Koni Multinational Brands (Pty) Ltd v Beiersdorf AG (553/19) [2021] ZASCA 24; 2021 BIP 15 (SCA) (19 March 2021)

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Koni Multinational Brands (Pty) Ltd v Beiersdorf AG (553/19) [2021] ZASCA 24; 2021 BIP 15 (SCA); [2021] HIPR 162 (SCA) (19 March 2021)

THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Not
reportable
Case No:
553/2019
In
the matter between:
KONI
MULTINATIONAL BRANDS (PTY) LTD
APPELLANT
and
BEIERSDORF
AG
RESPONDENT
Neutral
citation:
Koni
Multinational Brands (Pty) Ltd v Beiersdorf AG
(553/19)
[2021] ZASCA 24
(19 March 2021)
Coram:
CACHALIA,
MAKGOKA AND SCHIPPERS JJA AND SUTHERLAND AND UNTERHALTER AJJA
Heard:
19
November 2020
Delivered:
This
judgment was handed down electronically by circulation to the
parties’ representatives by email. It has been published
on the
Supreme Court of Appeal website and released to SAFLII. The date and
time of hand-down is deemed to be 10h00 on 19 March
2021.
Summary:
Unlawful
competition – passing-off
–
men’s
shower gel – whether reputation of respondent’s get-up of
predominant colour combination of blue, white
and silver protectable
– whether appellant’s product confusingly similar –
respondent’s get-up used extensively
– its products the
leading brand in its category and holding majority share of shower
gel market – overall appearance
and format of appellant’s
product confusingly similar – appeal dismissed.
ORDER
On
appeal from:
Gauteng
Division of the High Court, Johannesburg (Fisher J sitting as court
of first instance):
1
The
appeal is dismissed with costs, including the costs of two counsel,
where so employed.
2
The Registrar of this Court is directed to forward a copy of this
judgment to the Legal Practice Council, Pretoria,
to investigate the
circumstances in which the respondent’s attorneys, Mr Gerard du
Plessis and Ms Elizabeth Serrurier, failed
to disclose Ms Serrurier’s
association with the respondent’s attorneys to the Gauteng
Division of the High Court, Johannesburg
and
this Court,
when filing an
affidavit by her, purportedly as a member of the public, and to take
whatever steps it deems appropriate in the light
thereof.
JUDGMENT
Schippers
JA (Cachalia JA and Sutherland and Unterhalter AJJA concurring):
[1]
The
issue in this appeal is whether the respondent, the manufacturer and
distributor of NIVEA MEN personal care products, can prevent
the
appellant from selling a product, known as ‘CONNIE MEN ACTIVE
SHOWER GEL’, by asserting unlawful competition in
the form of
passing-off. The matter arises from an interdict (and ancillary
relief), which the respondent obtained against the
appellant before
Fisher J in the Gauteng Division of the High Court, Johannesburg
(the high
court), in February 2019. The appeal is with the leave of the high
court.
[2]
The
respondent is a German company founded in 1882, based in Hamburg. It
markets personal care products comprising shower gels,
face products
and body lotions throughout the world, including South Africa. It is
the proprietor, since 1911, of the NIVEA trademark,
a personal care
brand focused on body care. Since 1925, the respondent has
consistently used a blue and white colour combination
in the get-up
of its NIVEA products. More specifically, it has used the combination
of a white font on a blue background. Given
the extensive and
long-standing use of this get-up, the respondent’s packaging
has become associated with it and so too have
NIVEA personal care
products.
[3]
In
1986 the respondent launched its first skin care range aimed
exclusively at men, under the trademark NIVEA MEN. The NIVEA MEN

range includes various creams, shampoos, styling products, and shower
and body care, facial care and anti-ageing products.
[4]
In
2008 the respondent re-launched its NIVEA MEN range, inter alia, by
applying a new get-up to its NIVEA MEN packaging, and adding
the
colour silver to its distinctive blue and white get-up. The
respondent’s products, with their distinctive blue, white
and
silver colour combination (the NIVEA MEN get-up), are sold throughout
South Africa by most leading retailers. Examples of the
NIVEA MEN
get-up are depicted below.
[5]
The
NIVEA MEN shower products have held an increasingly significant share
of the male shower gel market. According to a graph headed,
Nielsen:
Total Trade Desk National: Nivea Men Share Percentage of Male Shower,
for the period December 2010 to September 2017,
contained in a
Nielsen report, the NIVEA MEN shower products held a 49.8% share of
the shower gel market in December 2015; 51.5%
in December 2016; and
58.5% by September 2017. The sales figures in respect of the
respondent’s NIVEA MEN shower gel products
increased from R24
million in 2012 to R54 million in 2017. In 2013, 2014 and 2015, the
sales figures for these products were R30
million, R43 million and
R50 million, respectively.
[6]
Thus,
when the appellant, a local company, launched its own shower gel in
December 2015, NIVEA MEN shower products had a market
share of almost
50% in that category. The sales figures as regards the respondent’s
full range of NIVEA products in South
Africa were R1 707 million
in 2015, R1 912 million in 2016 and R1 739 million in 2017. The
appellant does not dispute the
respondent’s share of the shower
gel market, its sales figures in relation to its shower gel products,
and its sales figures
in respect of the full range of NIVEA products
in South Africa.
[7]
In
2015 the respondent conducted a brand health tracking survey on the
NIVEA brand (the brand health survey). Two key components
of this
survey were brand strength and brand image. The results of the brand
health survey, dated July 2015, showed that compared
to other brands,
the respondent’s products had the highest clarity in the mind
of consumers. The criterion for clarity was
this: ‘A clearer
picture in my mind of this brand than of other brands’. The
brand health survey also revealed that
in the South African male skin
and body care market, NIVEA MEN was clearly the leading brand and
performed best in its class; and
that the respondent’s products
had the most attractive packaging compared to that of its
competitors. The appellant also
did not dispute the results of the
brand health survey.
[8]
The
visual elements of the respondent’s get-up consist of the
following. The NIVEA mark, used with the word MEN, the colours
used
in respect of its NIVEA MEN trademark, the stylisation applied to the
NIVEA MEN mark, the formats and colours used in respect
of the label
applied to the product packaging, and the colour, shape and size of
the packaging which the respondent uses in its
range of shower gels
and body lotions. The most distinctive feature of the respondent’s
get-up lies in the combination of
the blue, white and silver colours.
[9]
Since
2006, and in the distinctive combination of blue, white and silver
colours, the respondent has made extensive use of a label
consisting
of a rectangular shape with a wave-styled base, a distinctive silver
outline and the word NIVEA on a deep blue background
(the
wave-label). An image of the wave-label appears in paragraph 16
below.
[10]
In
January 2008 the wave-label was registered as a trademark, namely
NIVEA (Body Care) logo (colour) in Class 3 in respect of ‘soaps,

perfumery, cosmetics, hair lotions, deodorants and anti-perspirants
for personal use’. The respondent did not renew the
registration of its wave-label in 2016, because it adopted a new
logo. Consequently, the trademark registration of the wave-label

lapsed. However, the respondent alleged in the founding affidavit
that it retained substantial goodwill and a residual reputation
in
its wave-label; and that the purchasing public recognises and
associates the wave-label with it.
[11]
Despite
the absence of the wave-label and the fact that the NIVEA MEN get-up
has changed over the years, the format of the label
applied to the
respondent’s NIVEA MEN shower gel has always consisted of the
NIVEA logo (in the colours white, blue and silver)
at the top,
followed by the word MEN in uppercase in a colour other than white,
followed by the name of the product in an attractive
colour, and
followed by a device representing the range of product, as depicted
in paragraph 4 above.
[12]
For
the past two decades the respondent has marketed its NIVEA MEN shower
gel and lotion range in a container comprising an overwhelmingly
deep
blue colour with a silver lid, the NIVEA logo in white against a deep
blue background and its distinctive blue, white and
silver colour
combination.
[13]
The
appellant is a recent supplier of body care products. It was
established in 2012 by Ms Constance Ferguson, a South African
actress, presenter and model, together with Mr Joseph Nchabeleng. In
June 2014, the appellant launched its CONNIE BODYCARE range
of
products for women. In December 2015, it launched a men’s
product range known as ‘CONNIE BODY CARE FOR MEN’,

comprising three body lotions and three shower gel products. The
appellant’s product range, which includes ‘CONNIE
MEN
ACTIVE SHOWER GEL’ (the CONNIE MEN shower gel), is also sold in
major stores throughout the country. The CONNIE MEN shower
gel was
presented as follows at its launch in December 2015:
However,
the individual features of the labelling and packaging, which
appeared on the CONNIE MEN shower gel when it was launched,
are very
different from the product as sold. I revert to these aspects below.
[14]
In
July 2017, it came to the respondent’s notice that the
appellant was distributing its CONNIE MEN shower gel. In September

2017, the respondent’s attorneys wrote to the appellant
protesting that it was manufacturing and offering for sale the CONNIE

MEN shower gel with a get-up confusingly similar to the respondent’s
products. This, it was said, constituted passing-off,
and the
respondent threatened legal proceedings. The appellant denied this
and stated that the different names of the products
were sufficient
to distinguish them. The respondent then applied for an interdict.
[15]
In
the founding papers the respondent alleged that the appellant was
distributing the CONNIE MEN shower gel featuring a confusingly

similar get-up to the NIVEA MEN get-up, more specifically in the
following respects. The appellant was using the distinctive blue,

white and silver NIVEA MEN get-up. The container of the CONNIE MEN
shower gel consists of a blue base with a silver lid, similar
to the
NIVEA product. The format of the printing on the front of both the
appellant’s and the respondent’s containers
begin with
their respective trademarks in a white font on a blue background with
a silver outline. Both containers have images
below the description
of the product and a bright green font. All of this was illustrated
with reference to the following images:
[16]
The
respondent further alleged that the appellant was using a wave logo
confusingly similar to, or at least reminiscent of, its
wave-label in
respect of which it has a residual reputation. The wave-label was
used extensively by the respondent since 2006,
and in 2010 to 2012 it
was applied to the NIVEA MEN shower gel range in South Africa. In the
founding affidavit the NIVEA wave
logo was compared to the CONNIE
logo as follows:
[17]
The
high court found that when the products depicted in paragraph 15
above are compared, the CONNIE get-up has features which also
appear
in the three NIVEA get-ups. They are these. A wave-label with a
similar deep blue colour as background, a silver border
and the name
‘CONNIE’ in white block capital letters. The use of
distinctive blue, white and silver in the get-up generally,
including
the use of a deep blue plastic container similar to that used on the
NIVEA products, and the use of a silver lid. The
use of prominent
bright green lettering. The use of a splash/wave-like graphic
representation, which has rounded features of a
similar size,
appearance and position on the NIVEA get-up. Finally, the use of a
container of a similar height, width and volume
as the latest NIVEA
shower gel get-up.
[18]
The
high court held that there is a potential for confusion between the
two products; that a shower gel ‘is often the subject
of an
“impulse buy”’, where a consumer is less likely to
be discerning in relation to a brand and more likely
to succumb to
immediate impressions; and that parts of a get-up that are
distinctive in relation to a particular mark or brand
are sufficient
to create confusion, despite the use of such parts having been
discontinued. The court concluded that the appellant
had created a
composite from aspects of the NIVEA MEN get-up, calculated to
pass-off the CONNIE MEN shower gel as belonging to
a range of the
respondent’s products. The appellant was accordingly
interdicted from competing unlawfully with the respondent
and
directed to remove the NIVEA MEN get-up from its packaging.
[19]
Passing-off
was defined by Rabie JA in
Capital
Estates v Holiday Inns
as follows:
[1]
‘
The
wrong known as passing-off consists in a representation by one person
that his business (or merchandise, as the case may be)
is that of
another, or that it is associated with that of another, and, in order
to determine whether a representation amounts
to a passing off, one
enquires whether there is a reasonable likelihood that members of the
public may be confused into believing
that the business of the one
is, or is connected with, that of another.’
[20]
Regarding
misrepresentations by a defendant that are likely to lead the public
to believe that the goods offered by it are those
of the plaintiff,
this Court has said:
‘
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. 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.’
[2]
[21]
The
first issue is thus whether the respondent established that its goods
have acquired a particular reputation among the public.
The test,
simply put, is ‘whether the plaintiff has, in a practical and
business sense, a sufficient reputation amongst a
substantial number
of persons who are either clients or potential clients of his
business’.
[3]
The
cases make it clear that such reputation must be proved at the date
of the conduct complained of,
[4]
may
be inferred from extensive sales and marketing,
[5]
and
may be proved by evidence regarding the manner and scale of the use
of the get-up.
[6]
[22]
The
evidence shows that when the appellant started to market the CONNIE
MEN shower gel in December 2015, the respondent’s
NIVEA MEN
brand had been on the market for nearly three decades. The blue,
white and silver colour combination on the NIVEA MEN
get-up had been
in use for some seven years. At the time the respondent’s blue
and white colour combination had been in use
for about nine decades,
and its extensive and longstanding use of this get-up had become
associated with the respondent and its
NIVEA personal care products.
[23]
The
respondent has been the market leader in respect of its NIVEA MEN
shower gel and body lotion range since at least 2010. The

unchallenged evidence is that when the CONNIE MEN shower gel was
launched in 2015, NIVEA MEN shower gel products held a 49.8% share
of
the male shower gel market. When the respondent sent the letter
alleging passing-off in September 2017, it had the majority
share of
that market – 58.5%. The sales figures in respect of the NIVEA
MEN shower gel products in 2015 alone amounted to
R50 million, and
sales of the respondent’s full range of products totalled
R1 707 million.
[24]
Barely
a year after the appellant had launched its CONNIE MEN shower gel,
the NIVEA MEN brand was the leading brand in its category
in South
Africa. Unsurprisingly, it had the highest clarity in the mind of
consumers than any other brand, and had the most attractive
packaging
compared to that of its competitors. The brand health survey showed
that a significant percentage of the relevant class
of consumers
recognise the NIVEA MEN brand and associate it with the respondent.
Whilst the NIVEA MEN get-up has changed or been
refreshed over the
years, it has remained constant and cohesive.
[25]
All
of this illustrates that the respondent’s NIVEA MEN shower gel
has dominated the male shower gel market in advertising,
consumer
recognition and sales. Consequently, the appellant’s submission
that the respondent ‘does not enjoy a specifically
strong
brand’ is wrong. The respondent established a reputation in its
products sufficiently identified in the public mind
with the NIVEA
MEN get-up. The high court was thus correct to hold that the
respondent’s reputation in the realm of body
care products
could not be doubted, and that it was a brand with considerable
recognition, both worldwide and in South Africa.
[26]
As
to the question whether persons wishing to buy the respondent’s
goods are likely to be misled into buying the appellant’s

goods, it should be noted that the high court’s order is
confined to the get-up of the CONNIE MEN shower gel, depicted in

paragraph 15 above. In their submissions the parties referred to a
number of cases concerning misrepresentation and there is no
debate
about the principles of law of application in this appeal. In my
view, the question whether the distribution and sale of
the CONNIE
MEN shower gel constitutes a misrepresentation likely to deceive the
public regarding its source is one of fact, to
be considered in the
light of the respondent’s establishment of the right to its
get-up as a whole.
[27]
It
should be borne in mind that the primary retail outlets for the
appellant’s and respondent’s products are supermarkets,

where they are not likely to be displayed as shown in the founding
affidavit, referred to in paragraph 15 above. The average consumer

rarely has the chance of making direct comparisons between products,
and relies on ‘his own perception or recollection, unassisted

by the opportunity of side-by-side comparison’.
[7]
Ultimately,
assessing the likelihood of confusion is a value judgment by the
court, dictated by the overall impression created by
the get-up in
the light of its respective characteristics and the circumstances in
which it is likely to be encountered, rather
than by excessive
analysis.
[8]
[28]
As
to the respondent’s claim that it has substantial goodwill and
a residual reputation in its wave-label, it has been said
that
goodwill denotes ‘the benefit and advantage of the good name,
reputation and connection of a business’ and ‘the

attractive force which brings in custom’.
[9]
Boppert
[10]
describes
the interrelationship between goodwill and reputation as follows:
‘
Goodwill
is closely related to reputation, which is one of the decisive
factors for the success of a business. It allows a producer
to build
up a customer base by permanently binding them to a brand they have
positive associations with. Goodwill thereby functions
as a soft
factor that determines a consumer’s decision apart from price
or availability. It has been described as the “invisible

handshake” . . . But not only the goodwill owner benefits from
the protection of goodwill. Following the “extrapolation

principle”, goodwill also benefits the consumer. According to
this theory, future behavior is dependent on past experiences.
A
consumer will therefore choose the product with which he has had a
good past experience to form his decision what good to purchase
in
the future.’
[29]
It
appears from case law that goodwill can only be enforced while the
business exists. In this regard,
Star
Industrial Co Ltd
v
Yap
Kwee Kor
[11]
is
instructive. A Hong Kong company marketed toothbrushes in Singapore
mainly for the purpose of re-export. After the government
of
Singapore imposed an import levy on toothbrushes, the company stopped
marketing and selling in Singapore with no intention to
resume trade
later on. Three years later, the defendant started producing and
selling toothbrushes with a get-up virtually indistinguishable
from
the claimant’s formal packaging. The court rejected the
passing-off action brought by the claimant on the basis that
its
goodwill had been abandoned. This conclusion is hardly surprising.
Boppert explains it thus:
‘
Goodwill,
being the relationship between a business and its customers can only
be enforced by the business as long as it exists.
This also makes
sense regarding the intention behind passing off: targeting the loss
of customers by unfair means. When a trader
has already abandoned his
customers by leaving the market, he thus should not be able to claim
that another trader stole a customer
from him.’
[12]
[30]
That
is not the case here. There has been no abandonment of the
respondent’s goodwill and reputation. On the contrary, the

respondent’s NIVEA MEN is the market leader in shower gel and
holds a significant share of the market in men’s personal
care
products, as is evident from its sales figures set out above. The
get-up of the NIVEA MEN products has been on the market
for many
years and in the course of time, has become identified with the
respondent’s goods and no others. The evidence that
since 2006
its wave-label has been used extensively with the NIVEA MEN get up;
and that between 2010 and 2012 the label was applied
to its NIVEA MEN
shower gel range in this country, stands uncontradicted. And the
appellant has not suggested that the mark on
the CONNIE MEN shower
gel with its wave-styled base and silver outline, is its own design.
[31]
Given
the similarities between the appellant’s and respondent’s
products, the inference is inescapable that the appellant’s

logo is an appropriation of the NIVEA MEN wave-label indicia on the
same kind of product, so as to connect it to a known and established

brand. This is buttressed by the fact that the appellant’s logo
on its CONNIE MEN shower gel is strikingly different from
its logo
used on the CONNIE WOMEN brand, which bears a picture of Ms Constance
Ferguson. Further, and unlike the CONNIE WOMEN brand,
there is
nothing on the CONNIE MEN range that indicates any association with
Ms Constance Ferguson. For these reasons, it is not
necessary to
decide whether the respondent has proved a residual reputation in its
wave-label. It suffices to say that on the facts,
the CONNIE MEN
shower gel and the respondent’s goods confusingly resemble each
other, which resemblance includes a wave-label
peculiar to the
respondent. Consumers drawn to the appellant’s product by,
inter alia, the familiar trademark and expecting
the respondent’s
product as before, cannot help but be deceived.
[32]
Applying
these principles to the present case, in my opinion, the overall
appearance and format of the CONNIE MEN shower gel is
confusingly
similar to the respondent’s NIVEA MEN products. As already
stated, the consistent elements of the NIVEA MEN get-up
are the
respondent’s NIVEA logo (in the colours blue, white and silver)
at the top, followed by the word MEN in uppercase
in a colour other
than white, followed by the name of the product in an attractive
colour, followed by a device representing the
product range. The
similarities in the overall appearance of the parties’ get-ups
are readily apparent:
(a)
The
appellant’s get-up is in the colours blue, white and silver,
consisting of an elongated rectangular bottle with a blue
base and
silver lid. In the answering affidavit the appellant could not point
to any other body care product that has a deep blue
base and silver
lid, which is part of the NIVEA MEN get-up and unique to the
respondent.
(b)
The
appellant uses a wave-styled label that is confusingly similar to the
respondent’s label, together with a silver border
and a
similar, if not identical, colour to the dark blue background of the
respondent’s wave-label.
(c)
The
format of the printing on the front of both parties’ containers
begins with their respective trademarks in a white font,
on a blue
background with a silver outline.
(d)
Both
containers contain an image below the description of the product
which resembles a splash/wave-like graphic representation,
which has
rounded features and is of similar size, appearance and position.
(e)
The
use of bright green lettering is prominent and similar to the
lettering in the respondent’s MAXIMUM HYDRATION shower gel

get-up and the use of colours in the respondent’s current
get-ups.
[33]
The
similarities in the appellant’s get-up are not only confusingly
similar to the respondent’s MAXIMUM HYDRATION shower
gel
get-up, but incorporate the basic elements which have been used
throughout each one of the respondent’s NIVEA MEN get-ups.

Having regard to the degree of similarity, the use of different names
does not make it ‘perfectly clear’ to the public
that the
appellant’s product is its own, so as to exclude the
probability of deception.
[13]
The
confusing similarity caused by the appellant’s get-up is
underscored by the following facts. The CONNIE logo depicted
at the
launch of the CONNIE MEN shower gel range (shown in paragraph 13
above) was a distinctive purple, as opposed to the practically

identical shade of blue in the NIVEA MEN get-up, which the appellant
now uses. The CONNIE MEN shower gel as launched, also did
not have
the format or layout of the label and overall appearance of the NIVEA
MEN get-up. Neither did it have any bright green
lettering, instead
the lettering was light blue.
[34]
For
these reasons, the high court’s conclusion that the CONNIE MEN
shower gel was created from aspects of the get-ups of the
respondent
over time, calculated to pass it off as belonging to a range of the
respondent’s products, cannot be faulted.
The appellant’s
and the respondent’s products are confusingly similar and are
sold largely through the same retail
outlets. In these circumstances,
the CONNIE MEN shower gel is almost certain to deceive and confuse
the public, and likely to cause
the respondent to suffer damages.
[35]
Part
of the respondent’s claim of passing-off was that a member of
the public, Ms Elizabeth Serrurier, had actually been confused
into
believing that the appellant’s CONNIE MEN shower gel, which she
bought on 25 July 2017, originated from the respondent.
In her
affidavit Ms Serrurier stated that she believed that the shower gel
she had purchased was NIVEA MEN shower gel because ‘of
the
colour and shape of the bottle and the overall get-up of the
product’. A member of this Court asked the respondent’s

counsel whether Ms Serrurier was an attorney employed by
Adams
& Adams, the respondent’s attorneys. After taking
instructions, counsel confirmed that at the relevant time, Ms

Serrurier had been employed by the respondent’s attorneys.
He then
rightly requested that her evidence be ignored.
[36]
Counsel
for the appellant submitted, correctly, that this was a serious and
material non-disclosure on the part of the respondent’s

attorneys. That Ms Serrurier was an attorney working for the
respondent’s attorneys, was also not disclosed to the high
court. It took into account her affidavit and referred to her as ‘a
consumer’, in arriving at the conclusion that the
appellant’s
get-up exhibited signs of straining every nerve to evoke the
respondent’s product in the minds of consumers.
The
respondent’s attorney of record is Mr Gerard du Plessis, the
author of the letter of demand.
[37]
Attorneys
are required to discharge their professional duties with integrity,
probity and complete trustworthiness. The failure
by Mr Du Plessis to
disclose to the high court and this Court, the fact that Ms Serrurier
was employed by the respondent’s
attorneys, prima facie, falls
below these standards. So too, the non-disclosure by Ms Serrurier,
even though she was not acting
in a professional capacity when she
purchased the CONNIE MEN shower gel. An appropriate order to address
the non-disclosure will
therefore be issued.
[38]
In
the result, the following order is issued:
1
The
appeal is dismissed with costs, including the costs of two counsel,
where so employed.
2
The
Registrar of this Court is directed to forward a copy of this
judgment to the Legal Practice Council, Pretoria, to investigate
the
circumstances in which the respondent’s attorneys, Mr Gerard du
Plessis and Ms Elizabeth Serrurier, failed to disclose
Ms Serrurier’s
association with the respondent’s attorneys to the Gauteng
Division of the High Court, Johannesburg
and
this Court,
when
filing an affidavit by her as a member of the public, and to take
whatever steps it deems appropriate in the light thereof.
_____________________
A
Schippers
Judge
of Appeal
Makgoka JA
(dissenting)
[39]
I
have read the majority judgment prepared by my colleague, Schippers
JA. Regrettably, I am unable to agree with its conclusion
and the
reasoning underpinning it. In my view the respondent had failed to
establish the requisite reputation and goodwill in the
get-up of its
men’s products. I also take a view that there is no likelihood
of confusion between the parties’ competing
products. I would
accordingly uphold the appeal with costs. Below I state briefly the
reasons for my disagreement.
[40]
The
respondent, Beiersdorf AG (Beiersdorf), a German multinational
company, is the proprietor of the well-known NIVEA trade mark,
which
it uses to market personal care products. The trade mark, which has
been in use since 1925, comprises the brand name NIVEA
in a white
font across a blue background. Beiersdorf has undoubtedly established
brand reputation and goodwill in its trade mark,
which has over the
years become distinctive of its Nivea products. However, as I
demonstrate below, this case has less to do with
that mark.
[41]
The
appellant, Koni Multinational Brands (Pty) Ltd (Koni), a South
African company, is a fairly recent entrant in the personal care

market. It made its entrance in June 2014 with beauty care products
for women. It appears that Koni’s brand was well received
in
the market, as within a year, its women’s products were sold in
almost all the prominent retail stores in the country.
[42]
From
the evidence of its advertising material, the success of the Koni
brand seems attributable to the persona of Mrs Constance
Ferguson,
one of Koni’s two directors. Koni’s brand name CONNIE, is
a shortened version of her name. It appears that
she is well-known
and hugely popular in social circles. She describes herself in the
answering affidavit as ‘a well-known
South African actress,
producer, presenter, model, philanthropist and celebrity to the
people of South Africa.’ It is therefore
conceivable that when
Koni’s men’s range was introduced in October 2015,
[14]
it
was primarily in order to capitalise on the success of the CONNIE
women’s range.
[43]
In
its founding papers, Beiersdorf alleged that Koni was competing
unlawfully with it by passing off its goods as Nivea or as being

connected to Nivea, by using a get-up which is confusingly or
deceptively similar to the get-up used in respect of its NIVEA MEN

products. I earlier remarked that the issue here is not about the
NIVEA trade mark, but about the get-ups used by Beiersdorf on
its
NIVEA MEN products, which it claims reputation in, and which it
alleges Koni had unlawfully appropriated.
[44]
Although
a trade mark is often part of the whole get-up, the two are not
necessarily one and the same. The get-up generally refers
to the
configuration of individual elements in which products are shown.
These elements typically include the shape, graphics,
colour
combination, overall packaging or display of the product, and
whatever trade marks applied to a product. Although Beiersdorf
seemed
to conflate the two concepts in its founding affidavit, it correctly
characterised its case in the replying affidavit as
follows:
‘
The
visual elements of the Applicant’s [Beiersdorf’s] get-up
comprises the NIVEA mark, used with the word MEN, the colours
used in
respect of its NIVEA MEN trade mark, the stylisation applied to the
NIVEA MEN mark, the format and colours used in respect
of the label
applied to the product packaging and the colour, shape and size of
the packaging used by the Applicant in respect
of its range of shower
gels and body lotions.’
[45]
Beiersdorf
has been
marketing its men’s products since 1986, using its well-known
NIVEA mark as described above, with the word MEN or
FOR MEN in silver
and in uppercase, and a silver bordering. The label applied to the
NIVEA MEN mark has changed over the years,
and so has the general
get-up applied to the Nivea men’s products. However, the NIVEA
trade mark has been constant throughout
the evolution of the label.
Beiersdorf says that between 2006-2008 it used the NIVEA mark in a
rectangular label with a wave-styled
base and silver outline (the
wave label).
[46]
Between
2010 and 2012, the wave logo was applied to the NIVEA MEN shower gel
range in South Africa. This label was abandoned or
discontinued in
2013, as Nivea adopted a new logo. Some two years later, in October
2015, Koni introduced its men’s body
range using a label
closely similar to Nivea’s discontinued wave label. This is the
basis of Nivea’s case on residual
reputation. The new logo
adopted by Beiersdorf in 2013 for use on its Nivea body lotions and
shower gel ranges is said to be reminiscent
of the circular or oval
shape first used in 1925. This is the label which was in use when
Koni’s men’s products were
brought onto the market.
[47]
The
requirements of passing off (in this case based on get-up) are
well-settled. In order to succeed, Beiersdorf must first establish

that it had acquired reputation in the get-up used on its NIVEA MEN
products. In other words, it must demonstrate that the get-up
used by
it on its NIVEA MEN products had become distinctive of products in
the sense that the public associates the get-up with
those products.
Secondly, Beiersdorf must prove that the get-up used by Koni on its
shower gel is such or is so used as to cause
the public to be
confused or deceived into believing that there is an association
between the respective products, or that Koni’s
products
emanate from Nivea’s proprietor.
[15]
I
discuss the two requirements, in turn.
[48]
The
relevant date for determining whether Beiersdorf had the necessary
reputation in the elements of packaging and get-up in question
was
the date upon which Koni launched the CONNIE men’s range in the
South African market, that is, October 2015.
The
nature of the reputation that a claimant such as Beiersdorf has to
establish was stated in
Reckitt
& Colman Products Ltd v Borden Inc and Others
[1990]
RFC 341 (HL) 406, lines 26-31:
‘
[H]e
must establish a goodwill or reputation attached to the goods or
services which he supplies in the mind of the purchasing public
by
association with the identifying 'get-up' (whether it consists simply
of a brand name or a trade description, or the individual
features of
labelling or packaging) under which his particular goods or services
are offered to the public, such that the get-up
is recognised by the
public as distinctive specifically of the plaintiff’s
goods or services.’
[16]
[49]
The
get-up which is claimed by Beiersdorf to be distinctive, and relevant
to the present case, is that which it applied to the following

products: NIVEA MEN MAXIMUM HYDRATION 3-IN-1 BODY WASH (the body
wash); NIVEA FOR MEN SHOWER GEL (the ‘old’ shower
gel);
NIVEA MEN MAXIMUM HYDRATION BODY LOTION; and NIVEA MEN SHOWER GEL.
[50]
The
‘old’ shower gel came in variants of ENERGY, SPORT,
SENSITIVE and COOLKICK. Its container was blue in colour, with
colour
combinations of silver and white. It was of a roundish shape, and
bore the NIVEA trade mark in the wave label, beneath which
appears
the word FOR MEN in silver, followed by the variant name in a
particular colour, eg green for ENERGY, orange for SPORT
and silver
for SENSITIVE. The lid was also two-toned, predominantly blue, with a
white edge at the top. A white and green splash-like
device completes
the get-up. This is the basis of Beiersdorf’s residual
reputation claim.
[51]
Although
the get-up of its shower gel range has changed since 2012, Beiersdorf
claimed that by the time it abandoned the get-up,
which included the
wave label, it had acquired reputation therein, and still had
residual reputation in the former get-up of those
products. It
claimed a similar residual reputation in the get-up of the body wash,
which was no longer on the market in South Africa
by the time Koni
introduced its products. The body wash also came in a blue container
with colour combinations of silver, green
and white. It bore the
NIVEA trade mark in a circular shape, with the words MAXIMUM
HYDRATION in green, followed by a white and
green splash-like device.
The shape of the container was rectangular and elongated. Its lid was
silver, with a blue edge at the
top.
[52]
In
respect of the current products, Beiersdorf claimed reputation in the
get-up applied to NIVEA MEN MAXIMUM HYDRATION BODY LOTION
(the body
lotion) and the NIVEA MEN SHOWER GEL. The change in the get-up of the
shower gel in 2013 had the effect that the new
shower gel, for all
practical purposes, is in every respect similar to the discontinued
body wash described above. It comes in
variants of SPORT, COOLKICK,
ENERGY, POWER FRESH and PROTECT & CARE. Like the old shower gel,
each of the variants has a particular
colour decoration and
lettering, applied over a blue container.
Underneath
the NIVEA MEN mark is the variant name of each product, as stated
above, in a different colour for each.
[53]
The
body lotion comes in a slightly broader rectangular container, also
in blue. The lid, elongated and much narrower than the body
of the
container, is also silver with a blue edge at the top. The NIVEA MEN
mark in an oval label is at the top underneath the
lid. The words
‘MAXIMUM HYDRATION’ in green and prominent font, appear
underneath the NIVEA MEN mark, followed by a
white splash with a
green round device.
[54]
It
is the get-up described above which Beiersdorf has to
establish
a goodwill or reputation in. It must prove that such get-up is
recognised by the public as distinctive specifically of
its
NIVEA MEN products. In other words, Beiersdorf must show that the
visual elements of its get-up, comprising of the NIVEA MEN
mark as
applied to the products, the packaging and the colour schemes, as
described above, have come to be associated by the purchasing
public
as denoting exclusively Nivea’s men’s products.
[55]
This
must not be confused with NIVEA brand reputation, which, as already
stated, is not in dispute. This distinction between reputation
due to
a trade mark and a reputation based on the general get-up is an
important one, because failure to appreciate it is likely
to lead one
astray in approaching the issue in dispute. Unfortunately, the high
court, with respect, conflated the two, as a result
of which it
approached the issue on a wrong footing
.
I
t
said the following at para 15
:
‘
There
can be no doubt of the reputation of [Nivea] in the realm of body
care products. I do not understand [Koni] to suggest that
it is not a
brand with considerable recognition worldwide, including South
Africa.’
[56]
As
a general statement, the above is true of Beiersdorf’s Nivea’s
brand reputation. But, as stated already, that is
not the issue in
this case. What Beiersdorf claimed was not reputation in the Nivea
brand name, but the get-up it applied to its
NIVEA MEN products.
Kenny J explains it well in
Nutrientwater
Pty Ltd v Baco Pty Ltd
[2010]
FCA 2
;
265 ALR 140
;
84 IPR 452
at para 18:
‘
It
is, moreover, not enough for NW [Nutrientwater] to show in general
terms that it had a reputation in the NW Product Range. In
order to
succeed, NW must establish that, as at May 2009 when Baco entered the
market, NW had a reputation in the features that
it seeks to protect
and that it claims were appropriated by Baco.’
And in
Gama
Healthcare Limited v Pal International Limited
[2016] EWHC 75
(IPEC) Michaels J said (at para 48):
‘
The
Claimant has a significant business in which it undoubtedly enjoys
goodwill. I have no doubt that the trade name Clinell which
is used
consistently and prominently on the Claimant’s goods has an
established reputation and goodwill. However, the Claimant
does not
rely on the name. It is very much less clear that there is goodwill
in the combination of indicia pleaded in the Particulars
of Claim…’
[57]
The
inherent flaw in the high court’s approach is that it conflated
the Nivea brand reputation and reputation in the features
or the
get-up Beiersdorf sought to protect. Having made the obvious point
referred to above, the high court failed to embark on
an analysis of
the claimed reputation in the get-up Beiersdorf applied to its
products. Such an exercise was necessary to determine
whether
Beiersdorf had established its claimed reputation in the get-up
applied to its NIVEA MEN products. Below I consider that
aspect.
[58]
Beiersdorf
’
s
Nivea products, the shower gel and the body lotion as described
above, all come in blue containers. In its answering affidavit,
Koni
pointed out that other brands – Vaseline, Protex, Clere, Suave,
Radox and Renew – use blue as the colour for their
men’s
products. All of these products use a colour combination of blue and
white. In its replying affidavit, Beiersdorf avoided
this issue
completely. Looking at the products Koni pointed out, I observe that
both Clere and Radox, like Nivea, also have green
in their colour
combinations. As a result, Beiersdorf cannot legitimately claim
monopoly in the colour combination of blue, white
and green as being
distinctive of its NIVEA MEN products in the minds of consumers.
[59]
Beiersdorf
contended, however, that the use of the blue container with a silver
lid had become distinctive of its NIVEA MEN products.
It was at pains
to point out that, among all other brands, only its products were
sold in a blue container with a silver lid which,
when used with its
NIVEA trade mark and some varying decorative aspects, became
distinctive of its men’s products. Thus,
the colour combination
of blue, white, silver seem to form the basis of Beiersdorf’s
claim for reputation.
[60]
Koni
contended that over the years, the get-up applied to Beiersdorf’s
Nivea men’s products has not been consistent.
Indeed, this
seems correct. When one has regard to the advertising material
attached to the papers, it appears that the NIVEA MEN
products have,
over the years, been marketed in different get-ups consisting of
various container shapes and colour combinations.
Indeed, this is so.
Beiersdorf has used different colour containers, including
transparent, black, dark blue, and silver, decorated
with
combinations of white, navy, dark blue, light blue, yellow, orange,
green and black. It has also marketed its products using
different
labels – wave, rectangular and circular labels.
[61]
What
has been the constant feature of the ever-changing get-up is the
well-known NIVEA trade mark used in combination with the word
MEN. In
my view, this signifies that the attracting force to Beiersdorf’s
Nivea products, irrespective of the get-up applied
to any product, is
the well-known brand name and trade mark, NIVEA. There is nothing in
Beiersdorf’s consumer surveys to
show that its NIVEA MEN
products were identified by the various get-ups in the form of colour
combinations rather than they were
by the NIVEA trade mark.
[62]
The
very fact that the get-up applied to NIVEA MEN products keeps
changing, makes it unlikely that any one of those get-ups had
stuck
in the minds of the consumers as signifying Nivea products. It takes
consistency and sufficient duration to build a reputation
in get-up.
Beiersdorf has maintained none of those in respect of the get-up it
applied to its NIVEA MEN products. How Beiersdorf
can contend for
reputation in this ever-changing get up escapes me.
[63]
With
specific regard to the residual reputation, of which the wave label
is a key feature, it is worth noting that the label was
in use in
South Africa for only about two years between 2010 and 2012. What is
more, I find Vaseline’s label not too dissimilar
to
Beiersdorf’s wave label. Although Vaseline’s wave label
is slightly rounded as opposed to Beiersdorf’s rectangular

shape, the similarities are perceptible. The respective brand names
are set in white against a similar blue background, with silver

bordering. What is more, there is a strong resemblance between
Vaseline’s label and the one used by Beiersdorf in 2012 for
its
Nivea men’s products. There is no suggestion that there were
any passing off claims between Beiersdorf and the proprietor
of
Vaseline in respect of these labels. This destroys Beiersdorf’s
argument that the label was distinctive of its products.
[64]
In
light of the above, the reputation-denoting function which the
well-known NIVEA mark fulfils within the get-up cannot be ignored.
In
my view, that mark is so distinctive that the notional customer is
unlikely to have much regard to the colour combinations on
the
container and other markings or decorations, but mainly to the name
‘NIVEA’. Accordingly, irrespective of the colour
of the
container or the colour combinations and decorations, it is almost
impossible not to notice the distinctive NIVEA mark.
I venture to
suggest that were a notional consumer asked how they identified Nivea
shower gels and body lotions, the answer would
most likely be that
the NIVEA logo was the single most recognisable feature by which they
identified the products.
[65]
What
is more, Beiersdorf’s claim to reputation in its get-up is not
supported by its own survey,
[17]
in
which the following observations are made:
‘
In
South Africa NIVEA MEN is perceived as [a] modern and new and
innovative brand. But overall, the image profiling is quite low
for
NIVEA MEN and also for the competitor brands.
Also, in terms of
NIVEA MENness, the profiling of NIVEA MEN and the competitor brands
is quite flat. NIVEA MEN with a profile at
modern and up-to-date but
for strengthening the brand further distinctiveness should be build.’
The conclusion is
telling:
‘
Strong
No 1 position for NIVEA MEN but
yet
a distinctive image profile is missing.
’
(Emphasis added.)
[66]
I
therefore conclude that the reputation which accrues to NIVEA MEN
products is attributable to the NIVEA trade mark, and quite
less to
the other features of the get-up it applied to the products in issue.
It follows that Beiersdorf has not succeeded in establishing
any
reputation (current or residual) it claimed in the various get-ups
adopted in respect of its products over the years. Ordinarily,
with
this finding, it should be the end of the matter and it would not be
necessary to consider whether Koni’s shower gel
was calculated
to cause the public to be confused or deceived. However, given that
this is the basis on which the majority decides
the appeal, I state
my views on the issue.
[67]
A
simple proposition in this regard is that t
he
law of passing off is not designed to grant monopolies in successful
get-ups. A certain measure of copying is permissible. Solomon
J put
it lucidly in the well-known passage in
Pasquali
Cigarette Co Ltd v Diaconicolas & Capsopolus
1905 TS 472
at 479:
‘
A
certain amount of imitation in these matters is perfectly legitimate.
If one manufacturer sees that another manufacturer gets
up his wares
in a form which attracts the public, he is entitled to some extent to
take a lesson from his rival and to copy the
get-up provided that he
makes it perfectly clear to the public that the articles which he is
selling are not the other manufacturer’s,
but his own articles,
so that there is no probability of any ordinary purchaser being
deceived. So long as it does that a certain
amount of imitation is
legitimate.’
[18]
[68]
The
authors of
Dean
& Dyer
Introduction
to Intellectual Property Law
[19]
point
out that a
get-up
which is adopted by a trader falls within the public domain and can
be used by other traders as long as they do not mislead
in doing so
and clearly distinguish their goods from those of the other trader.
The misrepresentation, in other words, lies in
a trader’s
adopting a similar get-up to that of another and then not taking the
necessary steps to differentiate his goods
from those of the other
traders. If he does take steps to differentiate, then there is
unlikely to be misrepresentation and no
confusion would result for
consumers.
[69]
The
upshot of this is that Beiersdorf did not automatically obtain a
monopoly in the get-up it applied to its NIVEA MEN products.
The
enquiry into whether there is a reasonable likelihood of confusion
arising between NIVEA MEN and CONNIE MEN products should
be
approached with this principle in mind. Such an enquiry is factual,
to be determined in the light of the circumstances of each
case.
It is also a value judgment based
on first impressions.
[70]
Therefore,
the
whole
get-up of the competing products has to be considered. The court does
not compare any single element of the entire get-up
of each or even
each element separately, but the overall impact of the entire get-up
of each on potential customers. The consideration
is one of first
impression rather than lengthy examination.
[20]
However,
it is difficult to arrive at the overall impression without examining
the individual elements and identify those that are
most distinctive
and have the greatest impact on potential customers.
[21]
[71]
I
have already identified the Nivea products in respect of which
Beiersdorf complains that Koni has imitated, namely the NIVEA MEN

MAXIMUM HYDRATION BODY LOTION (the body lotion) and the NIVEA MEN
SHOWER GEL (the shower gel). Koni’s products, on the other

hand, comprise three variants of both a body lotion and a shower gel.
All of Koni’s products were sold in a blue, 400ml container.

They came in the same shape, which Koni called ‘hexagon’.
Koni’s brand name, CONNIE, appears in a white, clearly
visible
font against what appears to be a deep purple background. The words
‘Body Care’, in small characters appear
underneath the
name, and they are separated by a solid line which forms knots in the
middle.
[72]
Beiersdorf
claimed that Koni’s shower gel had copied the get-up of Nivea’s
body lotion and shower gel. It would be recalled
that in respect of
the ‘old’ Nivea shower gel, the main complaint related to
the use by Koni of the wave label as part
of its get-up. In this
regard, Beiersdorf made a side-by-side comparison of the two labels,
and correctly pointed to the striking
similarities in the formats of
the labels. However, that exercise is unhelpful, as these are not
trade mark infringement proceedings,
where the enquiry is directed at
a comparison between the registered mark as such and the allegedly
offending mark as such, without
any extraneous factors.
[73]
In
passing off proceedings, the court must consider all extraneous
factors in reaching a conclusion that confusion is likely. The
entire
get-ups of the respective products are compared, including the
shapes, the markings and the decorations on the products,
as well as
how the respective trade marks are applied to the products. The
importance of this distinction is that care must be
taken to exclude
from the former enquiry facts and circumstances which are germane to
the latter enquiry but irrelevant and inadmissible
in the former.
[22]
[74]
Accordingly,
below I make a visual comparison of the whole get-ups of the
competing products to determine whether there was a likelihood
of
confusion. The Energy shower gel shares some features with Koni’s
shower gel. Koni’s shower gel also comes in a
blue container,
with a wholly silver lid, and the CONNIE mark in a wave label below
the lid. The word MEN in white is followed
by the word ACTIVE in
green and a white splash-like device. Images of the respective
products are displayed below. The first image
depicts Koni’s
shower gel with ‘old’ Beiersdorf’s Nivea shower gel
range. The second image depicts Koni’s
shower gel among ‘new’
Beiersdorf’s Nivea shower gel range, while the third image
depicts Koni’s shower
gel side by side with Beiersdorf’s
discontinued body was and the current body lotion.
[75]
It
is especially the ENERGY variant of its ‘old’ shower gel
range (the second product in the first image), the discontinued
body
wash (the first product in the third image) and the variant of the
current body lotion (the third product in the third image)
which
Beiersdorf complained that Koni copied and applied their get-up to
its shower gel. As stated already, in respect of the first
two,
Beiersdorf claimed residual reputation. It is not difficult why this
is so. The products, more than other variants, share
colour
combinations of blue, white, silver and green with Koni’s
shower gel. But, as pointed out already, as far as the colour
green
is concerned, Clere and Radox also use it in combination with
predominantly blue and white.
[76]
I
commence with the use by Koni of the wave label on its products.
There is no doubt that Koni took inspiration from Nivea’s
wave
label. It clearly copied its format. But that is not the decisive
issue. The question remains whether in adopting the format
of
Beiersdorf’s label, it distinguished its own label. In my view
it has, by clearly and conspicuously applying its brand
name CONNIE
to the label, which clearly distinguishes it from Beiersdorf’s
NIVEA MEN trade mark. The distinct trade names
are the most prominent
features of the respective marks. Whether the background to Koni’s
label is purple, or blue as suggested
by Nivea, is immaterial. Also,
the word ‘MEN’ does not from part of the Koni label,
whereas this is the case with the
NIVEA mark.
[77]
It
must be emphasised that it was not Beiersdorf’s case that Koni
had adopted a confusingly or deceptively similar trade name.

Beiersdorf accepts that the parties’ respective brand names –
CONNIE and NIVEA MEN – are not confusingly similar.
Therefore,
this case is different from those where a competitor adopts a mark
resembling the applicant/plaintiff’s brand
name.
[23]
Given
the similarities in the labels, it would have been a different case
had Koni adopted a name closer to Nivea, such as, for
example, Nova
or similar name.
[24]
But
it adopted a completely distinct name, CONNIE. And how the marks were
applied to the respective products as part of the overall
get-up, is
important, which is what I consider next.
[78]
A
cursory look at the get-up of the respective products reveals obvious
similarities. The colour of the containers is blue, which
I have
already determined, Beiersdorf has no monopoly over. The lids of the
products bear a silver colour, although in respect
of the Nivea
products the lid is two-toned with a blue edge at the top. Koni’s
shower gel also shares the green lettering
with Beiersdorf’s
Nivea body lotion. The latter has the words MAXIMUM HYDRATION in
green. Koni’s shower gel has the
word ACTIVE clearly visible in
green, and words ‘Body, face and hair’ also in green but
very small, hardly visible
letters. The competing shower gels share a
splash-like device. Koni’s is white, while Nivea’s takes
the colour used
for a particular variant.
[79]
I
am prepared to accept that from these similarities, some consumers
might momentarily and initially wonder or even be confused
whether
there is some connection between the respective products. While this
type of initial confusion would be sufficient in trade
mark
proceedings, it is not for passing off. As pointed out in
Hoechst
Pharmaceuticals (Pty) Ltd v Beauty Box (Pty) Ltd and Another
1987 (2) SA 600
(A) at 619D-E, this type of confusion does not give
rise to an action for passing off. Nicholas AJA cited with approval
the following
passage in
Halsbury's Laws
of England, 4 ed, Vol 48:
‘
Where
the public is familiar with the plaintiff's goods or services of a
particular kind, substantial numbers of persons may assume
that
competing goods or services offered by a newcomer are the goods or
services of the plaintiff with whom they have hitherto
been familiar,
but confusion arising merely from this cause is to be
disregarded.’
[25]
[80]
The
differences in the get-up of the products must also be considered to
determine whether any would serve to distinguish them.
The most
obvious and immediately striking are the brand names, NIVEA MEN and
CONNIE. The shapes of the containers are visually
different. The
‘new’ Nivea shower gel range is sold in rectangular
shaped containers with distinct indentations on
either side, clearly
to make the handling easier. They come in 250 ml and 500 ml
containers, whereas Koni’s shower gel comes
in a different
shape as described already, and is only available in 400 ml
containers. As between Koni’s shower gel and Beiersdorf’s

body lotion, there clearly can be no doubt about the different
shapes. The lid of Koni’s shower gel is wholly silver, as

compared to Nivea’s products, which, as stated already, have a
blue edge at the top.
[81]
The
high court rejected Koni’s contention that whatever
similarities there might be between the respective products, the
brand names served to distinguish them from each and excluded the
possibility of confusion. The issue received scant treatment by
the
high court, which said the following at paras 25 and 26:
‘
In
relation to the differing names “NIVEA” and “CONNIE”,
which the respondent places emphasis on, it has
been held that the
use of different names in otherwise similar get-ups does not
necessarily exclude the probability of deception.
In
Adidas
Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd
where two sport shoe brands were in issue, it was found, per Botha J,
that notwithstanding the difference in name and the undeniable

strength of one of the brands that there was still confusion.
The learned Judge held:
“
In
my opinion, taking into account all the circumstances referred to
above, the use of the different names in this case is insufficient
to
negative the deceptive effect on the buying public of the conspicuous
similarities in the appearance of the respective goods
of the
plaintiff and the defendant”.’
(Footnotes
omitted.)
The
high court also made reference to
Blue
Lion Manufacturing (Pty) Ltd v National Brands Ltd
[2001] ZASCA 62
;
[2001] 4 All SA 235
(A) to support its conclusion.
[82]
It
is necessary to examine in some detail the two cases relied on by the
high court. In
Adidas
,
[26]
the
court found that the main feature of the get-up of Adidas’ shoe
was not the name, but its
registered mark, comprising of three stripes, as applied to the shoe,
which the court found had been copied by the competitor.
At 538D-F
the court remarked:
‘
Having
regard to the
similarities
in the get-up of the plaintiff’s and the defendant’s
shoes, I find that in appearance they look strikingly
alike. I have
already found that the trade marks by themselves, i.e. the three
stripes and the four stripes respectively, positioned
on the shoes as
they are, are likely to cause deception or confusion.
There is no doubt that the additional common features in the get-up,
which are to be taken into account in the present enquiry,
namely the
serration of the edges of the stripes and the heel patch, heighten
very considerably the likeness in the visual impression
conveyed by
the appearance of the shoes.’
(Emphasis
added.)
[83]
With
regard to the names on the shoes, the court found that the claimant’s
name, ADIDAS, was not a prominent feature of the
get-up on the shoe,
as it appeared on the side of the shoe, which the court considered
‘not of a lasting nature’. The
name was also used in
conjunction with another fancy name, which, I assume, served to
detract from the name. It is in the light
of these considerations, in
particular the less prominent display of the ADIDAS name, that the
court found that the names on the
respective products did not exclude
the possibility of confusion. At 538H the court made an important
observation:
‘
The
use of different names in otherwise similar get-ups does not
necessarily exclude the probability of deception;
regard
must be had to all the circumstances, including the degree of
similarity of the get-ups without the manner in which the names
are
used
(cf., e.g., Chowles & Webster, op. cit. at pp. 326-7,
and the cases referred to there).’
(Emphasis
added.)
[84]
Similarly,
in
Blue
Lion
there
was no dispute about the similarity of the get-ups of the products in
issue (biscuits). However, the appellant
contended
that the respondent’s marks ‘TENNIS’, ‘BAKERS’
and the Bakerman logo, were distinguishable
from its mark ‘TEA
LOVERS’ and the Kwality Chef Device.
The court found
striking
similarities between the marks (at para 7) and concluded (at para 19)
that the Kwality Chef Device mark lacked prominence
and that the ‘TEA
LOVERS’ mark was designed with an attempt not to distinguish it
from that of the complainant manufacturer,
but rather to confuse the
two.
[85]
Given
these observations, it is my view that the high court’s
reliance on
Adidas
and
Blue
Lion
was
inapt, out of context and without appreciating the reasoning in both.
The cases are clearly distinguishable from the present
case in that
in both, the claimants’ reputation was strongly based on the
overall get-up without the prominence of a brand
name. The defendants
in both cases were found to have slavishly imitated the styles and
representations of their competitors’
marks and the overall
get-ups. That was also the case in
F
Hoffman-la Roche and Co AG and Another v DDSA Pharmaceuticals Ltd
1969 FSR 410
(CA), a case which concerned capsules. The applicant's capsules had
two distinctive colours, but the name of the product was hardly

legible on the capsules. It was found that the shape and colours of
the capsules were so distinctive that the notional customer
would not
have had regard to the name, but to the shape and colours only.
[86]
That
is not the case in the present matter
,
where the distinct brand names are conspicuously and prominently
displayed on the competing products. As I demonstrate below,
the high
court’s findings are at odds with authorities and views of
leading authors, locally and abroad. A survey of those
shows that it
takes a strong case to establish passing off on get-up alone. This is
because consumers will not necessarily associate
a get-up with a
trader’s product, but would likely use the trader’s name
for that purpose.
[27]
[87]
In
this regard, I consider the views of leading authors.
Dean
& Dyer
observe:
‘
Often
the get-up of one product can be distinguished from that of another
as a result of a very different trade name mark appearing
on the
packaging. Where a trade mark appears very prominently and clearly
distinguishes the one product from the other, it would
be difficult
to sustain a passing off cause of action based on a similar get-up of
the products. Where a trader feels that his
get-up has been copied,
but the copied product contains a very different trade mark, he would
need to show: [t]hat his get-up has
a reputation in itself that
excludes
the trade mark; and confusion on the part of the consumers is still
possible despite
the
fact that the trade marks are so different. … If the trade
mark is very well known, the likelihood of confusion as a
result of
similarity between the respective get-ups is reduced.’
[28]
Webster
and Page
explain:
‘
Where
the get-up has been used in conjunction with a name or other mark,
the plaintiff faces a two-fold difficulty: first, in establishing
his
reputation in the get-up excluding the mark, and second, in showing
that whatever mark the defendant has used in conjunction
with the
get-up does not exclude the likelihood of deception. The greater the
reputation enjoyed by the defendant’s word
mark and the greater
the degree of prominence it enjoys, the less the likelihood that the
public will be misled by the use of a
get-up which is similar to that
of the plaintiff. …’
[29]
Professor Wadlow
sums up the point:
‘
The
difficulty confronting the claimant in all actions for passing-off
based on get-up is that it is unusual for one trader's goods
to be
distinguished from those of his competitors exclusively, or even
primarily, by their get-up. Normally a brand name or other
mark is
chosen and given prominence and it is this on which consumers are
expected and encouraged to rely. To make out a case based
solely on
similarities of get-up the claimant must show that deception is
likely to notwithstanding the absence of his own brand
name on the
defendant's goods and the likely presence there of the defendant's
brand name and perhaps other distinguishing matter.
Not surprisingly,
the cases in which passing-off has been found have predominantly been
ones of deliberate deception.’
[30]
[88]
The
sum total of what these eminent authors emphasise is that the public
is often more likely to focus on the brand name of a particular

product rather than any other feature. Therefore, a competitor whose
mark or name is clearly distinguishable from that of the other
brand,
is likely to avoid a finding of passing off. This approach has found
expression in a number of decisions, stretching back
to the turn of
the last century. I consider a few below.
[89]
In
Schweppes
Ltd v Gibbens
(1905)
22 RPC 601
(HL), the court considered rival soft drinks which were
sold in similarly embossed bottles bearing labels of very similar
shape,
design and colour scheme, and wording in a similar layout and
font. However, the products respectively bore the distinctively
different
brand names ‘SCHWEPPES’ and ‘GIBBENS’
prominently on the label. Lord Halsbury LC held at 606-7:
‘
The
question that we have to determine is whether in selling the bottle a
person is likely to be deceived by the resemblance of
the one thing
to the other; and if a person is so careless that he does not look,
and does not … “treat the label
fairly,” but takes
the bottle without sufficient consideration and without reading what
is written very plainly indeed upon
the face of the label on which
the trader has placed his own name, then you certainly cannot say he
is deceived…’
[90]
W
H Burford & Sons Ltd v G Mowling & Son
[1909] HCA 83
;
(1909) 8 CLR
212
concerned laundry soaps. The plaintiff marketed its soap under
the name SIGNAL SOAP. Later, the defendant entered the market using

the name TULIP SOAP. The defendant’s packaging was of the same
material, shape, size, and colour and ‘general get-up’
as
that of the plaintiff’s soap. In a claim for passing off by the
plaintiff, it was held (at 218-219) that the special characteristic

that distinguished the plaintiff’s soap from what was common to
the trade was the description SIGNAL SOAP appearing in large
letters
on its face; and that while the defendant’s packaging was of
the same material, shape, size, and colour and ‘general
get-up’
as that of the plaintiff’s soap, the distinguishing
characteristics of the two products – the names of
the products
printed on the cartons – were sufficient to make it ‘impossible
for anyone who can see to mistake the
defendant’s package for
the plaintiff’s; and that this was so despite similarities in
the ‘general shape and
form of the lettering on the other sides
of the packages’. The plaintiff’s claim was accordingly
dismissed.
[91]
In
Reckitt
& Colman
SA
v SC Johnson & Son SA (Pty) Ltd
1993
(2) SA 307
(A)
the
parties competed in metal polishes. The appellant manufactured and
marketed its well-known Brasso metal polish under a distinctive

get-up in metal containers. Brillo, also a well-known trade mark, had
been used in connection with scouring pads, but later manufactured

and sold a brass polish. Brasso complained that Brillo had
consciously adopted the identical type of container used by it for
some of its products. Despite the products sharing similarities in
get-up, Harms JA did not find a reasonable likelihood of confusion
between
the products because ‘each container is clearly marked with the
respective trade marks which are not deceptively or
confusingly
similar…’ (para 318G-H).
[92]
In
Moroccanoil
Israel Ltd v Aldi Stores Ltd
[2014]
EWHC 1686
(IPEC)
reliance
was placed on a combination of a trade name and get-up.
The court
found no passing off notwithstanding the clear similarities in the
get-up of two hair products. The claimant made and
sold hair
products, including a hair oil marketed under the name ‘MOROCCANOIL’.
The defendant brought onto the market
a hair oil product under the
name ‘MIRACLE OIL’. The two products had very similar
get-up, including the turquoise
colour; the orange graphics; the
shape of the bottle; and the colour of the bottle and cap. In a
passing off claim, the key issue
was whether or not a
misrepresentation had occurred. At para 31 the court remarked:
‘
Goods
are almost always referred to by their trade names, not their get-up.
Get-up may play a greater role in the recall and recognition
of a
particular product, but if the respective names of the claimant’s
and defendant’s goods are distinctive, a misrepresentation
by
reason of similar get-up is likely to depend on the relevant public
not noticing the name on the defendant's product, or on
a label
attached to it…
’
After
considering the evidence, the court concluded that the claimant’s
goodwill was attached primarily to the name ‘MOROCCANOIL’

(and not the get-up alone) and accordingly found that there was no
misrepresentation and therefore no passing off.
[93]
Lastly,
in
Gama
Healthcare
the
court considered a case of passing off between competitors in
disinfectant and detergent wet wipes. The claimant, Gama, complained

that the get-up of the defendant, PAL’s Medipal disinfectant
and detergent wet wipes was so similar to the packaging
of
its Clinell wipes that it was likely to lead members of the
trade to believe that the PAL’s wipes were those of Gama
or
otherwise connected with it. The goodwill claimed lay in the use
of certain colour combinations. The court observed, among
other
things, that the shade of green used on both parties’
disinfectant wipe packages ‘is extremely similar if not

identical, and there is (in broad terms) a similar use of white
horizontally across the front of the package.’
[94]
Based
upon those features alone, the court concluded, ‘there would be
a possibility for deception based upon imperfect recollection,
or an
assumption that one pack is an updated version of the other.’
Despite these observations, and after identifying
certain differences
in the packaging of the competing products, the court concluded the
main distinguishing features were the distinctive
brand names of the
products. Michaels J concluded (at para 55d) that ‘[t]he
parties’ very different trade names are
clearly present on the
front of the packs. Indeed, both parties use their names prominently
on the upper side of the pack…’
[31]
[95]
Back
to the present case, the most prominent feature of the Koni’s
shower gel get-up is the CONNIE mark, which, as I have
already said,
is different and distinct from the Beiersdorf’s famous NIVEA
mark. The latter, in turn, is the most prominent
feature of the
get-up of NIVEA MEN products. In my view the parties’
respective marks, together with the different features
of the
respective get-ups referred to earlier, serve to distinguish the
products from each other, ie Koni’s shower gel from

Beiersdorf’s NIVEA MEN products. These features clearly
identify the product in such a way that the notional purchaser of
the
products in issue would not be misled.
[96]
Indeed,
it would take a particularly careless purchaser to end up with a Koni
shower gel instead of Beiersdorf’s Nivea body
lotion or shower
gel. To purchase a wrong product, such a purchaser would have to
totally ignore the CONNIE trade mark so clearly
and prominently
displayed on the Koni shower gel. That is not the postulated notional
consumer when one is concerned with alleged
passing off by imitation
of get-up, who is ‘neither the very careful nor the very
careless buyer, but an average purchaser’,
as explained in
Blue
Lion
at para 3.
[32]
[97]
One
should also consider the class of customers who are likely to
purchase the goods and accordingly, who the notional average
purchaser is likely to be, in other words, the potential end
customers.
[33]
In
the present case, judging by the promotional material adduced by both
parties in support of their respective cases, the end customer
would
most likely be an urbane and discerning man with some brand awareness
and loyalty.
[98]
It
can therefore not seriously be suggested such a purchaser would
identify NIVEA MEN products with reference only to the colour

combination of blue, white, silver or any colour. If anything, given
the reputation Beiersdorf has built around its well-known,

distinctive NIVEA trade mark, I perceive that the notional purchaser
would likely identify any of Beiersdorf’s Nivea products,

including its NIVEA MEN products, by that trade mark, which, as I
have already said, is
the
immediate striking feature of all its products, irrespective of the
get-up applied to any product.
I
would venture to say that any beauty product, irrespective of its
shape, colour, or overall get-up, would be associated with Beiersdorf

in the mind of relevant public as long as it is embossed with the
well-known distinctive blue, white and silver NIVEA trade mark.
[34]
[99]
To
hold, as the high court did, that that trade mark would not serve any
distinguishing function to prevent a misrepresentation,
ignores the
essential function of a trade mark, which is that it is a badge of
origin.
[35]
It
is unsurprising that Beiersdorf did not rely on trade mark
infringement. Its case would have been doomed to fail, as the
respective
trade marks are undeniably distinct and not confusingly
similar.
[100]
Thus,
irrespective of any similarities there might be in the get-ups of the
respective products, it must be borne in mind that
beauty
products, in this case shower gels, are ordinary articles of
consumption. By their nature, products of different manufacturers

will bear some resemblance to each other, as demonstrated with
reference to other products in paras 58 and 75 above. What is
important
is for each trader to distinguish their products so as to
avoid confusion. To my mind,
the
adoption by Koni of its CONNIE trade mark, contrasted to Beiersdorf’s
well-known NIVEA trade mark, immediately directs
the public’s
attention to the fact that they are dealing with a different product
and not Beiersdorf’s. Koni’s
trade mark was undoubtedly
designed to distinguish its products from those of other brands. In
the result I conclude that there
is no likelihood of confusion
between Beiersdorf’s and Koni’s respective products.
[101]
Lastly,
I consider the issue of actual confusion. In its endeavour to prove
this, Beiersdorf put up as evidence an affidavit of
Ms Elizabeth
Serrurier as an average consumer who had mistakenly bought the Koni
shower gel thinking it was a Nivea product. What
Beiersdorf failed to
disclose was that Ms Serrurier was an attorney associated with Adams
and Adams, its attorneys of record. This
was only disclosed in this
Court during the hearing, when a member of the bench enquired from
counsel whether Ms Serrurier was
attached to Beiersdorf’s
attorneys of record, which counsel confirmed. Beiersdorf knew very
well that had it disclosed Ms
Serrurier’s true identity, her
evidence would have carried little, if any weight at all. In the
absence of any explanation,
an irresistible inference must be that
this was a conscious effort to mislead the court.
[102]
By
reason of her association with Beiersdorf’s attorneys, Ms
Serrurier was not truly within the class of ordinary consumers.
It follows
that her evidence must be discarded, and the case be approached on
the basis that there was no actual confusion. Although
the absence of
actual confusion is not fatal, it is not insignificant. There is
always value to such evidence, especially where,
as is the case here,
Beiersdorf had the opportunity to present it (if it existed). There
is also nothing in Beiersdorf’s
evidence of marketing or
consumer survey during the relevant period to
indicate
that there might have been any material confusion amongst consumers
as to the trade source of Koni products.
[103]
It
must be borne in mind that Koni’s shower gel was introduced to
the market in October 2015. The application for an interdict
was
launched over two years later, in December 2017. By the time the last
affidavit in the application was filed in August 2018,
the competing
products had been sold side by side for two years and ten months –
almost three years. Given this lengthy period
during which Koni’s
men’s shower gel has been on the market, if there had been any
confusion, Beiersdorf would have
found evidence of it. The absence
thereof is very material unless satisfactorily explained.
[36]
Given
that there is no explanation, the ineluctable conclusion must be that
there simply was no confusion. The fact that Beiersdorf
was so
desperate to the point of presenting misleading evidence, fortifies
this conclusion.
[104]
In
Pioneer
Foods (Pty) Limited v Bothaville Milling (Pty) Limited
[2014] ZASCA 6
;
[2014] 2 All SA 282
(SCA), it was observed that 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. Another method identified by the court for
detecting confusion
is to undertake properly constructed consumer
surveys (at para 26). None of these was done in this case.
[105]
In
sum, I conclude that Beiersdorf had failed to make out a case of
passing off in respect of Koni’s shower gel, on both legs,
ie
to prove reputation in its get-up and to establish the likelihood of
confusion between its products and those of Koni. In respect
of the
latter, my value judgment, based on my first impression of the
products, is that there is nothing confusingly similar between
them.
In a constitutional context such as ours, which guarantees freedom of
trade, among others, Beiersdorf’s rights in protecting
the
commercial advantages flowing from its efforts and investment must be
balanced against Koni’s right, without misrepresentation,
to
attract purchasers for its products by what appears to it to be an
effective means. Also, there is the right of the consumer,
without
being deceived, to select between competing goods.
[106]
In
all the circumstances, I would uphold the appeal with costs of two
counsel where so employed, and substitute the order of the
high court
with one dismissing the application with costs of two counsel. I
agree with the order of the majority to refer the conduct
of
Beiersdorf’s attorneys to the Legal Practice Council for
investigation.
_____________________
T
M Makgoka
Judge
of Appeal
APPEARANCES
For
Appellant:
A J R Booysen (with him A Roestorf)
Instructed
by:
De
Kooker Attorneys, Roodepoort
Phatshoane
Henney Attorneys, Bloemfontein
For
Respondent:
R Michau SC (with him L Harilal)
Instructed
by:
Adams
& Adams, Pretoria
Honey
Attorneys Inc, Bloemfontein
[1]
Capital
Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc
and
Others
1977 (2) SA 916
(A) at 929C.
[2]
Pioneer
Foods (Pty) Ltd v Bothaville Milling (Pty) Ltd
[2014]
ZASCA 6
;
[2014]
2 All SA 282
(SCA) para 7.
[3]
Caterham
Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd and Another
[1998] ZASCA 44
;
1998
(3)
SA 938
(A) para 20.
[4]
Caterham
Car Sales
fn
3 para 22.
[5]
Hollywood
Curl (Pty) Ltd and Another v Twins Products (Pty) Ltd
1989
(1) SA 236
(A) at 249J;
Adidas
AG and Another v Pepkor Retail Limited
[2013] ZASCA 3
para 29.
[6]
Adidas
AG
fn
5 para 29.
[7]
Reckitt
and Colman Products Ltd v Borden Inc and others
[1990]
UKHL 12
,
[1990] WLR 491
;
[1990] 1 All ER 873
(HL) at 881 per Lord
Oliver of Aylmerton.
[8]
Orange
Brand Services Ltd v Account Works Software (Pty) Ltd
[2013]
ZASCA 158
para 14.
[9]
Inland
Revenue
Commissioners
v Muller & Co’s Margarine, Ltd
[1901]
AC 217
at 223.
[10]
A
P Boppert ‘Should goodwill remain a protectable intangible
asset after business cessation?’ Queen Mary University
of
London – Centre for Commercial Law Studies (2017).
[11]
Star
Industrial Co Ltd v Yap Kwee Kor (t/a New Star Industrial Co)
[1976] FSR 256.
[12]
Boppert
fn 10 at 8.
[13]
Blue
Lion Manufacturing (Pty) Ltd v National Brands Ltd
[2001]
ZASCA 62
;
2001 (3) SA 884
(SCA) para 4.
[14]
There seems
to be some confusion in the papers as to the exact date, as
somewhere reference is made to December 2015 as the date
of the
launch of Koni’s men range. However, for present purposes, I
assume the correct date to be October 2015, based on
the promotional
material for the launch event of the men’s range.
[15]
Williams
t/a Jennifer Williams and Associates v Life Line Southern Transvaal
[1996] ZASCA 46
;
1996 (3)
SA 408
(A) at 418D-H.
[16]
Referred to
with approval in
Caterham
Car Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd and Another
[1998]
ZASCA 44
;
1998 (3) SA 938
(SCA);
[1998] 3 All SA 175
(A) paras 21
and 22.
[17]
NIVEA
MEN Brand Health Tracking Summary South Africa February 2017 page 5.
[18]
See also
Blue
Lion Manufacturing (Pty) Ltd v National Brands Ltd
[2001]
ZASCA 62
;
2001 (3) SA 884
(SCA) para 4;
Schultz
v Butt
1986 (3) SA
667
(A) at 681A-C;
ConAgra
Inc v McCain Foods (Aust) Pty Ltd
(1992) 33 FCR at 345.
[19]
O Dean and A
Dyer
Dean
& Dyer
Introduction
to Intellectual Property Law
(2014) at
174.
[20]
Blue Lion
fn 7 para 3.
[21]
Reckitt
& Colman
SA
(Pty) Ltd v SC Johnson & Son SA (Pty) Ltd
1993
(2) SA 307
(A) at 317C.
[22]
Adidas
Sportschuhfabriken Adi Dassler KG v Harry Walt and Co (Pty)
Ltd
1976 (1) SA 530
(T) at 531H-532A.
[23]
This was the case, for
example, in the following cases:
Century
City Apartments Property Services CC & Another v Century City
Property Owners’ Association
2010
(3) SA 1
(SCA) (‘
Century
City’ and ‘Century City Apartments’)
;
Capital
Estate and General Agencies (Pty) Ltd & Others v Holiday Inns
Inc. & Others
1977
(2) SA 916
(A);
3
Jerks Manufacturing CC v Vital Health Foods (Pty) Ltd
[2011] ZAWCHC 491
(
Cholesterol
Ease v CholesterolEase);
Ramsay
Son and Parker (Pty) Ltd v Media 24 Ltd and Another
[2005] ZAWCHC 8
; 2008 BIP 149 (C) (Getaway v Wegbreek);
10
Royal Berkshire Polo Club Trade Mark
[2001]
RPC 643
(‘the Polo mark’)
;
Compass
Publishing BV v Compass Logistics Ltd
[2004] EWHC 520
(Ch);
[2004] RPC 41
(
Compass
v Compass Logistics)
;
Brian Boswell
Circus (Pty) Ltd and Another v Boswell-Wilkie Circus (Pty) Ltd
1985
(4) SA 466
(A) (Brian Boswell Circus v Boswell-Wilkie Circus).
[24]
Contrast,
for example,
Sea
Harvest Corporation (Pty) Ltd v Irvin & Johnson Ltd and Another
[2011] ZAWCHC 35
(WCC)
,
where, in addition to substantially copying the applicant’s
get-up, the respondent had also adopted a confusingly similar
trade
name – ‘OVEN CRUNCH’ as compared to the
applicant’s ‘OVEN CRISP’ (paras 43-47)
.
[25]
See also
Phones
4U Ltd v Phone4U.co.uk Internet Ltd
[2006]
EWCA Civ 244
,
[2007] RPC 5
at 16.
[26]
Adidas
Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd
1973
(1) SA 530 (T).
[27]
See Interlego AG v Croner
Trading Pty Ltd
(1992)
22 IPR 65
at 103-4; See also Collins Debden Pty Ltd v
Cumberland Stationery Co Pty Ltd (No 2)
[2005] FCA 1398
paras 33–34.
[28]
Dean and
Dyer at 174.
[29]
C E Webster
and I Joubert
Webster
and Page South African Law of Trade Marks
4 ed (2004) at 15-73 par 15.26.8.
[30]
C Wadlow
The
Law of Passing-Off: Unfair Competition by Misrepresentation
4
ed (2011) at 8-133.
[31]
See also
Nutrientwater
Pty Limited v Baco Pty Limited
[2010] 2 FCA 2
;
Pioneer
Foods (Pty) Limited v Bothaville Milling (Pty) Limited
[2014] ZASCA 6
;
[2014] 2 All SA 282
(SCA) paras 11 and 13;
George
East Housewares Ltd v Fackelmann Gmbh & Co KG & Anor (Rev 1)
[2016] EWHC 2476
(IPEC) para 34;
Quad
Africa Energy (Pty) Ltd v The Sugarless Company (Pty) Ltd and
Another
[2020] ZASCA 37
;
[2020] 2 All SA 687
(SCA);
2020 (6) SA 90
(SCA)
para 38.
[32]
See also
Norman
Kark Publications Ltd v Odhams Press Ltd
[1962]
1 WLR 380
at 383.
[33]
See
Premier
Trading Co Ltd & Another v Sporttopia (Pty) Ltd
[1999]
ZASCA 48
;
2000 (3) SA 259
(SCA) at 273B.
[34]
In
Daimlerchysler
AG v
Alavi
[2000]
EWHC Ch 37
para 19 where Pumfrey J captured the applicant’s
submission thus, ‘Essentially, anything marked MERCEDES or
MERCEDES
BENZ would be associated with DaimlerChrysler in the minds
of the relevant public.’
[35]
Compare, for example,
Converge (Pty) Ltd
v Woolworths Ltd
2003 BIP 292 (C) at 298.
[36]
See
Glaxo
Wellcome UK Limited and Anor v Sandoz and Ors
[2019] EWHC 2545
,
referring to
Kerly’s
Law of Trade Marks and Trade Names
(16
th
ed)
at 23-020.