Court sides with Amarula in trademark battle over rival’s name

A new would-be player in the marula liqueur game, Noble Spirits, has lost its bid to appeal a decision banning it from launching a competitor to Distell’s world-famous Amarula because the new product’s name was too similar.

In a judgment handed down, the Western Cape High Court found in favour of Distell’s subsidiary Southern Liqueur Company, when rival Noble Spirits took a previous matter on appeal.

Towards the end of last year, Distell went to the same court in a bid to stop Noble from launching a marula alcoholic drink called Afrula. In that bid, Distell was successful as the Judge ruled that Distell “acquired a clear and protectable right and that the infringement of such rights causes it potential harm or potential injury”.

Distell first learnt that Noble aimed to get the Afrula name trademarked in April 2019, at which time the legal battle started. The Amarula maker argued that, not only were the names similar, but also the fact that the label had what looked like an elephant – like its own product – would confuse customers.

Amarula as a brand has been in use since September 1989.

Noble stated that this was not a side view of an elephant head, but rather a side view of an African woman. Distell’s competitor also argued that Distell “cannot claim exclusive right to monopolize the word ‘marula’ thereby restricting its ordinary usage in the English language by other traders,” the November 2024 judgement read.

In addition to that argument, Noble stated that customers won’t confuse the two liqueurs as “the average consumer of the liqueur purchaser is a sophisticated, intelligent, and discerning adult who can read,” the Judge wrote.

Not happy with the ruling, Noble went back to court and had its application for leave to appeal turned down this month as it didn’t succeed in its argument that it had a reasonable prospect of winning in the Supreme Court of Appeal.

Noble once again took the court through the conjoined word derived from Africa and the marula fruit to come up with Afrula arguing that it is not the same, it is not similar, it is not confusingly or deceptively similar to Amarula and, the reasons of a phonetic similarity, a visual similarity, a conceptual similarity is not concerned.

The Afrula maker’s attempt at a rival drink was not the first such move. In 2008, another company tried launching Black Horse Premium Marula Cream" with the trademark "Marula" prominently depicted on both the body and neck of the label. Distell also won that battle.

In this month’s decision, the judge noted that “it is therefore conceivable that in trade when somebody speaks Amarula or Afrula one could think that they are jumbling the word, either by slurring the word, or just speaking too fast and therefore one can easily accept that there will likely be confusion phonetically and visually”.

The application was dismissed with costs, stating that disagreement with the earlier ruling was not enough to warrant an appeal.