Takis Biltong wins trademark case but sneaky snack food won’t go away

Takis Biltong, one of SA’s most revered brands, fought a nine-year battle all the way to the Supreme Court of Appeal to protect its trademark against infringement by Mexican-registered company Grupo Bimbo, which was found to be selling tortilla chips in SA under the name Takis Fuego.

That case was decided in favour of Takis Biltong in December 2023, the name and the logo design being deemed so similar as to cause confusion in the minds of consumers. The Pretoria High Court overturned an earlier ruling by the same court and ordered that the registration of the trademark Takis Fuego be cancelled.

Despite the court ruling in favour of Takis Biltong, Takis Fuego-branded products are still freely available across SA – in violation of the court order.

Exasperation

Taki Aristides, co-owner of the Takis Group, tells Moneyweb this effectively nullifies the decision of the court.

“Takis is a family-owned business that we have built up over 40 years, and we had no choice but to take the matter to court to defend our brand.

“But what is the point if competing brands using our trademark are still being sold on shop shelves in SA?”

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Grupo Bimbo says it is not responsible for these Takis-branded products ending up in SA. Instead, the products appear to be imported by third party suppliers, some of them perhaps unaware of the court order.

This is cold comfort for Takis Biltong, which says it is losing market share and suffering brand degradation so long as these products are allowed to enter the local market.

The Takis Fuego brand is owned by Grupo Bimbo, one of the largest bakery companies in the world, with about 140 000 employees. It owns more than 100 brands, such as Thomas Bagels, Harvest Gold bread, Bimbo Blanco and Takis Fuego (outside of SA). The company is listed on the Mexican Stock Exchange and has a presence in 35 countries, including South Africa.

Product categories

Takis Biltong first registered its trademark in May 2007 for use under the category “meat, fish, poultry, preserved meats, meat extracts and sausages”.

Takis Fuego applied for registration of its trademark in June 2012 for use in “bread, pastry, corn flour chips, corn extruded, wheat extruded and pop corns”.

Though they operated in different food categories, Takis Biltong had established itself as a well-known snack brand in SA.

It became alarmed when another ‘Takis’ brand appeared on the market, looking remarkably like its own.

Legal battles

Takis Biltong declared a dispute with Grupo Bimbo in 2015 on the grounds that its Takis Fuego brand was too similar to its own and would cause confusion in the market.

It applied for the cancellation of the Mexican Takis trademark, and the matter eventually found its way to the Pretoria High Court, which ruled in favour of the Mexican company in 2018.

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That ruling found the two marks were not necessarily identical and traded in two different trademark categories.

Takis Biltong took the matter on appeal, and managed to have this earlier ruling overturned.

The appeal court ruled that the Takis Fuego logo is visually deceptive or confusingly similar to the Takis logo. The use of different fonts and the addition of words such as “Barcel” and “Fuego” to the Takis name by the Mexican company was not sufficient to remove the deception or confusion.

The case eventually ended up in the Supreme Court of Appeal, where it was again decided in favour of the local company.

The Trade Marks Act does not allow for the registration of marks that are deceptive or “likely to deceive or cause confusion, or are the same as or similar to already registered marks”.

‘Deception or confusion’

The Pretoria High Court ruled: “Deception or confusion will rise when a consumer, confronted with the two marks ‘in supermarkets on the same or different shelves’ might think that the goods of one producer are that of another or that there is a material connection between the products of the one and those of the other.”

When the case floated up to the Supreme Court of Appeal, the judge ruled that the word ‘Takis’ is what makes it distinctive, placing it in a category of unique trademarks such as Samsung, Toyota and Motorola.

The Mexican company, by adding the word ‘Fuego’, did not remove the confusion that would likely arise in the minds of consumers.

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Aristides says the company has spent millions of rands defending its trademark against an international food giant with deep pockets.

“We had hoped that the court ruling in our favour would put an end to the matter, but that is not the case.

“We are seeking clarity from Grupo Bimbo on how these Takis-branded products are ending up in SA and, if necessary, may have to launch court applications against those importing these products.”

This article was republished from Moneyweb. Read the original here.