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[2014] ZASCA 6
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Pioneer Foods (Pty) Limited v Bothaville Milling (Pty) Limited (215/2013) [2014] ZASCA 6; [2014] 2 All SA 282 (SCA); 2014 BIP 486 (SCA) (12 March 2014)
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case
no: 215/2013
In
the matter between:
PIONEER
FOODS (PTY) LIMITED
…
..............................................
Appellant
and
BOTHAVILLE
MILLING (PTY) LIMITED
...................................
Respondent
Neutral
citation:
Pioneer Foods v Bothaville
Milling
(215/2013)
[2014] ZASCA 6
(12
March 2014)
Coram:
Navsa, Wallis and Willis JJA and Swain and Mocumie
AJJA.
Heard
:
3 March 2014
Delivered
:
12 March 2014
Summary:
Passing off – test – proof
of reputation – time for – likelihood of confusion.
ORDER
On
appeal from
Free State High Court
(Lekale J sitting as court of first instance):
The
appeal is dismissed with costs, such costs to include those
consequent upon the employment of two counsel.
JUDGMENT
Wallis
JA
(
Navsa
and Willis JJA and Swain and Mocumie AJJA
concurring)
[1]
The appellant, Pioneer Foods (Pty) Ltd (Pioneer),
is a major producer and distributor of maize meal products. One such
is its super
maize meal, which it has marketed under the name WHITE
STAR since 1999. It complains that the respondent, Bothaville
Milling, is
passing off its super maize meal, marketed under the name
STAR, by selling it in a get-up deceptively or confusingly similar to
that of WHITE STAR. To that end it sought an interdict against
Bothaville Milling in the Free State High Court, but Lekale J
dismissed
the application. The present appeal is with his leave.
[2]
Pioneer’s complaint that the get-up in which
STAR super maize meal is packaged is confusingly similar to the
get-up of WHITE
STAR is best illustrated by comparing the two side by
side, as in the picture below, which was attached to Bothaville
Milling’s
answering affidavit and shows the two products
positioned side by side in a shop.
[3]
The
packaging in both cases has white as the background colour and the
writing and symbols in either green or red. Both depict a
red star.
The star is larger and more prominent in the case of WHITE STAR and
situated slightly above the centre of the package,
with one elongated
point at the base and a burst of smaller stars rising from it at the
top. The words WHITE and STAR are printed
over the star in green
block capital letters and a plain sans serif font, with STAR in
larger type than WHITE. Below the star are
the words ‘SUPER
MAIZE MEAL’ in green type and block capitals, but printed in a
much smaller font than the name. Below
that in turn, in red block
capitals, but fairly narrow type, are the words ‘THE CLEVER
CHOICE’ and at the bottom of
the package there is a green
rectangular block in which, in white block capital letters, appear
the words ‘MOVE TO THE TASTE’.
[1]
The package depicted above is a 10 kg pack, but Pioneer also packages
the product in 25 kg, 5 kg, 2.5 kg and 1 kg
packs.
[4]
In
the case of STAR the red star is superimposed on a green circle in
the upper half of the pack. It is symmetrical and has a maize
cob
(mealie) printed on it in green and white. The word STAR is printed
immediately below the star and slightly below the mid-point
of the
pack, in red block capitals and a slightly fancy serif font with
green shadowing. The words ‘SUPER MAIZE MEAL’
appear
below that in green block capitals, and below that, in red block
capitals, appears the slogan ‘THE PEOPLES CHOICE’.
[2]
At one stage the lower portion of the pack bore a symbol in
accordance with the regulations governing the marketing of maize
products,
but that symbol now appears adjacent to the star. The same
symbol appears in the top corner of the WHITE STAR package. The
package
depicted above is a 12.5 kg pack and it appears that
there are also 25 kg, 50 kg and 80 kg packages.
[5]
Pioneer identifies four major aspects of this
get-up that it says will, in conjunction with one another, lead to
the deception of
customers and confusion in the market place. First,
is the use of the same three colours, white, green and red. Second,
is the
prominent use of the star symbol in red. Third, is the equally
prominent use of the name STAR capitalised in red lettering. Fourth,
is the use of the slogan ‘THE PEOPLES CHOICE’ as opposed
to its own slogan ‘THE CLEVER CHOICE’. It contended
that
the cumulative effect of these was to make the two products
confusingly similar and was likely to lead to confusion in the
marketplace. In doing so it relied almost entirely on the visual
impact of the respective get-ups asserting simply that the continued
use of the star device ‘will no doubt result in a diversion of
custom from the Applicant’ and that the likelihood of
deception
and confusion among the public ‘is clear and apparent’.
[6]
Bothaville Milling’s response, substantiated
by evidence, is that the combination of the colours white, green and
red in the
packaging of super maize meal is commonplace and used by a
number of prominent brands. So too is the name STAR, either with or
without a star symbol. As to the two slogans it says that they are
linguistically, aurally and visually different. It accordingly
discounts any prospect of customers being deceived or confused. In
support of this it points out that it has been marketing its
STAR
product in this get-up since at least 2003. In that period, whilst
Pioneer was on its own version aware of the STAR product
and
monitoring the market closely, it failed to identify a single
incident of confusion or deception. Bothaville Milling accordingly
attributes the present proceedings to a desire to stifle legitimate
competition.
[7]
There
is no dispute over the relevant legal principles. Passing off occurs
when A represents, whether or not deliberately or intentionally,
that
its business, goods or services are those of B or are associated
therewith. It is established when there is a reasonable likelihood
that members of the public in the marketplace looking for that type
of business, goods or services may be confused into believing
that
the business, goods or services of A are those of B or are associated
with those of B.
[3]
The
misrepresentation on which it depends involves deception of the
public in regard to trade source or business connection and
enables
the offender to trade upon and benefit from the reputation of its
competitor. Misrepresentations of this kind can be committed
only in
relation to a business that has established a reputation for itself
or the goods and services it supplies in the market
and thereby
infringe upon the reputational element of the goodwill of that
business. Accordingly proof of passing off requires
proof of
reputation, misrepresentation and damage.
[4]
The latter two tend to go hand in hand, in that, if there is a
likelihood of confusion or deception, there is usually a likelihood
of damage flowing from that.
[8]
As
regards Pioneer’s reputation in WHITE STAR, the product was
introduced to the market in 1999 as a vitamin enhanced form
of maize
meal. Since then it has been very successful. In volume the tonnage
sold had increased from some 16 000 tons in 1999
to a little
under 400 000 tons in 2010, the year before these proceedings
were launched. In 2010 a survey of top brands in
South Africa showed
that it and one other were the two top-ranked brands for super maize
meal. However, that is not the only critical
date for the purposes of
establishing its reputation in its get-up. In order to show passing
off it must show that it enjoyed the
reputation that is under attack
both at the time when Bothaville Milling entered the market with its
get-up and at the time of
the misrepresentation that it seeks to
interdict.
[5]
[9]
Two possible dates present themselves insofar as
the first relevant date is concerned. They are March 2001, when
Bothaville Milling
introduced its present packaging by dropping the
mark ‘NALEDI’ that had previously been a significant
component of
its get-up, and August 2003, when it added the strapline
‘THE PEOPLE’S CHOICE’ to its packaging. I start
there
because counsel described the latter event as the straw that
broke the camel’s back, although it only sought to take the
issue up eight years later. Be that as it may, by that date Pioneer’s
sales of WHITE STAR were well on track towards an annual
tonnage of
nearly 200 000 tons. Its marketing expenditure was nearly
R7 million, with over R10 million having been
spent on
marketing from the time of its launch. Advertising on the radio, a
major means of communication with the Black community
for whom maize
meal is part of their staple diet, was extensive, totalling 37
advertising spots a week on five different channels,
although one
does not know to what extent that advertising referred to the get-up
of the product. In the absence of rebuttal this
appears to be
sufficient to establish the requisite reputation.
[10]
At the earlier date in March 2001, the position is
less clear. WHITE STAR had been launched in a market dominated by two
other major
brands. Even so it had achieved sales of some 15 000
tons in 1999 and 65 000 tons in 2000. In 2001 its sales doubled
again so one can infer that by March of that year something of the
order of 35 000 tons had been sold. In 2000 R3.5 million
had
been spent on marketing and advertising and a similar amount was
spent in 2001. It is plain that there was on-going and successful
marketing of the brand. In 1999 WHITE STAR was also made
available to consumers through demonstrations at various community
functions, such as church gatherings, choir festivals and elections,
which attracted substantial numbers of people.
[11]
Bothaville Milling does not challenge this
evidence and at various points in the opposing affidavit concedes in
general terms that
Pioneer has established some reputation in WHITE
STAR. However, it categorically denied the existence of such a
reputation at the
time when it entered the market with its STAR
product. That was in 2000, when the product was launched as NALEDI
STAR. The packaging
was similar to that depicted above, save that
above the star and mealie cob logo appeared the word NALEDI in
lettering as prominent
as the word STAR below the logo. At that stage
there could have been no possible claim that the get-ups of the
competing products
were confusingly similar. The prominence of the
word NALEDI was sufficient to prevent confusion.
[12]
In
March 2001 the word NALEDI was removed from the pack, in order to
avoid a dispute with a third party that held a registered trade
mark
NALEDI together with a device mark. At the same time small changes
were made in the colouring of the words describing the
product as
well as the removal of the background against which they were
printed.
[6]
In my view the
addition of the strapline in 2003 added little if anything to the
appearance and impact of the STAR product from
the perspective of the
consumer. If the two were confusingly similar then the scope for such
confusion existed from March 2001.
The addition of the strapline
could not have converted a get-up that was not confusingly similar to
Pioneer’s into one that
was.
[13]
The heads of argument on behalf of Bothaville
Milling were confined to a submission that, because Pioneer Foods
launched its brand
and adopted its get-up in 1999, and before 2003
Bothaville Milling had been using earlier variants on its own get-up
as finally
established in 2003 ‘it is highly unlikely that the
Appellant had any repute or goodwill in its WHITE STAR get-up at the
time when the Respondent commenced use of its packaging’. This
submission is somewhat flimsy in the face of the evidence summarised
above and blurs the sequence of events. It does not take account of
the fact that until March 2001 the presence in bold type of
the word
NALEDI would have served to distinguish the two get-ups. Nor does it
take account of the limited impact of the addition
of the strapline
in August 2003. By that date there is certainly some evidence of a
reputation in the WHITE STAR product and, if
the later date of August
2003, is taken that evidence had grown stronger. Although this is not
the strongest case in terms of proving
the existence of the necessary
reputation I accept for the purposes of this judgment that Pioneer
established that it enjoyed the
requisite reputation in its get-up at
March 2001 and that this was the relevant first date for the purposes
of its passing-off
claim.
[14]
The
remaining issue between the parties is then whether Pioneer Foods
established the second and third requirements for passing
off, namely
misrepresentation and damage, by showing a reasonable likelihood that
members of the public may be confused by the
get-up adopted by
Bothaville Milling for its STAR product into thinking that it is
WHITE STAR or is related to WHITE STAR.
[7]
This is a matter for the judgment of the court but in making it the
court has regard to the type and class of customers who will
buy
super maize meal and the circumstances in which such goods will be
displayed for sale. The average customer is to be taken
as someone of
average intelligence, eyesight, observation and recollection. The two
products must be considered not only as they
would appear if sold
side by side, but also on the basis of their being displayed
separately in separate premises. Allowance must
be made for imperfect
recollection on the part of the consumer. What falls to be compared
is not any single element of the get-up
or even each element
separately, but the overall impact of the entire get-up of each on
potential customers. In the case of a product
such as this, falling
in the category of fast moving consumer goods, the matter is largely
one of first impression rather than
lengthy examination, as customers
buying such staple items will ordinarily be looking for their ‘usual’
brand as part
of routine domestic shopping.
[8]
[15]
Pioneer’s case on the likelihood of
confusion is expressed in the following way in the founding affidavit
of Mr Bower:
‘
The
Respondent has embarked on a campaign of copying the applicant’s
WHITE STAR get-up and performance thereby constituting
a pattern of
unlawful conduct in terms of which a confusingly or deceptively
[similar] get-up and pay-off line is adopted to that
of the
applicant’s WHITE STAR product in relation to the same fields
of activity with the clear intention of deriving benefit
from the
applicant’s repute and goodwill in and to its get-up and the
business associated therewith to the detriment of the
applicant’s
rights. As a result the respondent’s use of the STAR get-up is
likely to give rise to deception or confusion
amongst a substantial
number of interested persons accompanied by a reasonable apprehension
of damages.’
However,
this is a statement of conclusions rather than evidence of how the
two products are likely to be viewed in the market place.
[16]
The
only tangible direct evidence adduced in support of those conclusions
was in the form of affidavits by six consumers in Stellenbosch
who
were interviewed by an attorney, shown the STAR package and asked for
their views as to its provenance. As they had previously
been asked
whether they consumed maize meal and knew WHITE STAR super maize
meal, as well as how long they had known it and how
they recognised
it, there can be little surprise in learning that when they were
shown the STAR package they said (with remarkable
unanimity according
to their affidavits) that they initially thought it was ‘associated
with White Star, due to the prominent
red star and the colours red,
green and white appearing on the packet’. Apart from the
criticism to which the use of such
standard form affidavits should
rightly be subjected,
[9]
it is
interesting to note that none of these deponents said that they
thought that the package they were shown was a package of
WHITE STAR.
That suggests that even though their minds had specifically and
inappropriately been drawn to the latter product they
did not think
that STAR and WHITE STAR were the same.
[17]
Apart
from this Pioneer lead no other evidence of the likelihood of
confusion amongst the purchasing public. It confined itself
to
assertions that the similarity in packaging ‘will no doubt
result in a diversion of custom from the applicant’ and
that
the likelihood of deception and confusion amongst the public ‘is
clear and apparent’. That requires an examination
of the four
features on which it relied. First, there was the use of the colours
red, green and white. Second, was the red star
symbol. Third, was the
use in bold type of the word STAR and last the use of the strapline.
I remind myself that it is the combination
of these in the overall
get-up that must be considered. However, it is difficult to do this
if one does not examine the individual
elements and identify those
that are most distinctive and have the greatest impact on potential
customers.
[10]
[18]
Having done that, it seems to me that the central
feature of Pioneer’s get-up is the elongated red star and upper
star burst
with the words WHITE STAR superimposed upon it in green
block capitals in a sans serif font. The word STAR is given
additional
prominence by the fact that it is printed larger than any
of the other wording on the package. It is the impact of the star
with
the superimposed words that is the immediately striking feature
of the get-up. I am reinforced in that impression by the fact that
in
many of its marketing items depicted in the papers one finds both the
star and the words WHITE STAR printed in different colours
often
without any reference to either super maize meal or the strapline.
Thus there are golf shirts with a red star and blue lettering;
a red
bowl where the star and the name are printed in gold and a white one
where they are in red; a T-shirt where the star is red
and the
printing white and a pen and notebook where both the star and the
name are in white. This suggests that for Pioneer it
is the star and
the name WHITE STAR that are the key features.
[19]
Whilst the STAR packaging also has a red star as
its central feature the star is regular in shape and superimposed on
a green circle
with a large maize cob prominently printed in green
and white in the centre of the star. The word STAR is printed below
the depiction
of the star in red block capitals and serif type with a
green shadowing. On any footing it is markedly different from the
central
feature of Pioneer’s get-up. One can readily imagine a
customer being offered the one saying: ‘I want the one with the
stars’ or ‘I want the one with the mealie’. It is
more difficult to imagine a customer confusing the two.
[20]
Pioneer
wisely does not seek to rely upon the similarity in names alone.
Similarity in name alone, particularly a descriptive name
or a name
consisting in a word in common use, is rarely a ground for passing
off because of the difficulty in establishing that
it has become
distinctive of the business or products of the person using them and
courts will not give what amounts to a monopoly
in such words to one
trader at the expense of another.
[11]
But even in the limited context within which it relies upon the use
of the word STAR as part of its overall get-up there
seem to me to be
difficulties with its contentions. The reason is that it is clear,
and this is a central feature of its advertising
and marketing, that
its product is always marketed as WHITE STAR and never as STAR alone.
The word WHITE is not an inconsequential
or immaterial (the words
mean the same) addition to the name. It is an integral part of it and
there is no evidence that customers
ask for it in an abbreviated
form.
[21]
Accepting
the difference in context between a trade mark and a passing off
case, there are a number of cases in which courts have
had to
consider whether one word mark is confusingly or deceptively similar
to another. The matter was dealt with in this court
in
Century
City
,
[12]
where Harms DP said:
‘
[13]
[I]f the appellant's brand name were to be confusingly similar to the
registered mark ('be likely to deceive or cause confusion'),
it
infringes. I am satisfied that the appellant's brand name, in spite
of the addition of the word 'apartments', is confusingly
similar to
Century City. The point is well illustrated by the facts in
Compass
Publishing BV v Compass Logistics Ltd
[2004]
EWHC 520
(Ch) ([2004] RPC 41). The registered mark was the word
“Compass” in relation, in simplified terms, to computer
and
computer-related services. The defendant traded in the same
fields under the name Compass Logistics. After pointing out that the
two marks were not identical in the light of
LTJ
Diffusion SA v Sadas Vertbaudet SA
the
court proceeded to consider whether they were confusingly similar.
Laddie J said this (paras 24 - 25):
“
[24]
. . . The likelihood of confusion must be appreciated globally,
taking account of all relevant factors. It must be judged through
the
eyes of the average consumer of the goods or services in question.
That customer is to be taken to be reasonably well informed
and
reasonably circumspect and observant, but he may have to rely upon an
imperfect picture or recollection of the marks. The court
should
factor in the recognition that the average consumer normally
perceives a mark as a whole and does not analyse its various
details.
The visual, aural and conceptual similarities of the marks must be
assessed by reference to the overall impressions created
by the marks
bearing in mind their distinctive and dominant components.
Furthermore, if the association between the marks causes
the public
to wrongly believe that the respective goods come from the same or
economically linked undertakings, there is a likelihood
of confusion.
[25]
Applying those considerations to the facts of this case, there can be
little doubt that a likelihood of confusion exists between
the
Defendant's use of the sign or mark COMPASS LOGISTICS in relation to
its business consultancy services and the notional use
of the mark
COMPASS used in relation to business consultancy services, including
those in relation to which the Defendant specialises.
The dominant
part of the Defendant's mark is the word compass. For many customers,
the word logistics would add little of significance
to it. It alludes
to the type of area of consultancy in which the services are carried
out.”’
Harms
DP then continued as follows:
‘
[14]
This means that one has to assume reasonable notional use by a
trademark owner of the name Century City for purposes of providing
services for reserving and maintaining accommodation at apartments.
The appellant's use of Century City Apartments would to my
mind have
given rise to the likelihood of confusion. I therefore conclude that
the appellant's use of its brand name infringed
the mentioned
trademark registration. The same applies to the use of its domain
name. This does not mean that the registration
remained
unimpeachable. I shall revert to this issue.
[15]
I do not agree with the High Court that this conclusion applies to
the appellant's corporate name “Century City Apartments
Property Services CC”. It is in my view materially different
from the trademark Century City. I can do no better than to
refer to
the facts in
10 Royal Berkshire Polo
Club Trade Mark
[2001] RPC 643
esp at
653. The question was whether this mark was confusingly similar to
the well-known Polo mark. The court held that it was
not because it
did not capture the distinctiveness of the trademark owner's mark;
that the message of the mark came from the words
in combination; and
that the word Polo functioned adjectivally in the context of the
applicant's mark. Adjectival use may be distinctive
from the use of a
word as a noun. The same considerations apply too in the present case
to exclude the reasonable possibility of
confusion or deception.’
[21]
The word STAR is a word in common use. Pioneer
uses it in conjunction with the word WHITE to distinguish and
identify its product.
Accepting that it has been successful in doing
this, as is implicit in its claim to reputation, the absence of the
word WHITE would,
in my view, be significant to a customer purchasing
super maize meal. As Bothaville Milling’s trade mark
registration of
the Star label reflects, the word ‘STAR’
and the device of a star as such are common features of marks
registered in
the same class, that is, maize meal, samp and maize
rice.
[22]
There is undoubtedly some visual similarity
between the two get-ups, principally caused by the combination of a
broadly white background
with the symbols and lettering in red and
green. However, the moment a customer saw a package the
dissimilarities would become
obvious. In my view they are
sufficiently apparent and obvious to hold that there is no reasonable
likelihood of confusion between
the two.
[23]
However,
if I had some residual doubt about the position, it would be
dispelled by the fact that there is simply no evidence of
any
confusion in the market place between the two products, in the period
between 2001 and the commencement of proceedings in August
2011.
Although such evidence is not essential to prove a likelihood of
confusion in the market place,
[13]
it can, if it is present, tip the balance in one direction and, if
absent, tip it in the other.
[14]
It is most surprising that after nearly 10 years of competitive
trading, with what are said by Pioneer to be confusingly similar
get-ups, not a single customer or store has reported any
confusion.
[15]
There is not
even someone such as the lone customer who, in one case, was misled
in her purchase of biscuits,
[16]
nor anything resembling the finding of a mix-up of products on the
shelf that occurred in the same case.
[17]
Instead the evidence shows that Bothaville Milling has sold its STAR
product principally to the wholesale market and, at the date
of its
answering affidavit, had 102 clients in 68 different towns, some of
them being large national chains. These wholesalers
have then sold
STAR super maize meal to retail outlets or possibly individual
customers in many parts of the country, but especially
in the Free
State, KwaZulu-Natal and the Eastern Cape. Yet there is no evidence
of a wholesaler being misled, or of a retail customer
complaining
that they had inadvertently purchased STAR when they wanted to buy
WHITE STAR.
[24]
I do not think that this can be attributed to
potential customers being unsophisticated or, as suggested in
argument, to the different
brands of super maize meal, all being
essentially the same. The evidence from Bothaville Milling is that,
even in rural areas,
which is the principal target area at which its
product is aimed, the average purchaser is brand conscious and knows
their preferred
brand and its qualities and is familiar with both its
packaging and its price. This is important, as the evidence is that
STAR
generally retails at a discount of about 15 per cent to the
price of WHITE STAR. The evidence of brand surveys put up by Pioneer
in support of its claim to a reputation shows that maize meal is one
of the most brand loyal products on the South African market.
If that
is correct it militates against there being confusion in the market
place even among relatively unsophisticated consumers,
and consumers
of super maize meal are by no means all unsophisticated. However,
many of them are of limited means and are accordingly
careful about
how they spend their money especially on a staple element of their
diet. They are more likely to take added care
to ensure that they
purchase the product they know and like.
[25]
Nor does it lie in Pioneer’s mouth to claim
that the two products are essentially the same and that consumers
cannot tell
the difference between them. It chose to annex to its
founding affidavit marketing material in which it claimed that WHITE
STAR
is easy to cook, keeps the eater feeling full for longer without
being heavy or forming lumps, and is always soft and fluffy. A
brand
survey published in a widely published newspaper, on which it relied,
claimed that consumers preferred its product because
of its colour,
texture, quality and flavour. The most important factor in selling
maize meal was said to be its taste. WHITE STAR
has been marketed by
Pioneer as being of unrivalled quality according to the founding
affidavit and the brand surveys on which
it placed reliance to
establish its reputation. I can see no reason why it should not be
held to those claims and to their logical
corollary that consumers
will be able to detect if they are eating something other than their
preferred brand and, if this occurs
as a result of misrepresentation,
some at least of them, are likely to take this up with their retail
supplier. If that occurred
I have little doubt that this would filter
back to Pioneer through its sales representatives.
[26]
In these situations it is commonplace for parties
who fear that passing off is taking place to send agents to suppliers
to make
test purchases and see if they can detect cases of confusion.
That was not, so far as we are aware, done in this case. Another
method for detecting confusion is to undertake properly constructed
consumer surveys. Again that has not been done. Nor, although
Pioneer
complained that STAR was making inroads into its markets in
KwaZulu-Natal and the Eastern Cape, was any information forthcoming
about the basis for these claims or investigations undertaken to
ascertain why this was happening. The end result is that there
is a
complete absence of any evidence that in some 10 years of competitive
trading (8 if one takes the 2003 date as being the relevant
one)
incidents of confusion have occurred. That strongly reinforces my
impression from an examination of the different get-ups
as they
appear on the packaging of these products that they are not
confusingly similar.
[27]
In the circumstances the court below was correct to hold that Pioneer
failed to make out a case of passing off and in dismissing
the
application for an interdict. The appeal is dismissed with costs,
such costs to include those consequent upon the employment
of two
counsel.
M
J D WALLIS
JUDGE
OF APPEAL
Appearances
For
appellant: A R Sholto-Douglas SC (with him B J
Vaughan)
Instructed
by:
Werksmans
Attorneys, Stellenbosch
Webbers,
Bloemfontein
For
respondent: C E Puckrin SC (with him L G Kilmartin)
Instructed
by:
Adams
& Adams, Pretoria
Honey
Attorneys, Bloemfontein.
[1]
The photographs in
the record reveal that this latter slogan has undergone some
variation over the years. Initially it included
the words ‘Vitamin
enriched’ or ‘
The
First with Vitamin A’ but
in
2008/2009 it became ‘Move to the taste’ or ‘Move
to the energy’, with the reference to vitamin A being
removed.
[2]
In an earlier
iteration of the STAR package the colours of the printed words were
the reverse of those described above.
[3]
Capital
Estate and General Agencies (Pty) Ltd & others v Holiday Inns
Inc. & others
1977
(2) SA 916
(A) at 929B-D.
[4]
Caterham
Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd & another
[1998] ZASCA 44
;
1998
(3) SA 938
(SCA) paras 13 and15 and 16 (hereafter
Caterham
).
[5]
Caterham
para
22.
[6]
The packaging
depicted in the record for the NALEDI product shows two rectangular
blocks in red, above and below the words NALEDI
and STAR, containing
in white block capital letters the description ‘Special Maize
Meal’. The picture incorporated
in this judgment shows, that
was changed to ‘Super Maize Meal’ in green block
capitals and the rectangular block
was removed. There is nothing in
the papers concerning this change, although special maize meal and
super maize meal are by law
different products.
[7]
Premier Trading
Co (Pty) Ltd & another v Sporttopia (Pty) Ltd
2000
(3) SA 259
(SCA) at 266I-J and 267B-C.
[8]
The exercise is
similar to that undertaken in respect of trade marks as described by
Corbett JA in
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984
(3) SA 623
(A) at 640G-641E.
[9]
Premier Trading
Co (Pty) Ltd & another v Sporttopia (Pty) Ltd
,
supra, at 270H.
[10]
Reckitt
& Colman SA (Pty) Ltd v SC Johnson & Son SA (Pty) Ltd
1993
(2) SA 307
(A) at 317C.
[11]
Online Lottery
Services (Pty) Ltd & others v National Lotteries Board &
others
2010
(5) SA 349
(SCA) para 37.
[12]
Century
City Apartments Property Services CC & another v Century City
Property Owners' Association
2010
(3) SA 1
(SCA) paras 13 to 15.
[13]
Royal
Beech-Nut (Pty) Ltd t/a Manhattan Confectioners v United Tobacco Co
Ltd t/a Willards Foods
[1992] ZASCA 113
;
1992
(4) SA 118
(A) at 126E-F.
[14]
Greenblatt v
Hirschon
1958
(4) SA 371
(A) at 376D.
[15]
Adcock-Ingram
Products Ltd v Beecham SA (Pty) Ltd
1977
(4) SA 434
(W) at 439E-H.
[16]
Blue
Lion Manufacturing (Pty) Ltd v National Brands Ltd
2001
(3) SA 884
(SCA) para 9.
[17]
Para 8.