CANTO v. CANTI: South Africa’s Supreme Court of Appeal weighs in on trademark confusion

In a recent decision that may prompt reflection among international trademark practitioners, South Africa’s Supreme Court of Appeal (SCA) addressed the ever-tricky question of how similar is too similar when it comes to trademarks in the wine industry.

In Casadobe Props 60 (Pty) Ltd v. Fratelli Martini Secondo Luigi SpA [2025] ZASCA 14, the court was tasked with determining whether CANTO, a mark used by a South African wine estate, was confusingly similar to CANTI, a registered mark owned by an Italian wine producer.

While the dispute arose in South Africa, the court’s reasoning touches on universal issues faced by trademark professionals: the weight of phonetic and conceptual similarity, the relevance of consumer habits, and the influence of market context on the likelihood of confusion.

Background: a tale of two wines

The applicant, Casadobe Props 60, owns the Durbanville-based wine estate ‘Canto’ and applied to register the mark CANTO in various classes, including class 33 for wines and sparkling wines. The Italian wine group Fratelli Martini Secondo Luigi SpA opposed the application, relying on its earlier-registered mark CANTI, also in class 33.

Fratelli claimed that the marks were visually and aurally similar and that their use on identical goods was likely to deceive or cause confusion among the public. This argument was advanced under sections 10(14) (opposition to registration due to similarity with an earlier mark) and 34(1)(a) (infringement) of South Africa’s Trade Marks Act 194 of 1993. The structure of the Act is broadly comparable to the UK’s Trade Marks Act 1994 and shares certain conceptual elements with the EU’s trademark regime.

The High Court upheld the opposition, finding that the marks were indeed too close for comfort. Both terms are five letters long, share the first four letters, and are conceptually linked to music or singing. The court concluded that consumers could be misled into believing there was a connection between the brands.

A different view from the SCA

On appeal, the SCA overturned the High Court’s ruling. It accepted that there were superficial similarities between the marks but held that they were, in context, not sufficiently alike to give rise to confusion.

Key to the court’s reasoning was the “global appreciation” approach, considering the marks as a whole and from the perspective of the average consumer. While the marks begin identically, the differing final letters (“O” and “I”) altered the look and sound of the marks, creating a distinction that was deemed significant. The court also noted that CANTO is an English word recognizable to many South Africans, while CANTI is a foreign term less likely to be understood as having a specific meaning.

As is common in many jurisdictions, the court considered the nature of the goods and the characteristics of the likely consumer. Wine buyers were deemed to exercise a moderate level of care, perhaps not expert-level scrutiny, but more than the average supermarket shopper. Against this backdrop, the court found no real risk of confusion.

A note on market context

In an aside that may strike some practitioners as unconventional, the court noted that CANTO is a domestic brand and CANTI is imported. As such, the two products would likely not be placed alongside each other on retail shelves, and consumers might shop by country of origin. This factual distinction was not central to the court’s finding, but its presence in the judgment does raise some questions.

From an advisory perspective, reliance on current market distribution can introduce uncertainty. Distribution channels shift, imports grow, and online platforms often display competing products side by side, regardless of geography. While the court’s observation may reflect present conditions, it highlights the challenge of giving clients clear guidance in an environment where factual context is increasingly influencing legal outcomes.

Implications for international practitioners

The SCA’s judgment is unlikely to strike European or UK practitioners as radical, but it does reinforce a few themes relevant to global trademark practice. First, minor differences in spelling or pronunciation can be dispositive, where the overall impression of the marks diverges. Second, even in markets where language familiarity varies, conceptual meaning remains relevant. Third, and perhaps most importantly, market context is becoming an increasingly prominent factor in judicial analysis, albeit not always predictably so.

While the outcome in Casadobe is arguably commercially sensible, it serves as a reminder that trademark law is rarely applied in a vacuum. As courts consider broader factors in their assessments, trademark advisors must likewise broaden their approach, striking a balance between the formal application of legal principles and a practical understanding of how brands function and are experienced in the marketplace.

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