The whole matter began when Casadobe Props 60, the owner of the “Canto” winery located in the Durbanville region of South Africa, applied to register the trademark CANTO in various classes, including class 33, which covers wines and sparkling wines. It didn’t take long for the Italian wine group Fratelli Martini Secondo Luigi SpA to react, filing an opposition to this application.
The Italians cited their previously registered trademark CANTI, also in class 33, arguing that both trademarks are too similar visually and phonetically, which could mislead consumers. Furthermore, the Italian producer argued that both trademarks consist of five letters, share the same first four letters, and are also conceptually related to music or singing. In their opinion, these similarities were sufficient for consumers to mistakenly assume a connection between the two brands, which would constitute an infringement of the rights to the previously registered trademark CANTI.
Initially, the High Court sided with the Italian company’s arguments and upheld the opposition to the registration of the CANTO trademark. The judge ruled that the two trademarks were indeed too similar to coexist in the market without risking consumer confusion. In its reasoning, the court focused on the striking similarities between the trademarks – the identical first four letters and the similar length of the words, which, in the judge’s assessment, created a very similar overall impression.
Furthermore, the court of first instance placed significant emphasis on the conceptual similarity between the two trademarks. CANTO, in English, refers to singing or a part of a musical work, while CANTI, although an Italian word, also evokes musical connotations. This semantic similarity, combined with the visual and phonetic similarities, according to the court, reinforced the risk of consumer confusion.
The High Court’s decision was a significant victory for the Italian manufacturer and could have had serious consequences for the South African winery. The owners of the Canto estate faced the prospect of having to change the name of their product, which would involve enormous rebranding costs, loss of brand recognition, and potentially significant financial losses. It is no surprise that they decided to appeal this unfavorable decision.
After considering the appeal, the Supreme Court of Appeal of South Africa (SCA) reached a completely different conclusion and overturned the previous decision. The court acknowledged that there were superficial similarities between the marks, but in the broader context, it found that they were not similar enough to create a real risk of confusion among consumers. This dramatic shift in perspective represents a fascinating case of differing interpretations of similar facts by different court instances.
A key element of the SCA’s reasoning was the application of the “global appreciation” approach, which requires considering the marks as a whole, from the perspective of the average consumer. The court noted that although both marks begin identically, the different final letters – “O” in CANTO and “I” in CANTI – significantly alter the appearance and sound of the marks, creating a distinction that was deemed significant. Furthermore, the judges pointed out that CANTO is an English word recognizable to many residents of South Africa, while CANTI is a foreign term, less likely to be understood as having a specific meaning by the average South African consumer.
The court also took into account the nature of the goods and the characteristics of the likely consumer – an approach common in many jurisdictions. Purchasers of wine were considered to be individuals who exhibit a moderate level of attention when making a purchase – not an expert level of scrutiny, but higher than the average shopper in a supermarket. In this context, the court found no real risk of confusion between the marks.
An interesting aspect of this ruling was the court’s focus on the market context in which both brands operate. It was noted that “CANTO” is a local brand, while “CANTI” is imported, which means that these products rarely compete directly on the same shelf. Consumers are also often guided by the country of origin of the wine. Although this argument was not decisive in the case, the court suggested that the current distribution method may affect the risk of confusion. However, in the age of online sales and globalization of distribution channels, this approach may raise doubts – the market situation can change dynamically, and products from different countries increasingly compete directly with each other.
The ruling of the South African court is not revolutionary from the perspective of European or British practice, but it reminds us of several important principles. First, even small differences in spelling or pronunciation can determine the absence of a risk of confusion if the overall perception of the sign is different. Second, the conceptual meaning and consumers’ knowledge of the language have a significant impact on the assessment of similarity. Third, the market context plays an increasingly important role in case law, although it is not always a predictable factor. For advisors and entrepreneurs, this means the need to not only analyze the regulations but also to monitor market realities and how consumers perceive brands.
The CANTO vs. CANTI case shows that trademark law is not only about dry regulations but also about practice, in which it is important to look at the brand through the eyes of an ordinary customer – and in a specific, often changing market reality.
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