A dispute over pasta – the one cooked and the other raw – recently raged in the Gauteng High Court, Pretoria, with two companies both claiming they are entitled to the use of the name Nonnas Pasta.
Soft Coffee Ltd (the applicant), which trades under the name “Nonnas Italian Kitchen,” owns four registered trademarks incorporating the word “Nonnas”. It turned to court in a bid to stop a company trading under the name Nonnas Pasta Ltd (respondent) from using the “Nonnas” name.
According to the applicant, the respondent is infringing on its trademark, a claim denied by the respondent. The applicant conducts business, among others, as “Nonnas Italian Kitchen,” a restaurant with a footprint throughout the country, which the respondent admitted.
The applicant said that the respondent infringed the trademarks by using in the course of trade and within South Africa, a mark with the words “Nonnas Pasta” in relation to food items of plant origin including rice, pasta and noodles.
The director of the respondent contends that the applicant has no trademark in respect of class 30 goods, being the selling of pasta products, and that the class 43 registrations pertain to restaurant services, not purely the selling of pasta.
He said the respondent is not involved in restaurant services and that it is in the process of registering trademarks in respect of its goods. According to the applicant, the respondent has been using the words “Nonnas Pasta” since about May 2021. The director of the respondent meanwhile said he registered the operations of the company, and they have been trading for more than seven years.
He argued that its operations are unrelated to those of the applicant, who is in the restaurant industry and sells cooked pasta, while his company sells raw pasta to retailers. According to him, the parties have different target markets, with the applicant’s restaurants catering to middle to high-income individuals, whereas his company provides pasta products at low prices to accommodate lower-income individuals.
Judge Omphemetse Mooki said the word “Nonnas” is the dominant element to the registered trademarks. The usage of “Nonnas Pasta” in relation to the registered trademarks is likely to cause deception or confusion on the notional user. Nonnas Pasta is phonetically, conceptually, and visually the same as the applicant’s registered trademarks, the judge said.
The court concluded that the respondent has been shown to have infringed a right enjoyed by the applicant. It is immaterial that the applicant does not, for example, sell pasta to retailers or, for that matter, to people with low incomes. The applicant has a right in law that entitles it to use its registered trademarks in any manner permitted by the law, the judge said.
The respondent was interdicted from using “Nonnas” in its trade, and it has to destroy all material bearing the infringing mark. The court also directed an inquiry to determine possible royalties payable to the applicant or to determine the damages the applicant had suffered as a result of the infringement of the trademark.
Zelda Venter
iol.co.za
