In 2006, Pepsi filed a trademark application for Pepsi Twist with the South African Registrar of Trade Marks. Pepsi Twist is a lemon-flavoured soft drink, that had been marketed in the USA as an alternative to the regular Pepsi soft drink.
Pepsi Twist was first introduced in the USA in 2000 and is currently only available in a select few countries outside the USA.
The application for the registration of Pepsi Twist was opposed by Coca-Cola on the basis that Pepsi Twist was confusingly similar to a number of Coca-Cola’s registered trademarks, namely Twist, Diet Twist and Lemon Twist.
In 2018, over 10 years later, after going through the different legal processes to challenge the registration of a trademark, the matter finally reached the South African Supreme Court of Appeal (SCA).
The SCA decided that Pepsi Twist would be considered confusingly similar to Lemon Twist and Diet Twist by consumers. Pepsi Twist could therefore not be registered.
As a result, Pepsi was not allowed to sell or market a soft drink with the name of Pepsi Twist.
If Pepsi sold or marketed the Pepsi Twist soft drink, using the words “Pepsi Twist”, such use would be an infringement of Coca-Cola’s trademark rights. It must be noted, however, that Pepsi would have been allowed to sell and market the soft drink under a different name other than Pepsi Twist.
The application for the Pepsi Twist trademark in South Africa was intended to pave the way for the sale of the similarly named soft drink in South Africa.
The designs incorporating Pepsi Twist were already available to Pepsi at the time of the application for the registration of Pepsi Twist due to its ongoing sale in the USA.
Thus the money invested in creating the designs incorporating Pepsi Twist (and any other material e.g. actual soft drinks with the logos) would, presumably, have already been spent in advance.
Had this been the first market into which Pepsi sought to introduce the ‘Pepsi Twist’ soft drinks, the decision by the SCA would have meant that the money invested in the making of any designs linked to the prospective trademark would be entirely wasted, and Pepsi’s loss would have been far greater.
Individuals and companies invest huge sums to depict their trademark in a manner which is visually pleasing to consumers.
The SCA’s decision in the Pepsi Twist case therefore highlights the importance of pre-emptively ensuring that a trademark, which is intended for commercial use, is not too similar to an existing trademark.
Those who wish to enter the market with a new trademark should therefore seek the advice of a trademark attorney to check that their trademark, product or design does not infringe another business’s rights before making use of it.
Article compiled by Calvin Kassel from Malherbe, Rigg and Ranwell Inc. Contact the law firm on 011 918 4116.
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