Diving into the scope of conceptual trademarks

On May 26, 2022, the South African Supreme Court of Appeal issued a decision in a case involving two tobacco manufacturers, Open Horizon and Carnilinx.

Open Horizon filed a lawsuit against Carnilinx for infringement of its ‘Pacific’ trademarks (with several variants) for tobacco products and cigarettes, on the grounds that the competitor, which was trading the same products under the ‘Atlantic’ (with several variants) trademarks, was infringing its trademark rights and because there was unfair competition.

The plaintiff considers that the competitor, by trading the same goods under the term ‘Atlantic’, as the core element of the trademark to identify its products, establishes a connection with its ‘Pacific’ trademarks, of which the term ‘Pacific’ is the central element.

Conceptual similarities

Meaning that, by marketing the same products under the ‘Atlantic’ trademark, the plaintiff considers that the competitor intends to take unfair advantage of its ‘Pacific’ trademarks, creating confusion or error among consumers, as both designations (which are the dominant element of the marks being compared) invoke the same concept or idea, namely, an ocean.

Although there is no graphic or phonetic similarity between the conflicting trademarks, the plaintiff considers that there is a conceptual similarity since both names are used to identify an ocean, which will lead the average consumer either to confuse them or to assume that the trademark ‘Atlantic’ belongs to the plaintiff.

Additionally, it was argued that the choice of the designation ‘Atlantic’ was not innocent because the competitor intended to benefit from the confusion that may arise among consumers for its own profit and damage the plaintiff’s rights.