Dale Healy | Partner – Trade Marks | Adams & Adams | mail me |
The recent decision in Soft Coffee (Pty) Ltd vs Nonnas Pasta (Pty) Ltd and Others (Case No. 088838/2025, High Court of South Africa, Gauteng Division is, in many respects, a model of how trade mark infringement should be adjudicated.
The court decisively stripped away irrelevant noise. It remained faithful to the notional use doctrine and rigorously disposed of a section 36 defence that the respondent had never properly pleaded. However, the judgment disappoints in its treatment of the infringement finding itself. Its failure to distinguish between sections 34(1)(a) and (b) of the Trade Marks Act produced an interdict that goes further than the reasoning can support. This has real consequences for the respondent.
The facts
The applicant operates a national restaurant chain under the brand “Nonnas Italian Kitchen.” It holds four registered trade marks incorporating the word “NONNA’S”. One falls under class 30 (NONNA’S ITALIAN KITCHEN, covering goods including pasta). The other three fall under class 43 (covering restaurant services).
The respondent, Nonnas Pasta (Pty) Ltd, manufactures and sells dry, packaged pasta with an 18-month shelf life. Its pasta bears the mark “NONNAS PASTA.” However, the respondent does not operate a restaurant. The judgment does not make entirely clear whether the respondent sells directly to consumers through its own branded retail outlets or distributes to third-party retailers, or both. Either way, its company name incorporates the word “Nonnas.”
The court found infringement under section 34(1)(a) in respect of all four marks. It declined to address the alternative claim under section 34(1)(b). Furthermore, it granted an interdict restraining the respondent from “using ‘Nonnas’ as a mark (infringing mark) in the course of a trade or otherwise”.
What the court got right
The respondent raised a blizzard of extraneous considerations. These included arguments that the parties serve different demographics, their packaging differs, their products have different shelf lives, and no actual confusion had occurred. The court correctly held that none of these considerations matters. The infringement enquiry focuses exclusively on the marks themselves. It must disregard other features of get-up or indicia of origin (Lucky Star Ltd vs Lucky Brands (Pty) Ltd).
Moreover, the notional use doctrine requires courts to consider “the full range of permissible fair use” of the registered mark. A proprietor does not lose its rights simply because it has not yet exploited the full scope of its registration. These principles reflect established trade mark law. The court applied them clearly in this trade mark ruling.
On section 36, the court was exemplary. Counsel for the respondent attempted to construct a defence of prior use from fragments scattered across the answering papers. These included references to Mr Savides having traded since 2018, barcode dates suggesting use from 2017, and the respondent company’s incorporation in 2021.
The court rejected this approach. Relying on E-Traction (Pty) Ltd v Tyrecor (Pty) Ltd 2015 ZASCA 78, it held that section 36 provides a special defence that a respondent must specifically plead. The respondent also bears the onus of proving continuous and bona fide use from a date anterior to the proprietor’s use or registration.
The respondent had not pleaded this defence. Consequently, the court refused to infer a case that was “readily available to be pleaded, but was not pleaded.” This reflects sound law and offers a useful reminder. A respondent cannot assemble a section 36 defence at the bar through afterthoughts.
Where the judgment falls short
Section 34(1)(a) requires the use of an identical or confusingly similar mark in relation to goods or services covered by the trade mark registration. By contrast, section 34(1)(b) extends protection to goods or services so similar to those covered by the registration that confusion is likely.
The first provision requires identity of goods or services. The second requires a structured analysis of their similarity. However, the judgment does not distinguish between these provisions.
The class 30 registration covers goods including pasta. The respondent’s pasta bears the mark “NONNAS PASTA”, which appears on the product and its packaging. This constitutes use of the mark on and in relation to the goods themselves. These are precisely the goods covered by the applicant’s class 30 registration. Therefore, the section 34(1)(a) infringement of the class 30 mark is clear and unassailable.
However, the court did not confine its finding to the class 30 mark. Instead, it declared infringement under section 34(1)(a) in respect of all four marks. These included three class 43 registrations covering restaurant services. This is where the reasoning breaks down.
A critical distinction, which the judgment never addresses, concerns what the respondent does and what the mark identifies. The respondent engages in two activities simultaneously.
First, it applies the mark “NONNAS PASTA” to its pasta products. This constitutes use in relation to goods. Second, it trades under the name “Nonnas Pasta (Pty) Ltd”. Through this business, it conducts a retail or distribution operation that brings those goods to the market. This constitutes use of the mark in relation to a retail or distribution service, which falls within class 35 territory.
These are different acts of use. They also relate to different goods and services.
Only the first activity, namely using the mark on the goods, can establish infringement under section 34(1)(a) of the class 30 registration. The second activity involves using the mark in relation to a retail or distribution service. The applicant’s registrations do not cover such services.
The class 43 marks cover restaurant services, not retail or distribution services. Selling or distributing packaged pasta is not equivalent to serving cooked pasta in a restaurant. Therefore, the section 34(1)(a) gateway is unavailable for the class 43 marks.
However, section 34(1)(b) offered a possible alternative. It would have required the court to determine whether the respondent’s retail or distribution services are “so similar” to the applicant’s registered goods or services that confusion is likely.
Importantly, section 34(1)(b) could operate against either the class 30 or class 43 registrations. A retail or distribution service involving pasta might qualify as similar to uncooked pasta as a class 30 foodstuff. Alternatively, it might resemble restaurant services involving pasta under class 43. It could also resemble both or neither. This is precisely the enquiry that section 34(1)(b) requires.
Such an enquiry demands a structured analysis. The court should have applied the well-established factors from *British Sugar plc v James Robertson & Sons Ltd* [1996] RPC 281. Our courts have repeatedly endorsed these factors. They include the respective uses, the users, the physical nature of the goods or services, the trade channels, and whether the goods or services compete or complement one another.
It is possible that this analysis would have established similarity. However, the court never conducted it. Furthermore, the judgment does not disclose the factual basis for such a finding.
The error appears to have originated at paragraph [17]. There, the court formulated the infringement test as requiring use “in respect of identical goods in relation to which the trade mark is registered.” This formulation corresponds only to section 34(1)(a).
The court also uses imprecise language throughout its judgment. It refers to the respondent using the mark “in the course of a trade, selling pasta”. However, it does not distinguish between two different activities. The first involves using the mark on pasta to identify the goods. The second involves using the mark in the business of selling or distributing pasta to identify a service.
After formulating the test in section 34(1)(a) terms, the court never considered whether the respondent’s services and the applicant’s registered goods or services constitute the same thing. Instead, it assumed they do. They do not.
This distinction is central to understanding the trade mark ruling. Without it, the court risks extending the scope of infringement beyond what the relevant statutory provision permits.
The practical problem – an overbroad interdict
The error is not merely academic. The interdict restrains the respondent from “using ‘Nonnas’ as a mark (infringing mark) in the course of a trade or otherwise.” When read alongside the order requiring the respondent to destroy all material bearing the mark and remove it from all products, the practical consequences become twofold.
The respondent must:
- Rebrand its pasta products.
- Change its company name.
Only one of these consequences has clear support in the court’s reasoning. The mark appearing on the pasta infringes the class 30 registration. That much constitutes a straightforward case under section 34(1)(a).
However, the respondent’s use of “Nonnas” in its company name relates to its retail or distribution business, which constitutes a service. It does not involve using the mark on the goods themselves.
To restrain this use, the court needed to establish either that the service is identical to restaurant services or uncooked pasta, which it is not, or that it is sufficiently similar to one or both under section 34(1)(b). The court never conducted this analysis. Consequently, the interdict extends further than the infringement finding can justify.
A properly confined order would have interdicted the respondent from using “Nonnas”, or any confusingly similar mark, on or in relation to pasta products or foodstuffs. These are the goods covered by the class 30 registration that establishes the infringement.
Whether the interdict should also extend to the respondent’s trading name is a separate question. It requires a separate analysis under section 34(1)(b) or, conceivably, section 34(1)(c). The judgment contains no such analysis.
The distinction matters because a trade mark ruling must connect the scope of the remedy to the infringement that the court actually establishes. An interdict should not extend beyond the statutory basis supporting it.
In conclusion
Soft Coffee vs Nonnas Pasta gets several important things right. Its treatment of extraneous matter, notional use, and the section 36 defence is clear, well-reasoned, and practically useful. Nevertheless, its infringement analysis conflates two distinct statutory provisions and two different acts of trade mark use. As a result, the court grants an interdict whose breadth the preceding reasoning does not support.
The outcome is not necessarily wrong in its entirety. A British Sugar analysis might well have supported a finding under section 34(1)(b). Such a finding could have justified restraining the respondent’s use of the name in relation to its retail or distribution services.
However, “might have” is not a substitute for “did”. The judgment needed to distinguish between the mark on the pasta and the mark in the business name. It also needed to distinguish between goods and services, and between identity and similarity. It did none of these things. The ingredients were all there. The judgment just needed a few more minutes on the boil.
