t agree with Cairns, they looked at the marks and held that the marks were not similar and there was no confusion or infringement.

Their view, was that Cairns did not have monopoly rights to the word SUN, they held that their rights were in the representation of the mark/logo as a whole and they dismissed the application with costs.

Cairns wasn’t happy with this ruling and decided to appeal the High Court judgment at the Supreme Court. They felt the High Court misdirected itself on a number of issues. Reading the claims, they basically said the Court had no idea what it was doing.

In a judgment written by Justice Mathonsi, the Supreme Court agreed with Cairns and basically blasted the High Court. In one sentence, referring to the High Court’s decision that Cairns did not have rights in the word SUN.

Mathonsi J said, and I quote good people, “In fact, such a factual finding could not possibly be made by a court applying its mind to the facts.”

His words, not mine! They considered some SA case law and other principles of trade mark law and found that the word “SUN” is in fact a prominent feature of the trade mark.

What was disclaimed, was the use of a fruits image. Anyone using the word “SUN” in relation to Jam in Zimbabwe, would likely be guilty on an infringing on the SUN Jam trade mark.

The test for infringement which was applied by Mathonsi J and whether there is confusion is simple really. You have to put yourself in the shoes of an “average” customer leisurely doing shopping.

In my head, I always pretend the average customer is my Dad doing the shopping, my mom might a bit be too attentive to be an average customer.

You have to ask yourself, would the average consumer pick up ROYAL SUN jam thinking it’s the popular SUN JAM if they came across it in store. If the answer is Yes, then there is confusion and and infringement.

In my opinion, it goes without saying that the word SUN is the distinctive part of the trade mark. Any other Jam manufacturer in Zim who uses that word is likely trying to infer an association with Sun Jam.

Sidenote: Cairns was represented by @BrendaMatanga ‘s firm. I think they’ll be a more in depth post on their website about this case soon!

Big Lesson: When thinking about whether there’s an infringement, always consider the average consumer. If they would confuse the later mark for the earlier one, then there’s an infringement. ❤️💛💚