Soft Serve, Al Dente

A judgment that needed a few more minutes on the boil

Soft Coffee (Pty) Ltd v Nonnas Pasta (Pty) Ltd and Others (Case No. 088838/2025, High Court of South Africa, Gauteng Division, Pretoria. Judgment delivered 22 June 2026 by Mooki J.)

The recent decision in Soft Coffee v Nonnas Pasta is, in many respects, a model of how trade mark infringement should be adjudicated. The court was decisive in stripping away irrelevant noise, faithful to the notional use doctrine, and doctrinally rigorous in disposing of a section 36 defence that had never been properly pleaded. Where the judgment disappoints is in its treatment of the infringement finding itself — where a failure to distinguish between sections 34(1)(a) and (b) of the Trade Marks Act has produced an interdict that goes further than the reasoning can support, with real consequences for the respondent.

The Facts

The applicant operates a national restaurant chain under the brand “Nonnas Italian Kitchen.” It holds four registered trade marks incorporating the word “NONNA’S” — one in class 30 (NONNA’S ITALIAN KITCHEN, covering goods including pasta) and three in class 43 (covering restaurant services).

The respondent, Nonnas Pasta (Pty) Ltd, manufactures and sells dry, packaged pasta with an 18-month shelf life. The pasta bears the mark “NONNAS PASTA.” The respondent does not operate a restaurant. It is not entirely clear from the judgment whether the respondent sells directly to consumers through its own branded retail outlets or distributes to third-party retailers (or both), but in either case its company name incorporates the word “Nonnas.”

The court found infringement under section 34(1)(a) in respect of all four marks, declined to address the section 34(1)(b) alternative, and granted an interdict restraining the respondent from “using ‘Nonnas’ as a mark (infringing mark) in the course of a trade or otherwise.”

What the Court Got Right

The respondent raised a blizzard of extraneous considerations: that the parties serve different demographics, that their packaging differs, that their products have different shelf lives, and that no actual confusion had occurred. The court correctly held that none of this matters. The infringement enquiry is confined to the marks themselves, and no regard is to be had to other features of get-up or indicia of origin (Lucky Star Ltd v Lucky Brands (Pty) Ltd). The notional use doctrine requires consideration of “the full range of permissible fair use” of the registered mark. A proprietor’s rights are not diminished because it has not yet exploited the full scope of its registration. All of this is textbook, and the court applied it clearly.

On section 36, the court was exemplary. Counsel for the respondent attempted to construct a defence of prior use from fragments scattered across the answering papers — references to Mr Savides having traded since 2018, barcode dates suggesting use from 2017, and the incorporation of the respondent company in 2021. The court rejected this. Relying on E-Traction (Pty) Ltd v Tyrecor (Pty) Ltd 2015 ZASCA 78, it held that section 36 is a special defence that must be specifically pleaded, with the respondent bearing the onus of proving continuous and bona fide use from a date anterior to the proprietor’s use or registration. The respondent had not pleaded the defence. The court refused to infer a case that was “readily available to be pleaded, but was not pleaded.” This is sound law and a useful reminder that section 36 cannot be assembled at the bar from afterthoughts.

Where the Judgment Falls Short

Section 34(1)(a) requires use of an identical or confusingly similar mark in relation to goods or services in respect of which the trade mark is registered. Section 34(1)(b) extends to use in relation to goods or services which are so similar to those covered by the registration that confusion is likely. The first provision requires identity of goods or services; the second requires a structured analysis of their similarity. The judgment does not distinguish between them.

The class 30 registration covers goods including pasta. The respondent’s pasta bears the mark “NONNAS PASTA” — it is printed on the product and its packaging. This is use of the mark on and in relation to the goods themselves: the very class of goods for which the applicant’s class 30 mark is registered. The section 34(1)(a) infringement of the class 30 mark is clear and unassailable.

But the court did not confine its finding to the class 30 mark. It declared infringement under section 34(1)(a) in respect of all four marks, including three class 43 registrations for restaurant services. This is where the reasoning breaks down.

A critical distinction — never addressed in the judgment — is between what the respondent does and what the mark is used in relation to. The respondent does two things simultaneously. First, it applies the mark “NONNAS PASTA” to its pasta products; this is use in relation to goods. Second, it trades under the name “Nonnas Pasta (Pty) Ltd,” conducting a retail or distribution business through which those goods reach the market; this is use of the mark in relation to a retail or distribution service (class 35 territory). These are different acts of use, in relation to different things.

Only the first, use on the goods, can found a section 34(1)(a) infringement of the class 30 registration. The second, use of the mark in relation to a retail or distribution service, is not use in relation to anything covered by the applicant’s registrations. The class 43 marks cover restaurant services, not retail or distribution services. Selling or distributing packaged pasta is not the same thing as serving cooked pasta in a restaurant. The section 34(1)(a) gateway is not available for the class 43 marks.

What was available was section 34(1)(b) — which would have required the court to ask whether the respondent’s retail or distribution services are “so similar” to the applicant’s registered goods or services that confusion is likely. Importantly, section 34(1)(b) could operate against either the class 30 or the class 43 registrations. A retail or distribution service performed in relation to pasta might be found to be similar to uncooked pasta as a class 30 foodstuff, or to restaurant services involving pasta in class 43, or to both, or to neither. That is precisely the enquiry the section demands.

This requires a structured analysis applying the well-established factors from British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, which our courts have repeatedly endorsed: the respective uses, the users, the physical nature of the goods or services, the trade channels, and whether they are competitive or complementary. It is possible such an analysis would have yielded a finding of similarity. But it was never conducted. The factual basis for it is not apparent from the judgment.

The error appears to have arisen at paragraph [17], where the court formulated the test for infringement as requiring use “in respect of identical goods in relation to which the trade mark is registered” — a formulation that corresponds only to section 34(1)(a). The court’s language throughout is loose: it refers to the respondent using the mark “in the course of a trade, selling pasta,” without distinguishing between use on the pasta (identifying the goods) and use in the business of selling or distributing pasta (identifying a service). Having set the test in section 34(1)(a) terms, the court never turned its mind to whether the respondent’s services and the applicant’s registered goods or services are the same thing. It assumed they are. They are not.

The Practical Problem: An Overbroad Interdict

The error is not academic. The interdict restrains the respondent from “using ‘Nonnas’ as a mark (infringing mark) in the course of a trade or otherwise.” Read alongside the order to destroy all material bearing the mark and remove it from all products, the effect is twofold: the respondent must (i) rebrand its pasta products and (ii) change its company name.

Only one of those consequences is clearly supported by the judgment’s reasoning. The mark on the pasta infringes the class 30 registration — that much is a straightforward section 34(1)(a) case. But the respondent’s use of “Nonnas” in its company name is use in relation to its retail or distribution business (a service), not use on the goods. To restrain that use, the court needed to find either that the service is the same as restaurant services or uncooked pasta (it is neither) or that it is sufficiently similar to one or both under section 34(1)(b) (which was never analysed). The interdict goes further than the infringement finding can carry it.

A properly confined order would have interdicted the use of “Nonnas” (or any confusingly similar mark) on or in relation to pasta products or foodstuffs — the goods covered by the class 30 registration that grounds the infringement. Whether the interdict should extend to the respondent’s trading name is a separate question that required separate analysis under section 34(1)(b) or, conceivably, section 34(1)(c). That analysis is absent.

Conclusion

Soft Coffee v Nonnas Pasta gets several important things right. Its treatment of extraneous matter, notional use, and the section 36 defence is clear, well-reasoned, and practically useful. But its infringement analysis conflates two distinct statutory provisions and two distinct acts of trade mark use. The result is an interdict whose breadth is not supported by the reasoning that precedes it.

The outcome is not necessarily wrong in its entirety. A British Sugar analysis might well have supported a section 34(1)(b) finding that would justify restraining the respondent’s use of the name in relation to its retail or distribution services. But “might have” is not a substitute for “did.” The judgment needed to distinguish between the mark on the pasta and the mark in the business name, between goods and services, and between identity and similarity. It did none of these things.

The ingredients were all there. The judgment just needed a few more minutes on the boil.

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