Chicken Inn defeats Chicken Slice in court over trademark
Take Away food giant Chicken Inn has successfully defeated local competitor Chicken Slice, regarding trademark infringement rights over latter’s use of the word and spelling “luv”, which Chicken Inn had set as a trademark.
Subsequently, Chicken Slice is now banned from using that spelling.
Chicken Inn, owned by Simbisa Brands but with the owner listed in court papers as Inscor Africa, the original owner before it was split into four independent companies, had sued Slice Distributors at the High Court last year for using the word “luv” in the Chicken Slice and Burger trademark which reads “I luv it”.
The issues for determination were whether Chicken Slice infringed Chicken Inn’s registered trademark in any way and whether the Slice company passed off any of its products as those of Chicken Inn as alleged.
In the end, the High Court early this year, rejected the Chicken Inn application ruling that Chicken Inn had no exclusive right to the word “luv”, adding that consumers would not be confused by the two products anyway. This prompted Inscor to approach the Supreme Court on appeal.
The court yesterday decided that Chicken Slice violated the trademarks of Chicken Inn.
Chicken Inn came up with the word “Luv” when it made “Luv dat chicken” a trademark in 1987.
In addition, Chicken Inn said Chicken Slice’s colours scheme was strikingly similar to its own and the similarity in the trademarks and colours caused confusion among consumers.
Chicken Inn lost an original action against Chicken Slice soon after the competitor opened in around 2012 for using a logo similar to Chicken Inn, with the courts taking the view that there were enough differences not to amount to an infringement.
This time a three-judge panel of the Appeals Court comprising Justice Lavender Makoni, Justice Antonia Guvava and Justice Nicholas Mathonsi unanimously found merit in the appeal on the use of the word “Luv” and quashed the lower court’s decision. But Chicken Inn could not sustain its argument that Chicken Slice was trying to pass off its products as those of Chicken Inn.
The judges agreed with Inscor lawyers Advocate Tawanda Zhuwarara and Advocate Rino Zhuwarara that Chicken Slice owned by Slice Distributors had violated trademarks owned by Innscor when it used the word “luv” in its advertising and promotions.
Justice Makoni who wrote the judgment for the court noted that, Chicken Slice, which is in the same business as Chicken Inn, has been advertising and marketing its goods and services, which are similarly offered by Chicken Slice in the same way as Chicken Inn through social media and print media.
“Chicken Slice cannot not seriously contend that there is no trademark infringement by its continued use of the phrase “I luv it” in respect of its product under the Chicken Slice mark,” she said.
“One wonders why the first respondent (Chicken Slice) could not find another phonetic equivalent of the word ‘love’ which is different from that used by the appellant (Chicken Inn) and depicted in a different font and colour.
“We agree with Mr Zhuwarara that the court a quo erred in failing to properly apply the legal tests attendant to trademark infringement claims.
“The appellant is entitled to the interdict it seeks as the continued use of the phrase “l luv it,” in products under The Chicken Slice mark, creates deception and confusion between the appellant’s products and the first respondent’s products as viewed by the notional consumer.”
The judgement is an indication that the Zimbabwean Courts stand ready to enforce trademarks once they are registered. This decision also serves as a warning to all businesses who attempt to carry out misrepresentation of a mark, to take advantage of the reputation of a competitor’s product, by copying or creating a confusingly similar mark, thereby leading to illegal and unfair competition.
In October 2021, the Supreme Court settled the long-running trademark and trade dress infringement row pitting Cairns Foods Limited and Netrade Marketing Private Limited ruling that in Zimbabwe its unlawful to copy another person’s trademark to sell your own products with branding likely to mislead ordinary customers.
Cairns Foods had appealed against a High Court decision dismissing its lawsuit against Netrade, which was producing and selling a product called Royal Sun Jam, featuring the trademark and tread patterns that infringed Cairns Foods trademark.
This violated the Trade Marks Act because the name Sun Jam is a registered trademark of Cairns foods. The trademark is 50 years old.
Interestingly Cairns Foods was represented by Adv Zhuwarara in that case.
Both cases establish Zimbabwe as a jurisdiction that takes commercial rights seriously. Herald
