Burton’s Foods trademark dispute against Boxer Superstores dismissed

The wording 'Wheels' in relation to biscuits came under the legal spotlight after a company selling biscuits under the name 'Wagon Wheels' objected to a competitor wanting to register its biscuits using the name 'Wheels' on its packaging.

Burton’s Foods turned to the Gauteng High Court, Pretoria, as it is opposing two trademark applications filed by Boxer Superstores under the Trade Marks Act, to enable it to use the word 'Wheels' on its biscuits.

Burton’s Foods asked the court for an order refusing Boxer Superstores' trademark applications and directing that the trademark applications be removed from the register.

Burton’s Foods opposition is premised on the contention that the respondent’s trademark is highly similar to theirs, and that it covers goods that are identical, or at least highly similar.

For that reason, the applicant said, the use of the respondent’s trademark would lead to confusion or deception among consumers, as the trademarks are so similar.

Judge Jan Swanepoel remarked that, upon closer scrutiny, Burton’s Foods' complaint is really against the use of the word 'Wheels'.

The applicant told the court that its 'Wagon Wheels' trademark contains the word 'Wheels', which retains an independent identity within the composite mark 'Wagon Wheels'.

It said its trademark and the opposed trademark applications are visually similar in that they both contain the word 'Wheels'.

But the judge said the applicant cannot claim rights in the individual words contained in the composite trademark. The question is not whether the word 'Wheels' is identical in each mark, but whether the trademark 'Wagon Wheels' is so similar to the trademark 'Wheels' as to cause deception or confusion.

Burton’s Foods trademark is registered simply as Wagon 'Wheels', with no description as to colour or design. Boxer Superstores trademark carries a specific design in specific colours, namely yellow, black, and white. Visually, the two marks are quite distinct from one another, the judge said.

He added that aurally, the marks also differ.

“There is no reason to conclude that the word 'Wheels' is dominant in the mark Wagon 'Wheels'. The adjective ‘wagon’ describes the noun ‘wheels’ and is, in my view, the dominant part of the trade mark, while in the first respondent’s trade mark, ‘wheels’ is dominant,” Judge Swanepoel said.

He took into consideration that the type of goods to which the marks apply are essentially identical. This increases the likelihood of confusion. They will also likely be presented for sale in the same aisle and section of the same type of retail outlets, he said.

But he also considered that the probable customer will not pay as much attention to the product as would, for instance, the purchaser of computer software or items of high value.

“In my view, the mark 'Wheels', even if used in respect of identical goods, is not likely to deceive or cause confusion with the mark 'Wagon Wheels'. In the result, the application must be dismissed and the registration of the respective trade marks must proceed,” Judge Swanepoel concluded.

Cape Times