South African court rules on biltong company’s beef over trademark

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

South African court rules on biltong company’s beef over trademark

Sponsored by

spoor-fisher-400px.png
Biltong (dried meat) on a wooden board, this is a traditional food snack that can be found in South Africa.

A South African biltong company has prevailed in a fiery dispute concerning a mark. Reinard Krüger of Spoor & Fisher, Pretoria, digests the reasoning behind the decision

This article examines a trademark judgment of the South African Supreme Court of Appeal (SCA), Grupo Bimbo v Takis Biltong, on December 14 2023.

The parties

The appellant, Grupo Bimbo S.A.B., is a Mexican company that trades in South Africa. It has a 2012 South African trademark registration for the mark ‘Takis Fuego’ (stylised) in class 30 for goods including bread and corn chips.

The respondent, Takis Biltong (Pty) Ltd, is a company that is South African to the core – it makes and sells biltong (the ‘superfood’ that fuels the world’s most awesome rugby players, according to certain quarters), and it does this under the trademark ‘Takis Biltong’, for which it has 2007 trademark registrations in class 29, covering meat.

The first court’s finding

Takis Biltong sought a court order to cancel (expunge) the trademark registration for ‘Takis Fuego’. The application was brought under Section 24 of the South African Trade Marks Act, which deals with entries wrongly made or wrongly remaining on the register. The court of first instance ruled against the application, but the full bench of the High Court was satisfied that there was a likelihood of confusion and the registration was cancelled. The judgment was taken on appeal to the Supreme Court of Appeal (SCA).

The judgment of the SCA

The main issues covered are as follows.

Were the marks so similar that there was a likelihood of deception and confusion?

Section 24 of the Trade Marks Act allows an interested party to apply for rectification of the register in respect of an entry “wrongly made in or wrongly remaining on the register”. The application to cancel the trademark registration for ‘Takis Fuego’ was brought under various sections of the Trade Marks Act:

  • Section 10(12), which deals with a mark that is “inherently deceptive or the use of which would be likely to deceive or cause confusion”;

  • Section 10(14), which deals with a mark that is “identical to a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof… would be likely to deceive or cause confusion”; and

  • Section 10(17), which deals with a mark that is identical or similar to a registered trademark that is “well known” in South Africa.

Judge repeats key considerations in trademark cases

Judge Kathree-Setiloane repeated many of the things that South African judges say when they are faced with a trademark infringement case. For example, the court must:

  • Judge the likelihood of confusion through the eyes of a notional purchaser with average intelligence, proper eyesight, and normal caution;

  • Consider the dominant features of the marks;

  • Make a global assessment of the marks – trademarks are remembered by “general impressions or some significant or striking feature and not by a photographic recollection of the whole”;

  • Avoid the temptation to “peer too closely at the marks to find similarities or differences”; and

  • Assume “that the trademark applicant will make normal and fair use of its mark”.

Confusingly similar marks

The judge described the “dominant, integral, or essential element” of both marks, the word “Takis”, as an “invented word”. It has an inherent distinctiveness that, the judge suggested, puts it in “the category of a class of trademarks such as… Samsung, Toyota, Motorola, and Nokia”.

On the other hand, “the word fuego [which the judgment accepted as meaning fire in Portuguese]… does not serve to distinguish the marks” and it has “no trademark significance”. It should be pointed out that this firm’s understanding is that the Portuguese word for fire is fogo, not fuego, with fuego being Spanish, a language that is understood by a reasonable number of people in South Africa.

What about the goods?

The SCA held that the goods were also similar, with both being “snack foods”. The evidence showed that “snack foods such as biltong and related snack products are sold… side by side to other snack products including crisps/chips, ice-creams, popcorn, peanuts, and nuts in general”. The judge referred to the famous UK case of British Sugar v James Robertson and Sons (1996), in which the court said that it is necessary to consider:

  • The respective uses and users of the goods;

  • The physical nature of the goods;

  • The trade channels;

  • The location of goods in supermarkets; and

  • The issue of whether the goods are competitive.

The result

The registration for ‘Takis Fuego’ had been wrongly entered on the register and it was therefore cancelled.

more from across site and ros bottom lb

More from across our site

Coke Morgan Stewart previously spent 10 years in various USPTO roles before joining O’Melveny in 2023
Law firm Stephens Scown secured victory for its client in a dispute over two cider products
The Court of Appeal said the UPC can award damages based on a national court’s infringement ruling, giving the last laugh to the lawyer who filed the case
AI
Robert Guthrie at Osborne Clarke runs through the government’s AI and copyright consultation and considers the expected challenges
A lawyer firing Meta as a client has reinforced why the industry should not shy away from losing business from those with questionable ethical standards, even if it comes at a cost
A blow for Getty ahead of its AI showdown with Stability AI and a licensing deal between Nokia and Samsung were among the big talking points this week
The IP Federation has written to the UPC Court of Appeal’s presiding judge ahead of a crucial decision on whether in-house lawyers and attorneys can represent their employers in litigation
A Boies Schiller Flexner partner explains how he helped toy company Tangle prevail in a copyright case concerning a kinetic sculpture
Awards
Submit your nominations for this year's WIBL Americas Awards by February 28
Awards
Research for the annual Women in Business Law Awards has begun – submit your entries by February 28
Gift this article