Understanding Trade Mark Classification

Trade marks are classified in one or more Classes (of which there are 45) depending on the goods/services which are offered under the specific trade mark. Classes 1-34 deal specifically with goods while Classes 35-45 deal specifically with services. In practice, more than one Class is often applicable.

Why Accurate Trade Mark Classification is Crucial

The importance of classifying the goods/services offered under a trade mark is often underestimated. As a trade mark must be used specifically for the goods/services it is registered for, if a trade mark is filed in the incorrect Class and/or in respect of the incorrect goods/services, the trade mark may be subject to removal from the Trade Mark Register on the grounds of non-use, according to South African trade mark law.

Case Study: Grupo Bimbo S.A.B v Takis Biltong (Pty) Ltd

As an example of the importance of correct classification and the rights which accompany a trade mark in the correct Class, one can look at the recent Supreme Court of Appeal Judgement in the case of Grupo Bimbo S.A.B v Takis Biltong (Pty) Ltd (293/2022) [2023] ZASCA 175.

Details of the Trade Marks in Question

In the above case, the Appellant (Grupo Bimbo S.A.B) sought reconsideration of an application for leave to appeal the cancellation of its 2012 trade mark, TAKIS FUEGO, represented as follows:

The TAKIS FUEGO trade mark was classified in Class 30 in respect of “Bread, pastry, corn flour chips, wheat corn flour chips, corn extruded, wheat extruded, pop corns.”

The Pretoria High Court found that the Appellant’s mark, as represented above, was likely to deceive or cause confusion by virtue of similarity to the Respondent’s (Takis Biltong (Pty) Ltd) trade mark for TAKIS BILTONG, represented as follows:

The TAKIS BILTONG trade mark was classified in the following Classes:

Class 29 in respect of “Meat, meat products, processed meat, biltong, meat extracts, potato crisps and chips, processed nuts, dried fruit”
Class 30 in respect of “Sweets and confectionery”
Class 31 in respect of “Nuts of all kinds (unprocessed), raisins, snack foods of all kinds included in this class.”

The Legal Question: Likelihood of Confusion

The question raised was whether the marks are so similar that there is a likelihood of deception or confusion arising. Although the respective trade marks were offering different goods, in different Classes, the correct classification of the TAKIS BILTONG trade mark led the High Court to find a real likelihood of deception or confusion arising which resulted in the TAKIS FUEGO trade mark being removed from the Register.

Court's Ruling on the Trade Mark Dispute

The Supreme Court of Appeal concurred with the decision of the Pretoria High Court in that the goods are similar, stating that the greater the similarity between the mark in question, the lesser will be the degree of similarity required between the goods. The trade marks were found by both courts to be very similar, if not identical and therefore the lesser will be the required degree of similarity between the goods in question.

Conclusion: The Importance of Accurate Trade Mark Classification

Considering the above, the Supreme Court of Appeal was of the view that the appeal had no reasonable prospects of success and therefore dismissed the appeal, with costs.

Although the main goods offered by the respective parties differed from one another (meat products vs vegetable products), which are in different classes, the accurate and concise classification of the TAKIS BILTONG trade mark made it possible to bring an application for cancellation of the TAKIS FUEGO trade mark, which ultimately succeeded.

Protect Your Brand with the Right Trade Mark Classification

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