Soft Coffee v Nonnas Pasta: One Mark, Two Different Uses

A recent High Court decision, involving Soft Coffee and Nonnas Pasta, is a reminder that the scope of trade mark protection depends not only on the mark registered, but also on the goods and services in respect of which it is registered. It also raises questions about how the identical-goods and similar-goods infringement provisions in sections 34(1)(a) and 34(1)(b) of the Trade Marks Act apply where a proprietor holds registrations in more than one class.

The distinction between these two provisions is central to understanding the decision in Soft Coffee (Pty) Ltd v Nonnas Pasta (Pty) Ltd and Others ((088838/2025) [2026] ZAGPPHC 771)). Section 34(1)(a) is confined to unauthorised use in the course of trade of an identical or confusingly similar mark in relation to the goods or services in respect of which the mark is registered. Where the defendant’s goods or services fall outside the specification, the proprietor must rely on section 34(1)(b), which requires the goods or services