Is Amarula the Best? Safeguarding Its Brand Through a Trademark Dispute

A liquor and retail products trader aiming to introduce a marula cream liqueur branded as Afrula has been instructed by the Western Cape High Court to avoid infringing on the trademark of Amarula Cream Liqueur.

Acting Judge Rehana Parker specifically instructed Noble Spirits (Pty) Ltd to refrain from violating the trademarks held by Southern Liqueur Company Limited:

• Its registered trademarks by utilizing the name Afrula or any closely resembling marks in the alcoholic beverages sector, as such use may mislead or confuse consumers under the Trade Marks Act; and
• The benefits derived from the well-known Amarula trademarks by using the name Afrula or any mark that may unfairly benefit from or harm the distinctiveness of the established and registered Amarula trademarks.

However, Parker rejected Southern Liqueur’s passing off claim against Afrula, mainly because the product is not presently available in the South African market.

Southern Liqueur functions as a wholly owned subsidiary of South African Distillers and Wines (SA) Limited, which is completely owned by Distell Group Limited.

Southern Liqueur’s case

Acting Judge Parker pointed out that Southern Liqueur needed to pursue an interdict and other remedies against Noble Spirits following the trademark application for “Afrula.”

The basis for Southern Liqueur’s request stemmed from trademark infringement and passing off regarding the mark and associated Afrula branding.

Southern Liqueur claimed:

• The trademark Afrula is confusingly or deceptively similar to its registered trademarks Amarula and Amurula, resulting in potential deception and confusion among consumers regarding the products linked to each party’s trademarks.
• Any use of the name Afrula by Noble Spirits is likely to exploit, gain an unfair advantage, or detract from the distinct character and reputation of the famous Amarula trademark;
• The Afrula labeling closely mirrors its Amarula branding, likely causing public confusion and leading consumers to believe that the Afrula product originates from Southern Liqueur.

Elephant or African woman?

Acting Judge Parker noted that the trademarks Amarula and Afrula are prominently featured on their respective products.

On the Amarula product, the elephant-themed design is placed just beneath the Amarula trademark, whereas Noble Spirits’s label includes what Southern Liqueur views as a side profile of an elephant head, which Noble Spirits describes as an “African woman.”

Parker suggested that this distinction might not be obvious to consumers upon first encountering the Noble Spirits product.

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Southern Liqueur asserted that consumers will initially perceive the Afrula mark accompanied by an elephant motif set against a distinctly African backdrop concerning a liqueur product.

Parker emphasized that this impression leads to the conclusion that Noble Spirits has essentially duplicated the key elements of its African-themed Amarula branding, particularly “the AMARULA mark and the ELEPHANT design.”

Both marks ‘can co-exist’

Noble Spirits expressed its intent to begin the production and sale of a marula cream liqueur named Afrula in South Africa after securing the registration of the Afrula mark in various countries, including 17 predominantly French-speaking African nations within the African Intellectual Property Organisation (OAPI), along with Kenya, Tanzania, and the EU.

The company aims to start operations in South Africa by August 2021 and believes that both marks can coexist in the market.

Noble Spirits challenged the assertion that there is a significant likelihood that Afrula would be confused with Amarula, arguing that the average liqueur consumer is a discerning adult capable of reading.

Listen: How trade mark laws are fighting SA’s counterfeit product problem

Noble Spirits highlighted that since a substantial portion of its business occurs online, it is essential for consumers to be discerning and well-informed to manage e-commerce transactions and possess a credit or debit card.

Therefore, it is highly unlikely that the average shopper would be misled, deceived, or confused into mistaking one product for another, as consumers can distinguish Afrula from Amarula in terms of visual presentation, whether in stores or online.

The sound or appearance of marks could cause confusion

Noble Spirits contended that the difference between the central components of the respective marks, “AMA” and “AF,” effectively resolves any potential for confusion as the average consumer would likely recognize that “Afrula” is a distinct marula cream liqueur from “Amarula,” and if they intend to purchase Amarula, they will understand they are looking at the incorrect product.

Conversely, Southern Liqueur argued that “AFRULA” and “AMARULA” both commence with “A” and conclude with “RULA,” heightening the chance of consumer confusion regarding the sounds or visuals of the respective marks.

Acting Judge Parker confirmed that the similarities between the marks are sufficiently comparable according to the Trade Mark Act.

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“Not only do the marks share similarities, but it is clear that the mark is set to be used regarding the same goods for which the Amarula mark has become recognized and well-known.

“Therefore, the necessity for easily recognizable similarity between the two marks, in my view, is satisfied,” she stated.

Parker concluded that Southern Liqueur has shown the likelihood that Noble Spirits’s use of the Afrula mark directly competes with it in the same market, irrespective of whether it may succeed in a lower price range, and is likely to dilute the uniqueness of the Amarula mark.

Passing off claim

However, Parker recognized that Southern Liqueur faces hurdles with the passing off claim since, without market presence, evaluating misrepresentation and passing off is practically impossible at this stage.

“There is no evidence that the product is available in the market or on shelves.

“Should the product become available, then the Applicant [Southern Liqueur] is entitled to the sought relief.

“At this moment, I am reluctant to find liability for passing off, acknowledging that no damage can take place if the product is not commercially accessible,” she remarked.

Parker observed that while Noble Spirits has established a new facility in Cape Town, anticipated to be operational by August 2021 with an expected workforce of about 45 in production, marketing, and sales, it remains inactive.

She noted that Southern Liqueur has provided no evidence to support that the Afrula product is present in the South African market.

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