Hilary Muza 
IF you are driving out of Harare towards Bulawayo from the CBD, you will come across no less than five Chicken Inn outlets. You will also find several Chicken Slice outlets dotted along the way. Such is the penetration that these two brands have in Zimbabwe.
In fact, they have become synonymous with fast food. What most people will agree on is that the brands are very similar, from their use of colour to their logos’ symmetry.
The latest court battle between these brands has been caused by the use of the word “luv” in their branding, with Chicken Inn’s being “Luv dat chicken” and Chicken Slice’s being “I luv it”.
Chicken Inn complained that the use of the word “luv” in Chicken Slice’s branding amounts to an infringement of Chicken Inn’s registered trademark.
This was the subject of the dispute in Innscor Africa Limited (Chicken Inn) v Slice Distributors (Private) Limited (Chicken Slice).
What is a trademark?
A trademark is defined as a distinctive sign or mark, which identifies certain goods or services as those produced or provided by a specific person or enterprise. This implies that specific defining features of a brand must point only to an individual person (or legal entity) to the exclusion of everyone else.
The rationale for trademark protection is and should be the preservation of brand value since trademark owners should be able to utilise their marks in whatever way they see fit.
A trademark infringement arises when a third party uses a protected mark without authority from the holder of the mark. This is exactly what happened in the Chicken Inn v Chicken Slice case.
This is not the first time Chicken Inn has had to defend its trademark against infringement. In 2012, it sued businesses owned by Takesure Mbano whose outlets went the by name “Chickenza Inn”, “Creamy Chickenza” and “Pizza Chickenza”.
Mbano’s branding was admittedly much more similar to that of Chicken Inn, but the same principles apply in the Chicken Slice case.
The point of trademark protection is that it must be crystal clear in the mind of a customer that they are buying a product made by the holder of the trademark.
The test that is ordinarily applied to cases of this nature is whether an ordinary consumer could be confused into buying a product made by the infringer of the trademark to the holder’s detriment.
It must not be forgotten that Chicken Inn registered its trademark in 1987 and Chicken Slice registered it’s mark in 2002. The logic behind trademark protection in this case is that between 1987 and 2002, Chicken Inn was building a brand and garnering goodwill.
By purportedly infringing the Chicken Inn trademark, Chicken Slice was unfairly reaping the benefits of Chicken Inn’s investment into its brand through marketing and satisfactory service delivery over the years.
Passing off
Chicken Inn allege that the word “luv” was unlawfully used in Chicken Slice’s tagline. This was not the only allegation. It was also said that Chicken Slice passed off Chicken Inn’s branding as their own through the use of similar colours. This legal concept is known as passing off.
Passing off is similar to trade mark infringement, but applies to protect unregistered rights associated with a particular business, its goods or services. The first question a court of law will ask is if the mark in dispute is registered as a trademark.
If it is not, then the court will move onto the concept of passing off.
The legal reasoning behind the law of passing off was explained by Professor G. Feltoe in his Guide to the Zimbabwean Law of Delict, 3rd edition, quoted in the case of Dr. Achinulo v Dr. Gazi & Ors HB 198/15 as follows:
“The purpose of the action for passing off is to protect a business against misrepresentation by a defendant that his business, goods or services are that of plaintiff or associated therewith. The delict is committed in relation to a business that has acquired goodwill.
“Goodwill is the totality of attributes that lure or entice clients or potential clients to support a particular business.
“As passing off harms the reputational element of goodwill, plaintiff must prove;
1. that he has acquired a business reputation associated with his business name.
2. that defendant has misrepresented his business, goods or services as being those of plaintiff or associated therewith.”
So, in essence, a company with little goodwill and reputation will have a tough time in court. Goodwill and reputation must be proven and adequately demonstrated before the court to show the extent of harm that the complainant would have suffered.
Where possible, it is important to show the negative impact of the infringement/passing off on the complainant through sales records, consumer surveys and the like.
It is not enough to simply say I have suffered harm. It must be proven comprehensively. Passing off is also a matter of fact, it must be proven that the complainant’s mark was passed off to sustain a claim in court.
Chicken Inn lost this particular case because the court took the view that its evidence of goodwill and reputation was not satisfactory.
Clients and lawyers alike are encouraged to make sure that the amount of evidence they have can satisfy a court of law.
Muza is a duly admitted lawyer with expertise in business advisory, labour law and commercial litigation. He writes in his personal capacity. For feedback, email him at hilarykmuza@gmail.com or call on +263719042628.
