Who owns the “soul” in soul food?

By Carla Koutroulis, Consilium Legal Senior Associate. Soul Food, traditionally emanating from the Southern states in America, is all about foods such as fried chicken, corn bread, collard greens and macaroni and cheese.

Locally, Chicken Licken has for some time focused its marketing around this concept of “Soul Food”, with the names of various promotions and menu items including the moniker –  many of which Chicken Licken went so far as to trademark, including: Soulslaw, Soul’d out, Soul doctor, Soul man, Soul mates, Soul fire and Soul food. Furthermore, they have filed numerous trademark applications in order to secure ownership, use and entitlement of such terms.

For years, Chicken Licken has been known in legal circles for instituting action in order to protect its registered trademarks, no matter how big or small the perceived infringer was. And for many years they have succeeded in holding ownership of such words. However, the Supreme Court of Appeal has now made a ruling in the little man’s favour.

Soul Souvlaki, a small “Greek Street Food” concept that started operating at markets and has now opened up various stores around Johannesburg, has been successful in challenging Chicken Licken’s action against their use of the word “soul” in its name.

Soul Souvlaki sought to register its name as a trademark in the same classes as Chicken Licken, and it was on that basis that Chicken Licken sought to interdict the registration and use of the mark. Chicken Licken initially lost the matter at the High Court, and appealed to the Supreme Court of Appeal for final determination.

Chicken Licken contended that it has been using the word “soul” since 1994, and has had it registered as trademark since 2001, and therefore, Soul Souvlaki’s use of the word in its name was likely to deceive or confuse customers. It is important to remember that the test looks at whether the two marks (logo, slogan, product) in question are “confusingly similar” that the ordinary consumer would believe that the two products are the same or related.

The Court stated that “soul” and “Soul Souvlaki” are not the same thing, and “souvlaki” does not appear in any Chicken Licken products; and the word “souvlaki” distinguishes the mark from the Chicken Licken trademarks. The Court ruled that even if Chicken Licken started offering Greek street food, that the use by Soul Souvlaki of “soul” in its name, would still not cause confusion, causing Chicken Licken any harm. The Court ordered that there would never be confusion in the ordinary consumer’s mind that the two fast food outlets are related; and that Soul Souvlaki is free to continue to use the word “soul” in its name.

This comes after Chicken Licken recently lost its application to appeal a decision by the Western Cape High Court that upheld the use of the name “Soul Kitchen” by a Plettenberg Bay restaurant. It seems therefore that the fast food giant may be losing its tight grip on the use of the word “Soul”.

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