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[2018] ZAGPJHC 473
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Sugarless Company (Pty) Ltd v Quad Africa Energy (Pty) Ltd (25802/2018) [2018] ZAGPJHC 473; 2018 BIP 287 (GJ) (25 August 2018)
Links to summary
REPUBLIC
OF SOUTH AFRICA
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
LOCAL DIVISION, JOHANNESBURG
CASE
NO:
25802/2018
In
the matter between:
The
Sugarless Company (Pty)
LTD Applicant
and
Quad
Africa Energy (Pty)
LTD
Respondent
Judgment
Summary
Trade
and trade mark – applicant being registered proprietor of trade
mark “S.Sugarless” – respondent distributing
product in same class under mark “S.Sugarlean” –
held to be “so nearly resembling it as to be likely to
deceive
or cause confusion” under
s.34(1)(a)
of the
Trade Marks Act 194
of 1993
.
Further,
as to argument that word “sugarless” merely descriptive
adjective, incapable of justifying registration –
held
“S.Sugarless” trade mark as a whole more distinctive than
descriptive.
Copyright
–
Copyright Act 98 of 1978
– applicant held to have
copyright in “S.Sugarless” logo, and in artwork of
package in which product distributed
– respondent held to have
infringed copyright in both by reproducing and adapting the original
works, and distributing the
infringing products for sale.
Passing
off – respondent’s getup held to have been designed to
pass off its product as that of the applicant.
Relief
granted in terms of
Trade Marks Act, Copyright
Act, common law, and
Counterfeit Goods Act 37 of 1997
.
Van
der Linde, J
:
Introduction
[1]
This application comes on the urgent roll for amongst others final
alternatively interim interdicts by one competitor in the
retail
confectionery market against another. The urgency lies in the
respondent’s persistent unlawful conduct, so the
applicant
contends, and this causes attrition of custom and so damages on an
on-going basis. Unless the interdictory relief is
granted, the
respondent will persist and the attrition will continue; undertakings
it had previously given to desist have been
breached. Substantial
redress at a hearing in the normal course is not a realistic
prospect, and the application was heard as one
of urgency.
[2]
The parties were previously in contractual privy. The applicant’s
business is driven from Adelaide in Australia, and the
respondent
used to be its exclusive local distributor. Their contract has been
terminated. Soon thereafter the respondent began
competing, literally
cheek by jowl on retail shelves, with the applicant. The product was
substantially the same, and so too, as
will appear below, at least
initially, the packaging.
[3]
The applicant says that the respondent’s conduct is unlawful on
four fronts: it infringes the applicant’s registered
trademark,
it infringes its copyright, its passes off its product as the
applicant’s product, and it constitutes the delict
of unlawful
competition. The applicant asks for appropriate declaratory relief
and following on that, both statutory relief (delivery-up
and
destruction) in terms of the Trade Marks Act 194 of 1993 (“TMA”),
the Copyright Act 98 of 1978 (“CRA”)
and the Counterfeit
Goods Act 37 of 1997 (“CGA”); and common law interdictory
relief.
The
applicant’s case
[4]
The applicant is wholly owned by Mr Vasseur, its creator and sole
director. He conceived of the concept for the business in
1992, and
has in the years since established operations in 13 countries. Apart
from those specific countries, the applicant distributes
into South
America, Western Europe, the Middle East, and the Far East.
[5]
The applicant’s product targets consumers of sugar free or low
sugar confectionery. The catalogue included in the founding
papers
reflects, in colour, a product range that includes candy, sweets,
chocolate, biscuits, jellies and liquorice. In all instances
the
product is enclosed in packaging that presents a particular image,
usually of colourful representations of the contents against
a
prominent black background.
[6]
The packaging image includes, in a prominent position, a logo
comprising in large bold font the letter “S” tightly
within a circle, and immediately beneath it, in stark white, the word
“SUGARLESS” in smaller font and in bold caps.
Underneath
this word appears the word “Confectionery” also in caps
but not bold and in yet smaller font.
[7]
The applicant explains that it created the concept and it procured
the execution of the S.Sugarless logo, of the packaging
specification, of the packaging artwork and consequently of the
getup. It accordingly owns the copyright in the S.Sugarless logo
as
well as in what it calls “the packaging architecture.” It
owns too the confidential information that went into making
up the
packaging specification and artwork and, given the applicant’s
established commercial reputation, the entire product
getup.
[8]
Also, it caused the local
registration of the S.Sugarless logo as a trademark in class 30
(various forms of confectionery) with
effect from 16 September 2015,
thereby underscoring its identity as progenitor of the logo.
[1]
As has often been said, the purpose of such a registration of a trade
mark is to establish a “badge of origin.”
[2]
[9]
The applicant contends that the respondent breached these rights.
This came about as follows. The parties’ distribution
agreement
was terminated on 23 May 2018. About a week before this the applicant
established that the respondent was distributing
competing product in
the same retail outlets as the applicant. In some instances the
respondent’s product was displayed in
the applicant’s
display stands, together with the applicant’s product. The
product that the respondent was distributing
was in the same class
for which the applicant’s trade mark was registered and to
which the applicant’s product belonged,
meaning a variety of
forms of confectionery, including candy, sweets, chocolate and
jellies.
[10]
Photographs of the packaging in which the respondent’s product
was distributed are included in the papers. The size,
material and
prominent black background of the packaging appears identical to that
of the applicant’s product. The packaging
also presents with
colourful representations of the contents, and includes, in the same
prominent position, a logo comprising the
letter “S”
inverted, but not within a circle, and immediately beneath it, also
in stark white, the word “SUGARLEAN”
in caps. The
inverted “S” was written over a soft representation of
the infinity symbol. Examples appear at Annexure
JJ22 p 235 to J24.7
p246. The applicant referred to this offending packaging as “the
first packaging” in its affidavits
and also in its notice of
motion. I will refer to it simply as “the first packaging”.
[11]
The applicant demanded that the respondent cease this conduct.
Correspondence between attorneys followed. In the course of
the
exchanges the respondent undertook to cease using the offending
packaging and to destroy or deliver up its existing stock of
the
packaging and the artwork for it; and undertook not to infringe the
S.Sugarless logo.
[12]
But the respondent joined issue on the following: it refused to
deliver up any of its packaging containing product; it refused
to
give any undertaking in relation to the words “sugarless”
and “sugarless confectionery”; it denied that
the
applicant owned copyright in the packaging artwork; and it denied the
validity of the applicant’s trade mark.
[13]
The applicant says the respondent failed to adhere to the
undertakings it gave, because it turned out that around 29 June 2018
the respondent continued distributing product in packaging with only
slightly adapted artwork. The adaption was that either a top
or a
bottom oblique section of roughly one third of the packaging face now
had a purple as opposed to a black background. The adapted
packaging
still presented with mainly a black background, although less
prominent; but it still presented with a prominent inverted
“S”
and “Sugarlean” logo. Examples appear at Annexure JJ34, p
337 to p342. The applicant argues that
this new packaging still
offends all of the rights for which it contends. This packaging is
referred to as the “new packaging”
but I will refer to it
simply as “the new packaging”.
The
respondent’s case
[14]
The respondent says that it changed its packaging from the first
packaging to the new packaging on 23 May 2018 before any complaint
had been received. It accepts that the new packaging initially
retained the applicant’s logo, but says that this was changed
on 21 June 2018, before demands were made concerning the applicant’s
logo, by dropping the inverted “S”. It retained
the
infinity symbol.
[15]
It therefore now distributes product in packaging that does not have
a wholly black background, has no prominent “S”
resembling the applicant’s logo, inverted or otherwise, but
still presents in caps the word “SUGARLEAN” as it
is
entitled to do. Examples appear at Annexure BB7, p629 to p634. I will
refer to the packaging with this logo as the respondent’s
“future packaging”.
[16]
The respondent says it has no intention of using the Sugarlean logo
with the “S” in the future, but it will take
some two
months before the respondent’s new logo, the respondent’s
future packaging, will be available for all of its
lines. The
implication is that in the meantime it will continue to use its logo
cum “S”, as in the new packaging. For
the rest, it
formally undertakes never again to use the first packaging, and to
deliver up its unused copies, nor will it use the
applicant’s
trade mark registration in any manner.
[17]
As far as it is concerned only three issues remain: whether the
respondent’s use for the two months of the “S.Sugarlean”
logo, the first packaging, would be unlawful; whether the
distribution of the respondent’s adapted packaging with the
“Sugarlean”
logo sans “S”, i.e. the new
packaging, is unlawful; and the respondent’s counter-claim.
This is essentially for
a disclaimer to be endorsed on the
applicant’s trade mark that the applicant acquires no right to
the exclusive use of the
word “sugarless” separately from
the trade mark. The basis not only for the counter-claim but also for
resisting the
imputation of unlawful conduct is that the word
“sugarless” is not distinguishing of the product but
instead descriptive
of it.
Subsequent
events
[18]
In his replying affidavit of 23 July 2018 Mr Vasseur asserts that the
respondent is still distributing its original, pre-adapted
packaging
(cum “S”, the first packaging) in the market despite its
undertaking to cease doing so after 30 June 2018.
He refers to his
founding affidavit which relies on distribution of the first
packaging up to 10 July 2018. Also, on 20 July 2018
the respondent’s
delivery vehicle was still painted in the applicant’s full
registered mark, showing that the respondent
was continuing to use
the applicant’s trade mark.
Factual
conflicts
[19]
The field of factual conflicts that are relevant for the purposes of
this application is narrow. It suffices to say that the
applicant’s
case about the respondent not adhering to its undertakings cannot be
answered, particularly not in the face of
the blatant and brash way
in which the respondent continued to display the applicant’s
trade mark on its delivery vehicle.
[20]
I also do not accept that the respondent’s deponent’s
protestations of ignorance concerning intellectual property
hold up
in view of the explicit contents of the correspondence by the
applicant’s attorneys. These issues do not however
answer the
central legal points, and to them I now turn.
Discussion:
trade mark infringement
[21]
The applicant’s primary case, that reliant on its trade mark,
founds on s.34(1)(a) of the TMA, and the discussion starts
here. In
terms of that section of the TMA the rights acquired by registration
of a trade mark are infringed by the unauthorised
use, in the course
of trade in relation to goods or services in respect of which the
mark is registered, “…
of an identical mark or of a
mark so nearly resembling it as to be likely to deceive or cause
confusion.”
It is the quoted portion that is in dispute.
Has the respondent used such a mark?
[22]
It is necessary to begin by acknowledging what it is that
registration of a trade mark protects. This is necessary because
the
impression may exist that trade mark registration confers upon the
proprietor the right to prevent all others from mere user
of that
mark. Such an impression would be incorrect.
[23]
The protection that
registration of a trade mark does afford is to secure for the
proprietor of the mark a message that the mark
conveys to consumers,
being that a product identified by the mark originates from the
proprietor of the mark.
[3]
Conversely, the registration of a trade mark shields the owner
against conduct of a third party whereby the latter uses the mark
on
its own product in such a way that the mark conveys to consumers that
that product originates from
[4]
the proprietor of the registered trade mark. As an aside, the
affinity with the common law delict of passing-off is immediately
apparent,
[5]
although in the case of the latter it is the entire getup of the two
protagonists that is compared, and not simply and exclusively
the two
trade marks.
[24]
The implication of the above is that where a third party uses a
registered trade mark of another, not to suggest to consumers
that
its own product emanates from the owner of the registered trade mark
but simply for descriptive purposes, no misleading impression
will be
created; as has been said:
“
If the use creates an
impression of a material link between the product and the owner of
the mark there is infringement; otherwise
there is not. The use of a
mark for purely descriptive purposes will not create that impression
but it is also clear that this
is not necessarily the definitive
test”
.
[6]
[25]
The badge of origin notion has implications that are pertinent for
this case. First, there can only be actionable infringement
if the
offending mark suggests to consumers that the product of the alleged
infringer originates from the owner of the registered
mark. This is
an objective test. One compares the two marks, and views them through
the lens of the notional consumer of that product.
[26]
If the offending mark is in fact identical to the registered mark,
self-evidently the test is inapplicable; the infringement
proclaims
itself. If the two marks are not identical, the extent of their
similarity will be important when the comparison is undertaken,
because the greater the similarity, the more likely consumers will be
deceived or confused.
[27]
The second implication that flows from the badge of origin notion is
that if the offending mark, even if it is a close resemblance
to the
registered mark, conveys no more but a description of the product on
which the offending mark is placed, there is no infringement.
The
descriptive quality of a mark therefor features in two sides of the
same coin in trade mark infringements: it features
in the
context of the registered mark, in that it founds a cause for
expungement, or a defence to alleged infringement, on the
basis that
a merely descriptive mark can by definition not be a distinctive
mark. And it features in the context of the offending
mark, in that
it founds a defence that the offending mark is merely descriptive of
its own product and does not misleadingly convey
that that product
emanates from the owner of the registered mark.
[28]
Turning then to the facts of the applicant’s case for
infringement by the respondent: the respondent certainly emblazoned
the applicant’s trade mark on its delivery vehicle as recently
as 10 July 2018. That conduct was a clear infringement of
the
applicant’s registered mark by the use of an identical mark,
subject only the respondent’s argument – dealt
with below
- that “sugarless” is merely descriptive and not
distinctive of the product.
[29]
Less identical was the
respondent’s first packaging, cum inverted “S”
above “Sugarlean” against the
prominent black background,
and the question may now be asked pertinently: was this mark so
similar to the applicant’s registered
mark as to be “…
likely to deceive or cause
confusion …”
among
customers in that market? In Plascon- Evans Paints v Van Riebeeck
Paints (Pty) Ltd
[7]
the Appellate Division (then) wrote in relation to similarity:
“
The determination of these
questions involves essentially a comparison between the mark used by
the defendant and the registered
mark and, having regard to the
similarities and differences in the two marks, an assessment of the
impact which the defendant’s
mark would make upon the average
type of customer who would be likely to purchase the kind of goods to
which the marks are applied.
This notional customer must be conceived
of as a person of average intelligence, having proper eyesight and
buying with ordinary
caution. The comparison must be made with
reference to the sense, sound and appearance of the marks.”
[30]
The same court later, in Bata
Ltd v Face Fashion CC and Another,
[8]
adopted the European approach that the likelihood of confusion must
be appreciated globally, and that the “…
global
appreciation of the visual, aural or conceptual similarity of the
marks in question must be based on the overall impression
given by
the marks, bearing in mind, in particular, their distinctive and
dominant components.”
In Cowbell AG v ICS Holdings Ltd,
[9]
that court applied that approach by considering in turn each of the
visual, aural and conceptual similarities. It is proposed to
follow
that approach here.
[31]
The visual similarity between the registered mark and the
respondent's first packaging is striking. The features that aggregate
to this conclusion are the contrast established by the stark white
lettering in caps of "SUGARLESS" and "SUGARLEAN"
against a black background; the close grammatical affinity between
"sugarless" and "sugarlean"; and the prominent
"S" triangularly positioned immediately above the central
word (despite the fact that the "S" is inverted in
the
respondent's mark). The visually dominant components in both are the
“S” as pinnacle of the triangle, and the capped
"SUGARLESS" and "SUGARLEAN".
[32]
I accept that customers in the sugar free confectionery market are
astute to read labels, and so an inquisitive first time
buyer may
spot the difference between the two marks reflected at say annexure
JJ22, p235. But the busy shopper on the lookout for
the “S.
SUGARLESS” product is not likely to spot the difference in the
two marks in say annexure JJ24, p239, given
the visual similarity
referred to in the previous paragraph.
[33]
Aurally, the dominant components’ sounds are also similar; it
is only at the tail of the articulation of the two words
that the
difference between the last two letters, “sugarle
an
”
and “sugarle
ss
”, may be noticed. And
conceptually the marks are close to being identical, both signifying
as they do the complete absence
of, or very little, sugar in the
product to which the respective marks relate.
[34]
It follows that in my view the respondent’s first packaging,
illustrated at annexures JJ22 p235 to JJ24.7 p246, represents
a
potential infringement by the respondent of the applicant’s
trade mark, subject again to the issue of the descriptive/distinctive
meaning of the word “sugarless”.
[35]
As to the respondent’s new packaging, it will be recalled that
a section of either the top or bottom part of the respondent’s
packaging was adapted to present no longer in black, but in purple;
annexure JJ34 p337 ff. The respondent’s S.Sugarlean logo
mark
was not adapted however, and the remarks made above relating to the
similarity between the S.Sugarlean logo on the respondent’s
first packaging and the applicant’s registered mark, apply
equally to the similarity between the S.Sugarlean logo on the
respondent’s new packaging and the applicant’s registered
mark. That rendition of the respondent’s mark accordingly
also
represents a potential infringement of the applicant’s trade
mark, subject to the descriptive/distinctive issue.
[36]
On the respondent’s future packaging the inverted “S”
disappeared. The word “SUGARLEAN” remained
presented on a
black island, just as “SUGARLESS” appears in the
applicant’s registered mark at annexure JJ10,
p156. An example
of the future packaging, sans inverted “S” thus leaving
only “SUGARLEAN” on its black
island, appears as annexure
BB7, p629. The applicant still argues for potential deception or
confusion in the case of the future
packaging, given the aural
similarity in “SUGARLESS” and “SUGARLEAN” and
the contrast established by their
similar stark white font in caps
against the black background.
[37]
The visual similarity between the applicant’s registered mark
and the respondent's offending mark on its future packaging
is
clearly less prominent. Gone is the dominant inverted “S”
and with it particularly the triangular formation of which
the
inverted “S” formed the pinnacle. But the stark white
lettering in caps of "SUGARLESS" and "SUGARLEAN"
still appear against a black background, and the close grammatical
affinity between "sugarle
ss
" and "sugarle
an
"
is still present. The aural and conceptual similarity is also still
there.
[38]
Still, in my view the disappearance of the dominant inverted “S”
has removed the likelihood of deception or confusion,
and accordingly
the mere user of the “Sugarlean” mark on the right-hand
side of annexure BB7 p629 in landscape does
not infringe the
applicant’s registered trade mark. Whether this finding clears
the way for the respondent to distribute
its product in the getup
reflected at annexure BB7 p629 ff is a matter addressed below in the
context of passing-off.
Distinctive/descriptive
[39]
I consider now the respondent’s central argument, one that was
presented on the basis that it cuts through the applicant’s
trade mark case, and indeed all its cases, at every level of fact,
being the distinctive/descriptive point. At the level of principle
it
may be said that these concepts are mutually inverted: the more
descriptive the mark is, the less distinctive it becomes, and
so the
less worthy of trade mark protection; and vice versa.
[40]
It was against this background that the respondent argued that
“sugarless” merely qualified the product, and did
not
distinguish it. In advancing that proposition the respondent was able
to ignore the obvious description of the words “sugar
free”
that appear in bold black font on a green strip lower down on the
packaging at say annexure JJ22, p235, because that
is not part of the
trade mark.
[41]
The first aspect to consider is the applicant’s
in limine
riposte, that the respondent cannot advance its proposition without
evidence, and certainly not by simply relying on American,
not South
African, English dictionaries.
[42]
As noted above, the sentinel
question is how the relevant consumer would have understood the word
“sugarless” in the
context of the mark as a whole. I
accept that evidence would be admissible to prove this, particularly
where the word is not commonly
used in in everyday discourse. After
all, one is not concerned with the legal interpretation of a contract
or statute, where the
object is generally to establish the standard
ordinary grammatical meaning of words. One is concerned,
decisively,
[10]
with what may be considered as the opposite perspective; that of only
a parochial group of persons and their comprehension of the
mark -
including its words, if it has any. And that conclusion is a factual
one for the court to reach; expert evidence is inadmissible.
[43]
Dictionaries are not irrelevant
in this endeavour; in fact they are used.
[11]
And as it happens, the word “sugarless” appears in
reputable dictionaries used locally. The Concise Oxford Dictionary,
tenth Ed, revised, describes it as an adjective, a derivative of
“sugar”. The same treatment is evident from The South
African Concise Oxford Dictionary, and The Shorter Oxford English
Dictionary, third Ed. Does it follow that the applicant’s
registered trade mark is not distinctive but instead merely
descriptive of the confectionary? In my view not, for the reasons
that follow.
[44]
First, visually, “sugarless”
is not the whole registered trade mark, but only a component part of
it. Granted, it has
undeniable prominence in the mark, and it happens
to appear right above the noun “confectionary”. But it is
integrated
with the encircled and larger, more prominent, “S”
pinnacled above it, with the multi-colouring of the circle, and with
the starkness of the contrast between the white lettering and the
black island on which it sits. The triangular format of the mark’s
presentation, with the prominent “S” and the coloured
circle within which it fits are, as I see it, “fancy devices”
of the ilk referred to in Die Bergkelder Bpk v Vredendal Koöp
Wynmakery and Others.
[12]
Marks containing such devices are usually taken as “
put
on the goods to tell you who made them.”
[45]
Second, the trade mark is thus not a text-only word mark; the word
“sugarless” is part of a mark which has, as
pointed out,
added qualities that are distinguishing. The entire mark is what
represents the badge (of origin), not simply the
word “sugarless.”
[46]
Third, the correct context within which the issue of the descriptive
nature of the word “sugarless” must be understood,
is the
requirement in s.9 of the TMA (emphasis supplied):
“
9. Registrable
trade marks.—(1) In order to be registrable, a trade mark
shall
be capable of distinguishing
the goods or services of a
person in respect of which it is registered or proposed to be
registered from the goods or services
of another person either
generally or, where the trade mark is registered or proposed to be
registered subject to limitations,
in relation to use within those
limitations.
(2) A mark shall be considered
to be capable of distinguishing within the meaning of subsection (1)
if, at the date of application
for registration,
it is inherently
capable of so distinguishing or it is capable of distinguishing by
reason of prior use thereof.
”
[47]
So the correct enquiry is then not whether as an adjective
“sugarless” could ever be more than descriptive, but
rather whether the mark viewed as an integrated whole, with its
adjective included, is inherently capable of distinguishing the
applicant’s product.
[48]
In my view the mark has that capacity, given the features that have
been described in this judgment, plus the following added
consideration. It is not self-evident at all that “sugarless”
as used in the mark was designed solely to fulfil an
adjectival
function relative to “confectionary.” Its font
predominates over that of “confectionary”, both
in its
bold form and in its size, and “confectionary” is really
relatively obscure. If not designed solely to that
end, the word
“sugarless” is therefore at least capable also of
performing the function of identifier of origin of
the product, in
addition to qualifier of “confectionary”.
Passing-off
[49]
It follows that the applicant’s trade mark case in respect of
the S.Sugarlean logo as appears on the first and the new
packaging,
but not the future packaging, has been established. If I am wrong, I
believe the applicant’s case for passing-off
has in any event
been established.
[50]
The common law delict of
passing-off is established when the defendant passes off its product
as that of the plaintiff. As was said
by Corbett, CJ in Williams t/a
Jenifer Williams & Associates and Another v Life Line Southern
Transvaal:
[13]
“
Such conduct is treated by
the law as being wrongful because it results, or is calculated to
result, in the improper filching of
another's trade and/or in an
improper infringement of his goodwill and/or in causing injury to
that other's trade reputation. Such
a representation may be made
impliedly by A adopting a trade name or a get up or mark for his
goods which so resembles B's
name or get up or mark as to lead
the public to be confused or to be deceived into thinking that A's
goods or services emanate
from B or that there is the association
between them referred to above. Thus, in order to succeed in a
passing-off action based
upon an implied representation it is
generally incumbent upon the plaintiff to establish, inter alia:
firstly, that the name, get up
or mark used by him has become
distinctive of his goods or services, in the sense that the public
associate the name, get up
or mark with the goods or services
marketed by him (this is often referred to as the acquisition of
reputation); and, secondly,
that the name, get up or mark used
by the defendant is such or is so used as to cause the public to be
confused or deceived
in the manner described above.”
[51]
So far as concerns reputation,
the applicant’s case is set out in some detail in the founding
affidavit.
[14]
I do not agree that the deponent’s say-so is insufficient, as
was submitted on behalf of the respondent, and that further
corroborating evidence was required. Mr Vasseur is not only the sole
shareholder and director of the applicant’s business,
but also
its progenitor. It is inherently probable that he has reliable
knowledge of the facts to which he deposed.
[52]
So far as concerns deception or confusion, the photographic evidence
of the packaging already referred to in this judgment
sustains, in my
view, the applicant’s case against the respondent’s first
and new packaging. Apart from the trade mark
infringement already
discussed, the similarity in size, prominent background black colour,
and the images used, particularly in
the first packaging, is evident
from the photographs. The slight adaptation of the new packaging, by
inserting an oblique purple
background on the top or bottom of the
packaging, does not changes this conclusion. If anything, it served
to underscore the offending
logo and its similarity with the
applicant’s mark.
[53]
As regards the future packaging, in respect of which I concluded that
the respondent’s mark does not deceive or confuse
in relation
to the applicant’s mark, the photograph at p631 still
evidences, in my view, the strong similarity in the overall
impression created by the two packages.
[54]
It is a matter for comment that the respondent does not make it clear
why it is essential for its business to continue to rely
so heavily
on the likeness with the applicant’s packaging. Having regard
to the clear similarity with the applicant’s
getup so evident
in the respondent’s first and new packaging, the inference is
unavoidable that the respondent still now
seeks the lift of the
springboard created by those first two offerings.
Copyright
[50]
The applicant’s case for copyright infringement in terms of
s.23(1) as read with s. 6 and 7 of the CRA founds on the
reproduction
of the S.Sugarless logo in the S.Sugarlean logo. The distribution and
sale of Sugarlean products bearing the infringing
S.Sugarlean logo,
founds an infringement of s.23(2) of the CRA. And the respondent’s
packaging is said to constitute a reproduction
of the artwork of the
applicant’s packaging, also establishing copyright infringement
in terms of s.23(1) as read with s.
6 and 7 of the CRA.
[15]
[51]
S.23(1) of the CRA provides that copyright is infringed by a person
who without the license of the owner does “
any act
”
which the owner has the exclusive right to do. S.23(2) of the
CRA provides that copyright is infringed when the infringer
sells or
distributes any article for the purpose of trade to such an extent
that the owner of the copyright is prejudicially affected,
“…
if to his knowledge the making of that article constituted an
infringement of that copyright or would have constituted such an
infringement
if the article had been made in the Republic
”.
[55]
The assertion in the founding affidavit is that the respondent must
reasonably have known that copyright subsisted in the artworks
of the
packaging since the artworks and specifications for the packaging
were usually provided to the respondent, while it was
still the
distributor of the applicant, by designers employed by the
applicant. Further, the artwork bore the following notice
as
part of the design: “
Formulated and designed by the
Sugarless co-©2014
”. Finally attention is drawn to the
fact that in the applicant’s attorneys’ letter of 23 May
2018 the respondent
was expressly alerted to the copyright subsisting
in the artworks.
[52]
The answering affidavit deals with these assertions at page 437
paragraph 72 and following. In regard to the assertion
that the
respondent reproduced or adapted or caused to be reproduced or
adapted the S.Sugarless logo without the authorisation
of the
applicant, the respondent says that it is a matter for argument.
Concerning the substantive assertions and claims
to copyright and
copyright infringement, the respondent says that none of the
packaging “…
can ever be said to constitute a
copyright infringement
”, and therefore cannot be
interdicted.
[53]
The issue is therefore whether the applicant’s case that the
S.Sugarless logo, and the artwork on the packaging reflected
at
annexure JJ22 page 235 and following, found copyright in terms of the
CRA, is valid. This entails, to start off with, proving
that the work
(the logo and the artwork) is original; is “
artistic
”
as referred to in s.2(1) of the CRA read with the definition in
s.1(1); has been reduced to material form; has been conferred
on the
work by virtue of the nationality, domicile or residence of the
author; and that the term of copyright has not expired.
Once
copyright has been established, the applicant must then prove its
ownership of this copyright, as envisaged in s. 24(1) of
the CRA.
[56]
The applicant contends, on the strength of the affidavit of Ms
Townsend, that it has established that copyright subsists in
the
S.Sugarless logo. In her affidavit at page 165 paragraph 27, Townsend
confirms, having set out the background to the creation
of the
applicant’s logo, that she created it and that it was not
copied from anywhere, and that it is entirely the result
of her own
independent original effort, judgment and labour.
[57]
The applicant submits that the S.Sugarless logo is an artistic or at
least an artistic cum literary work, in that it consists
of amongst
other things “
drawings
” as envisaged in s.1(1) of
the CRA. That the S.Sugarless logo has been reduced to material
form is evident from the
photographs attached to the founding
affidavit, amongst others those at annexure JJ22 page 235 and
following.
[58]
The provenance of the logo is explained. It was first created
in 1992 and adapted to its current form in 1999; this background
is
fully explained in the affidavit of Townsend at page 163 paragraph 21
and following. She was the author of the works and
an
Australian citizen and resident. That country is covered by the
Government Notice 136 of 1989 issued by the Minister of
Economic
Affairs and Tourism in terms of s.37 of the CRA, whereby the
provisions of the CRA apply to literary or artistic works
created in
Australia as they apply to literary or artistic works created in
South Africa; and to citizens and residents of Australia
as they
apply to citizens and residents of South Africa. Ms Townsend,
the author of the logo, is still alive and so the term
of the
copyright has not expired as provided in s.3(2)(a) of the CRA.
[59]
The applicant contends that became the owner of the copyright
subsisting in the logo: Ms Townsend created the logo in the course
of
her employment with Value Added Design (Pty) Ltd, and accordingly
that company would have been the first owner of the copyright.
The applicant and that company agreed that the applicant would own
the copyright.
[60]
The infringement of the applicant’s copyright in its logo is
said to be established by the degree of similarity that
exists
between the original work and the respondent’s logo as
reflected on all of the first, new and future packaging.
It is
contended that the original or substantial features of the logo
remain recognisable in those offerings.
[61]
The comparison between the S.Sugarless logo and the S.Sugarlean logo
was undertaken above; the prominent “S” pinnacle
in stark
white within the triangle is pertinent. This similarity has been
expanded upon above and it is not necessary to repeat
it here.
[61]1
As regards the artwork in the packaging the applicant contends that
it has established that copyright subsists in that too.
In
particular, the work was created by Mr Vasseur in collaboration with
graphic designers employed by the applicant in the course
of their
employment with the applicant.
[63]
The copyright in the artwork is said to have been infringed by the
first packaging, as is evident from a comparison between
it and the
applicant’s packaging at annexure JJ22 to annexure JJ24.11,
pages 235-250. Reliance is placed on the layout
and design of
the respective packaging which is said to be identical. The
applicant’s contention is that that identity
is not
coincidental but a function of the respondent’s electronic
access to the artwork for the applicant’s packaging,
coupled
with the absence of an explanation for what would otherwise be a
remarkable coincidence.
[64]
The applicant argues that the new packaging remains very similar to
the applicant’s packaging, and that the inferences
for which it
contends in relation to the first packaging are equally valid in
relation to the new packaging.
[65]
As I see it the critical questions to be answered in the copyright
context, is whether the applicant’s S.Sugarless logo
is capable
of forming the subject of copyright; second, whether the applicant’s
artwork on its packaging is similarly capable
of forming the subject
of copyright; and third, whether the future packaging as evident at
annexure BB7 page 6-9 and following
infringes either the applicant’s
copyright in its S.Sugarless logo or in its packaging artwork.
[66]
Concerning the first question, the Law of South Africa 2
nd
edition, Volume 5 Part 2 quotes from
University of London Press
Limited v University Tutorial Press Limited
1916 2 Ch 601
at 608
in which it was said in relation to the term “
literary
work
”:
“
It may be difficult to
define ‘literary work’ as used in this Act, but it seems
to be plain that it is not compliant
to ‘literary work’
in the sense in which that phrase is applied, for instance, to
Meredith’s novels and the writings
of Robert Louis Stevenson.
In speaking of such writings … one thinks of the quality,
the style and the literary finish which they exhibit ….
In my view the words ‘literary work’ cover work which is
expressed in print or writing, irrespective of the question
whether
the quality or style is high. The word ‘literary’
seems to be used in a sense somewhat similar to the
use of the word
‘literature’ in political or electioneering literature
and refers to written or printed matter.
”
[66]
LAWSA continues:
“
Bearing in mind the fact
that the definition expressly extends to works such as Encyclopaedias
and Dictionaries as well as tables
and compilations, including
databases, it is not surprising that the Act does not require special
literary merit for the work to
fall within the definition of
‘literary work’ and that the Act expressly states that
literary quality is not necessary
for a work to qualify as a literary
work.
”
[16]
[67]
In contending for copyright in its S.Sugarless logo, the applicant
contends not that the logo is a “
literary work
”,
but that it is an “
artistic
” work or an “
artistic
cum literary
” work. According to the definition in
the CRA, “
artistic work
” is defined as being
paintings, sculptures, drawings, engravings and photographs; works of
architecture, being either buildings
or models of buildings; or works
of craftsmanship, not falling within either of the first two
descriptions.
[68]
In my view it is a stretch to suggest that the S.Sugarless logo is a
“
literary work
”. At best, in a literary
sense it comprises two words only, and neither of which has been made
up. Is it an “
artistic work
”? The
S.Sugarless logo would after all qualify for a “
drawing
”,
and in turn this includes any drawing of “
a technical nature
or any diagram, map, chart or plan
”.
[69]
LAWSA
[17]
quotes from
Cuisenaire v
Reed
,
1963 VR 719
at 730,
an Australian case concerning the Australian Copyright Act of
1912-1935:
“
The true test, I think, is
whether the author, in making the article … was applying his
skill and taste to its production
with the main object of creating an
article which, even if it be utilitarian, nevertheless will have a
substantial appeal to the
aesthetic tastes of those who observe it.
”
This
notion, that of an appeal to aesthetic tastes, would suggest that the
test is objective, meaning that the eyes of the beholder
ought at
least potentially to be intrigued by the object. But LAWSA suggests
that the test is one of both the intention of the
creator and
objective.
[71]
Turning then to consider the S.Sugarless logo at page 156
objectively, and also the evidence of Ms Townsend at annexure JJ11
page 158, the impression with which one is left is that the creator
was bent both on establishing a utilitarian dimension and one
that
appeals to artistic senses. Ms Townsend says at page 162
paragraphs 15 and following:
“
[15] I
then embarked on researching the competition (mainly by looking at
the confectionary industry) and gathering
information about the
industry to try and develop an image that will not only be new and
different but will also translate across
all platforms and product
ranges necessary.
[16]
Given that these were confectionary products, I wanted to create a
happy, sunny and healthy look
and feel. At the same time, the
company’s products were predominantly lollipops and, as such, I
took inspiration from
the sweets industry rather than the health
industry as the latter was not fashionable at the time.
[17]
Back then, since this was way before digital printing, I had to make
the logo work in one, two
and multiple colours. If the
packaging was only printed in two colours it had to work just as
effectively as in full colour.
[18]
I also had to consider the various kinds of packaging that the logo
may be printed on.
Since there were different colours for
different products and flavours (for instance black and green for
lime or black and hot
pink for strawberries) the logo design also had
to be strong and work effectively on large signage, display material
and exhibitions
as well as tiny signage and in one colour on the back
of a packet.
”
[72]
She concludes at paragraph 20:
“
A
lot of thought, knowledge and experience goes into getting all these
things correct so that the image works properly for the client
as
well as the viewing public or consumer.
”
[73]
It follows that to my mind the applicant’s S.Sugarless logo
qualifies as an “
artistic work
” for the purposes
of the CRA and attracts copyright protection. In view of this
conclusion, and by parity of reasoning, the
question whether the
artwork of which examples appear at annexure JJ22 page 235 and
following is capable of sustaining copyright
protection, is
answered: it does, for reasons that follow.
[74]
The packaging artwork was created by Mr Vasseur in collaboration with
graphic designers, as stated. He says at paragraph
36 of his
founding affidavit:
“
[36] The
applicant’s packaging, as depicted in the master catalogue, was
created by me and Australian graphic
designers employed by the
applicant, approximately four or five years ago, with some of the
more recent products … being
introduced last year, 2017, in
Australia. I am aware that the designers were citizens of
Australia because I knew them personally
and they declared their
Australia citizenship to me when applying to be employed by the
applicant. Two employees, in particular,
assisted in this
regard, Justin Bailey who has since left the applicant’s
employ, and Joseph Rennie. The designers
and I created the
artwork during the course of our employment with the applicant.
[37]
The process followed to create the artwork for the packaging across
all the applicant’s
product ranges and flavours, totalling
about 250 different packets, is largely similar as briefly described
below.
[38]
Having been in the confectionary industry since 1969, I understand
how important the look of
the packaging is to attract custom,
particularly new custom. I have also learnt how particular
colours and designs can indicate
the quality and price of the
products and, so, what will appeal to different markets.
[39]
…
[40]
I also wanted to give the products an air of sophistication and
style. And, most importantly,
the packaging needed to be new and
different and distinctive.
[41]
…
[42]
Black is the colour that came to mind first as a base, background
colour for the packaging when
I thought about sophistication and
distinction. Black also proved to be a successful colour when
marketing the applicant’s
hardboiled aura range back in 2013. A
black background on the packaging also links to the applicant’s
S.Sugarless logo which
has a black background. Black is also
very noticeable and eye-catching. Text and visuals on a black
background are
highly visible. Black also looks stylish and
elegant, particularly when many different product types are displayed
together
(for instance, when displayed on the applicant’s
stands). Black is also an unusual colour to use for food.
[43]
We also decided to use bright eye-catching colours in other elements
of the design to contrast
against the black. The colours were
sometimes inspired by the flavour of the products e.g. yellow for a
lemon flavour or
red for strawberries.
”
[75]
It seems fair to conclude that utility and flair inspired the
creation of the packaging artwork and, on the basis of what has
been
said above, would therefore qualify the artwork for copyright
protection.
[76]
LAWSA
[18]
underscores that the general principle of copyright infringement is
that there should have been copying in one form or another.
What
copyright protects are not concepts or ideas, but the external
manifestation of those. But as was said in the Constitutional
Court
in Laugh It Off Promotions CC v South African Breweries International
(Finance) BV t/a Sabmark International and Another
(Moseneke,
J)(then):
[19]
“
The purpose of copyright and
trade mark laws in an open and democratic society is not to shut out
critical expression or to throttle
artistic and other expressive acts
in a manner that gives way to inordinate brand sway.”
[77]
More recently in Media 24 Books (Pty) Ltd v Oxford University Press
Southern Africa (Pty) Ltd
[20]
the SCA said (Wallis, JA, emphasis supplied):
“
Consequently
it is not necessary for a plaintiff in infringement proceedings to
prove the reproduction of the whole work: it is
sufficient if a
substantial part of the work has been reproduced. To “reproduce”
within the meaning of the Act means
to copy and in order for there to
have been an infringement of the copyright
in an
original work it must be shown (i) that there is sufficient
objective
similarity
between the alleged infringing work and the original work, or a
substantial part thereof, for the former to be properly described,
not necessarily as identical with, but as a reproduction or copy of
the latter; and (ii) that
the
original work was the source from which the alleged infringing work
was derived
,
ie that there is a causal connection between the original work and
the alleged infringing work, the question to be asked being:
has the
defendant copied the plaintiff’s work, or is it an independent
work of his own? (See Francis Day & Hunter Ltd
and Another v Bron
and Another
[1963]
Ch 587
at 618, 623, indirectly referred to with approval by this
Court in the unreported case of Topka v Ehrenberg Engineering (Pty)
Ltd
30 May 1983).’”
[78]
The applicant’s case for infringement of the copyright in the
S.Sugarless logo rests on a comparison between that logo
and the
S.Sugarlean logo, and the contention that the original and
substantial features of the S.Sugarless logo are recognisable
in the
S.Sugarlean logo. It relies too on the background of the
distributorship between the parties, and the holus bolus
availing by
the applicant of the intellectual wherewithal to the respondent to
enable it to cause the packaging, including the
logo, to be
produced.
[21]
[79]
Earlier in this judgment such a comparison between the two logos was
done and it is not necessary to repeat it here.
For the
purposes of CRA infringement, what is required then is a sufficient
degree of similarity between the original work and
the infringing
work. In the case of reproduction or, in the case of an adaptation,
the infringing work should constitute a transformation
of the
original work in such a manner that the original or substantial
features of the original work remain recognisable.
[80]
So far as concerns the first packaging, a comparison between the two
packets of strawberry on exhibit JJ22 page 235 show that
there is
little difference not only between the rendering of the S.Sugarless
logo but, for that matter, also in the rendering of
the packaging
artwork. I return to the packaging artwork below; for now it is
necessary to record that in my view the objective
similarity
requirement is satisfied. That the applicant’s logo was the
source of the respondent’s rendition is overwhelmingly
probable, given the background; and the conclusion must follow that
the first packaging and its rendering of the S.Sugarlean logo
infringe the applicant’s copyright in the S.Sugarless logo.
[81]
The same conclusion applies in respect of the respondent’s
S.Sugarlean logo on the new packaging; their similarities
have been
explained above. The respondent’s rendering of its Sugarlean
logo on the future packaging, that sans the “S”
qualifier, does not in my view infringe the applicant’s
copyright. The similarities are too few to conclude that it is a
reproduction or adaptation of the S.Sugarless logo in such a manner
that its original or substantial features remain recognisable.
Not
only is the “S” gone, but so too the general triangular
presentation, and the “confectionary” below
it.
[82]
As regards the packaging artwork: the strawberries on the package and
their leaves on the respondent’s first packaging
appear to be
if not identical to that of the applicant’s packaging artwork,
then very close to it. Further given the close
similarity, the
applicant’s packaging artwork must have been the source of the
respondent’s rendition, and so the respondent’s
first
packaging infringes the applicant’s copyright in its packaging
artwork.
[83]
The respondent’s new packaging adapted the artwork as reflected
in exhibit JJ34 page 337. There is the introduction of
the purple
colouring, in the one case on the top and in the other case at the
bottom of the packaging. However, despite these
changes in my
view the new infringing packaging does not change that conclusion.
This is evident, I suggest, when one compares
the “
white
chocolate balls
” of the respondent at page 339 with the
“
white chocolate crunch balls
” of the applicant
at, for example, annexure JJ23 page 237. The similarities that
speak are the prominent shiny black
background of the packaging and
the stark white representation of the chocolate balls on the
packaging. The respondent’s
first packaging having been a copy
of the applicant’s artwork, the new packaging seems a clear
derivative of the same original
source.
[84]
As regards the future packaging, that appearing at annexure BB7 page
629, in my view the conclusion remains the same.
A good example
is a comparison between the two packages of the two protagonists at
page 631. The artwork of the applicant
on the right-hand side
in landscape compared with the artwork of the respondent on the
left-hand side predominates with the bright
red colouring of the
strawberries, cherries and mulberries.
[85]
I accept that there may be some instances in which the likeliness is
less prominent but the most prominent feature is the conceptual
template of the artwork; that appears to me to be entirely founded,
so far as the respondent’s artwork is concerned, on the
applicant’s footprint. The progressively stepped adaptations in
the respondent’s packaging artwork as reflected first
in the
first packaging, then in the new packaging, and ultimately in the
future packaging, really provide the footprints back to
their
provenance.
[86]
In these circumstances I conclude that in the case also of the future
packaging a copyright infringement has been shown.
Counterfeit
goods, unlawful competition and appropriate relief
[87]
I have concluded above that the respondent infringed the applicant’s
trade mark by means of the respondent’s S.Sugarlean
logo as
reflected on the first and new packaging. It continues to do so,
because it has been shown to have breached its undertaking
not to do
so. I have also concluded that the respondent’s future
Sugarlean logo does not infringe the applicant’s trade
mark.
[88]
I have concluded too that the respondent unlawfully passes off its
product as that of the applicant, whether it distributes
by means of
its first, new or future packaging. By definition it therefore
continues to act unlawfully in this respect. I have
also concluded
that the respondent infringes the applicant’s copyright in its
S.Sugarless logo by means of the respondent’s
S.Sugarlean logo,
but not by means of its Sugarlean logo without the “S”.
However, since the respondent has been shown
to continue distributing
its product under the S.Sugarlean logo despite its undertakings not
to do so, its unlawful conduct continues.
And I have concluded
that the respondent infringes the applicant’s copyright in its
packaging artwork by means of the
respondent’s first, new, and
future packaging. By definition, its unlawful conduct therefore
continues.
[89]
These conclusions justify relief in terms of prayers 2 and 3
(excluding the Sugarlean logo and the Sugarlean mark from the
definition of “the Infringing Marks”); prayers 4 and 5
(including the respondent’s “future packaging”
as
described in this judgment); prayers 6 and 7 (deleting the first
“and/or” and substituting for it “and”,
and
excluding “or the Sugarlean logo” from the definition of
“the Infringing Works”); prayer 11 (deleting
“for
destruction” in the last line); prayer 12 (deleting “or
the Sugarlean logo” and “for destruction”);
prayer
14; prayer 18; and prayer 19.
[90]
Apart from costs and the issue of policing the substantive parts of
an order as envisaged in prayers 15 and 16, that leaves
the relief
sought in prayers 8, 9, 10, 13 and 17. These relate respectively to
the cause of action based on unlawful competition
in the species of
unfair use of the applicant’s fruit and labour and the misuse
of the applicant’s confidential information;
following upon a
declarator to the above effect, an interdict; a declaration
that the goods in the first and new packaging
are counterfeit; an
order directing the respondent in terms of section 10 of the CGA to
deliver up all the infringing products
whether they are contained in
the first or second infringing packaging packages, to the applicant’s
attorneys for destruction;
and an order in terms of s.10 of the CGA
directing the respondent to disclose the identity of all third
parties that are in the
possession of the artwork and specifications
for the packaging, and the retailers that distribute the
respondent’s
Sugarlean products.
[91]
It seems to me that given the conclusions in this judgment on
passing-off particularly, the declaration sought in prayer 8
reflects
a species of the genus of passing-off; and that it and prayer 9
should consequently be granted.
[92]
Under s.10(1)(a) of the CGA a court may issue an order in relation to
“
counterfeit goods
” that they be delivered up to
the owner of the intellectual property right, the subject-matter of
which has been unlawfully
applied to those goods. To succeed, the
applicant must establish that the respondent has applied to its own
product the subject-matter
of the applicant’s trademark or its
copyright or a colourable imitation of this, so that the infringing
goods of the respondent
are calculated to be confused with or to be
taken to be the protected goods of the applicant. This conduct
of the respondent
has been established given the conclusions to which
I have come in respect of the causes of action discussed above and
the applicant
is entitled to the relief it seeks under this paragraph
as well as under s10(1)(d). That accounts for prayers 10,
13
and 17.
[93]
As regards prayers 15 and 16, it seems to me that the independent IT
expert should be appointed by the applicant’s attorney
and the
respondent’s attorney acting jointly, failing which the
chairperson for the time being of the Johannesburg Bar should
do so,
having received representation from the parties’ attorneys.
Also, the respondent’s attorney or its representative
must be
present at the visit to the respondent’s premises (the
reference to the applicant’s premises is a clear typographical
error); and the three parties, excluding the sheriff of the High
Court, must depose to an affidavit reporting to the court on the
visit and its results.
[94]
The applicant must collect the affidavits and file them with the
court, and the parties must be granted leave to approach the
court on
these papers as amplified for further directions relating to the
execution of the order, should the need arise.
Conclusion
[95]
The respondent’s conduct has been surreptitious and in flagrant
disregard of the applicant’s rights. The bland
denials of the
deponent, coupled with his assertions of innocence, are unconvincing;
the undertakings that were given but breached
show the slip. In my
view the respondent’s version can be rejected on the papers and
final relief in favour of the applicant
is justified, as is a special
costs order. The counter-application does not in my view have merit.
[96]
In the premises I dismiss the counter-application with costs, and
make an order in terms of the following prayers of the applicant’s
notice of motion dated 11 July 2018, amended as adumbrated below:
(a) Prayers 2 and 3 (excluding the
Sugarlean logo and the Sugarlean mark from the definition of “the
Infringing Marks”);
prayers 4 and 5 (including the respondent’s
“future packaging” as defined in this judgment); prayers
6 and 7
(deleting the first “…/or”, and excluding
“or the Sugarlean logo” from the definition of “the
Infringing Works”); prayers 8 and 9; prayer 10; prayer 11
(deleting “for destruction” in the last line); prayer
12
(deleting “or the Sugarlean logo” and “for
destruction”); prayer 13 (deleting “for destruction”);
prayer 14; prayer 17; prayer 18; and prayer 19.
(b) An order issues in terms of prayer
15, subject to the deletion of the words “for destruction”,
to the substitution
of “the Respondent’s premises”
for “the Applicant’s premises”, and to what is set
out in paragraph
(c) below.
(c) (i) The independent IT expert
referred to in prayer 15 must be appointed by the applicant’s
attorney and the respondent’s
attorney acting jointly, failing
which the chairperson for the time being of the Johannesburg Bar
should do so, having received
appropriate representations from the
parties’ attorneys.
(ii) The respondent’s
attorney or its representative is entitled to be present at the visit
to the respondent’s
premises, and the three parties, excluding
the Sheriff of the High Court, must depose to an affidavit reporting
to the court on
the visit and its results.
(iii) The applicant must collect the
affidavits and file them with the court, and absent agreement the
parties are granted leave
to approach the court on these papers as
amplified for further directions relating to the execution of this
order.
(d) Prayer 20.
WHG
van der Linde
Judge,
High Court
Johannesburg
For
the applicant:
Adv. F Southwood
Instructed
by:
Schindlers Attorneys
Applicant’s attorneys
2
nd
Floor, 3 Melrose
Boulevard
Melrose Arch
Tel: (011) 448 9600
Fax: (011) 325 5314
Ref: Mr Van der Merwe
Email:
vandermerwe@shindlers.co.za
For
the respondent:
Adv. R
Michau, SC
Instructed
by:
A J Attorneys
Respondent’s attorneys
1
st
Floor, Unit 15
Eastwood Office Park
11B Riley Road
Bedfordview
Johannesburg
Email:
info@ajstone.co.za
and
abriestone@gmail.com
abrie@ajstone.co.za
and
cara@ajstone.co.za
[1]
Die Bergkelder Bpk v Vredendal Koop Wynmakery [200]
4 All SA 215
(SCA) at [11] per Harms JA.
[2]
Yuppichef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd
[2016] ZASCA 118
(15 September 2018) at [13] per Wallis, JA;
Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd
2007 (6) SA
263
(SCA) at [5] per harms, ADP.
[3]
Verimark at [5].
[4]
Or that there is a “
material
link in trade”
between the third party’s product and the proprietor of the
trade mark; see Verimark at [5].
[5]
Compare Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt &
Co (Pty) Ltd
1976 (1) SA 530
(T) at 535E to 536A per Botha, R (as he
then was).
[6]
Verimark at [7].
[7]
[1984] ZASCA 51
;
1984 (3) SA 623
(A) at p640 in fin to p641 E.
[8]
2001 (1) SA 844
(SCA), at [9].
[9]
2001 (3) SA 941 (SCA)
[10]
Cowbell AG v ICS Holdings Ltd,
2001 (3) SA 941
at 949 D.
[11]
Compare On-line Lottery Services (Pty) Ltd v National Lotteries
Board and Another (536/2008)
[2009] ZASCA 86
;
[2009] 4 All SA 470
(SCA) ;
2010 (5) SA 349
(SCA) (7 September 2009)
[12]
[2006] ZASCA 5
;
2006
(4) SA 275
(SCA) at
[8]
.
[13]
[1996] ZASCA 46
;
1996 (3) SA 408
(A) at 418 B-G
[14]
P14 para 63 ff.
[15]
See generally founding affidavit page 29 paragraph 120 and
following.
[16]
LAWSA,
op cit
,
para 7.
[17]
LAWSA,
op cit
,
para 9.
[18]
Op cit, para 25.
[19]
(CCT42/04)
[2005] ZACC 7
;
2006 (1) SA 144
(CC);
2005 (8) BCLR 743
(CC) (27 May 2005).
[20]
(886/2015)
[2016] ZASCA 119
;
[2016] 4 All SA 311
(SCA);
2017 (2) SA
1
(SCA) (16 September 2016) at [12].
[21]
Founding affidavit, p13 para 58 ff.