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2023
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[2023] ZAFSHC 450
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Akzonobel Coatings International B.V and Another v Dumax Paints (Pty) Ltd and Others (1723/2023) [2023] ZAFSHC 450; 2023 BIP 10 (FB) (9 November 2023)

IN
THE HIGH COURT OF SOUTH AFRICA
FREE
STATE DIVISION, BLOEMFONTEIN
Reportable:
YES
Of
Interest to other Judges: NO
Circulate
to Magistrates: NO
Case
no 1723/2023
In
the matter between:
AKZONOBEL
COATINGS INTERNATIONAL B.V
1
st
Applicant
AKZONOBEL
SOUTH AFRICA (PTY) LTD
2
nd
Applicant
and
DUMAX
PAINTS (PTY) LTD
1
st
Respondent
BOINKO
TRADING & INVESTMENTS (PTY) LTD
2
nd
Respondent
THE
COMMISSIONER OF THE COMPANIES &
INTELLECTUAL
PROPERTY COMMISSION
3
rd
Respondent
CORAM:
JP DAFFUE J
HEARD
ON:
19 OCTOBER 2023
DELIVERED
ON:
09 NOVEMBER 2023
ORDER
1.
The first and second respondents are interdicted and restrained in
terms of
s 34(1)(c)
of the
Trade Marks Act 194 of 1993
from
infringing the second applicant’s well-known trade mark
registration number 1931/00131 Dulux in class 2 by using in
the
course of trade in relation to any goods or any services, any name,
trade mark, trading style, company or domain name identical
or
similar to the second applicant’s well-known registered Dulux
trade mark, including but not limited to the name and trading
style
DUMAX and/or DUMAX PAINTS and/or any other similar trade mark to the
second applicant’s aforementioned well-known registered
Dulux
trade mark.
2.
The first and second respondents, are ordered to pay, jointly and
severally, the one to pay the other
to be absolved, the applicants’
costs, including the costs consequent upon the employment of senior
counsel.
JUDGMENT
INTRODUCTION
[1]
Two rival traders in the paint industry are at loggerheads.
The one
trader is a renowned trader whose registered trade mark, Dulux, has
been established internationally and nationally over
many decades.
The other trader is a new entrant into the market, having been
established in the beginning of 2021. It started to
use the trade
name, DUMAX, thereafter. Two main issues are to be considered. First,
the get-up of the two rival traders. Second,
the respondents’
entitlement to use the name DUMAX, either on its own, or as part of
the name DUMAX PAINTS.
[2]
The application papers are in excess of 800 pages. The
founding,
answering and replying affidavits consist of just over 100 pages,
whilst the remainder of the documents are made up of
numerous
annexures, including websites, photographs and numerous other items.
THE
PARTIES
[3]
The first applicant is Akzonobel Coatings International
B.V., a Dutch
company and wholly owned subsidiary of Akzonobel N.V., a Dutch
multinational company which creates and manufactures
paints and
performance coatings for both industry and consumers worldwide with
its headquarters in Amsterdam. The second applicant
is Akzonobel
South Africa (Pty) Ltd, a South African company. Akzonobel N.V. owns
100% of the issued share capital of both applicants.
The second
applicant is engaged in the manufacturing, marketing and distribution
in South Africa of paints, varnishes and related
products and
services primarily under the Dulux trade name. Adv R Michau SC
appeared for the applicants, instructed by Spoor and
Fisher, c/o
Phatshoane Henney Attorneys, Bloemfontein.
[4]
The first respondent is DUMAX PAINTS (Pty) Ltd, a South
African
company with its registered address in Bloemfontein, which trades
under the name DUMAX PAINTS. It manufactures, sells and
distributes
paints and varnishes in South Africa under the trade name DUMAX. The
second respondent is Boinko Trading & Investments
(Pty) Ltd with
registered address at Kathu, Northern Cape. This company also claims
rights to the DUMAX trade mark in South Africa.
The sole director of
both companies is Mr Kagiso Isaac Nkono. Adv P Mthombeni appeared on
behalf of the respondents, instructed
by Motlhamme Attorneys,
Bloemfontein.
[5]
The third respondent is the Commissioner of the Companies
and
Intellectual Property Commission who played no role in the
proceedings.
THE
RELIEF SOUGHT
[6]
The applicants sought a final interdict in terms of s
34(1)(a) of the
Trade Marks Act 194 of 1993 (the TMA), restraining the first and
second respondents from infringing the first and
second applicants’
registered trademarks as more fully set out in prayers 1 to 3 of the
notice of motion as well as second
respondent’s trade mark
registration in terms of s 34(1)(b) as contained in prayer 4.
[7]
Second, a final interdict was sought in terms of s 34(1)(a)
in the
case of the trade mark registration number 2016/01648 MAXICOVER.
[8]
Third, a final interdict was sought in prayer 5 in terms
of s
34(1)(c) against the respondents, restraining them from infringing
the second applicant’s aforesaid trade mark registration
number
1931/00131 Dulux by using in the course of trade in relation to any
goods or any services, any name, trade mark, trading
style, company
name or domain name identical or similar to the Dulux trade mark,
including but not limited to the name and trading
style DUMAX and/or
DUMAX PAINTS and/or any other similar trade mark to the second
applicant’s aforesaid well-known registered
Dulux trade mark.
[9]
Fourth, a final interdict was sought against the two
respondents,
restraining them from passing-off their goods and/or services as that
of the applicants.
[10]
Fifth, an order was sought in terms of s 11(2)(a)(iii) read with
s
160(3)(b)(ii)
of the
Companies Act 71 of 2008
, ordering the first
respondent to change its company name, failing which the third
respondent be ordered to act accordingly as
set out in prayers 8 and
9.
[11]
Finally, and except for a prayer for costs, including the costs of
two counsel,
the applicants sought an order in prayer 10 against the
first respondent pertaining to the payment of royalties as
contemplated
in
s 34(3)(d)
, after complying with directions to be
issued regarding the requisite enquiry.
THE
COMMON CAUSE FACTS
[12]
The applicants are the owners of several trade marks and trade mark
registrations
with the name Dulux on its own or with other words such
as ‘Specialist Paint Centre’, ‘Cover-all’ and
‘MaxiCover’.
In summary, the applicants are in the paint
industry, specialising in the manufacturing and selling of paint
products and advisory
services in that regard.
[13]
The success of the Dulux brand internationally and in this country
and its
enormous reputation and goodwill as a well-known trade mark
is beyond doubt.
[14]
The first respondent as a company was incorporated in January 2021
where after
it started selling paint products under the trade name
DUMAX and/or DUMAX Paints.
[15]
The first respondent copied an identical image from the first
applicant’s
website onto its website in order to promote its
products. After demand, it removed the image and this issue does not
need any
further attention, save insofar as it has a bearing on the
respondents’ deponent’s
bona fides
.
[16]
The applicants’ slogan as used on its products is ‘[T]he
future
of paint today’, whilst the respondent’s slogan is
‘[P]ainting the future’.
[17]
Although the first respondent is using the trade mark, DUMAX, the
second respondent
has filed a trade mark application in respect of
DUMAX.
[18]
In terms of the
second respondent’s application for a trade mark, the
respondents now use the sign TM. The applicants filed
a caveat
against the trade mark application and intend to oppose the
application, once advertised in terms of the TMA.
[1]
[19]
The following are the applicants’ various trademarks with the
second
respondent’s mark, conditionally approved by the
Registrar of Trade Marks, thereunder:
[20]
On the applicants’ get-up one finds a flourish device on top of
the word
Dulux, whilst the first respondent is using a rainbow-like
device in conjunction with the DUMAX trade mark. The last-mentioned
device is running down diagonally between the ‘M’ and the
‘A’ and forms part of the left leg of the ‘A’.

In both instances the parties make use of red, orange, yellow, green
and blue colours. The following are some of the get-ups used
by the
parties:
ISSUES
IN DISPUTE
[21]
Respondents denied that the applicants had proven the requisites to
obtain
a final interdict and in particular denied that they had
proven a clear right.
[22]
The respondents denied that the applicants are entitled to any
relief, either
based on passing-off, or infringement of the Dulux
trade marks.
[23]
The respondents submitted that the application is premature. They
relied on
the conditional approval of the second respondent’s
trade mark by the Registrar of Trade Marks and the pending procedure
in which the applicants may cooperate if they wish to oppose that
application.
STATUTORY
PROVISIONS PERTAINING TO INFRINGEMENT OF A REGISTERED TRADE MARK
[24]
Section 34
of the TMA is the relevant section. It reads as follows:
‘
34
Infringeme
nt
of registered trade mark
(1)
The
rights acquired by registration of a
trade
mark shall be infringed by
-
(a)
the
unauthorized
use
in
the course of trade in relation to goods or services in respect of
which the trade mark is registered,
of
an identical mark or of a mark so nearly resembling it as to be
likely to deceive or cause confusion
;
(b)
the
unauthorized
use
of
a mark which is
identical
or similar
to
the trade mark registered, in the course of trade
in
relation to goods or services which are so similar
to
the goods or services in respect of which the trade mark is
registered, that in such use there
exists
the likelihood of deception or confusion
;
(c)
the
unauthorized
use
in
the course of trade in relation to any goods or services of a mark
which is
identical
or similar
to
a trade mark registered, if
such
trade mark is well known in the Republic
and
the
use
of the said mark would be likely to take unfair advantage of, or be
detrimental to, the distinctive character or the repute
of the
registered trade mark
,
notwithstanding
the absence of confusion or deception
:
Provided that the provisions of this paragraph shall not apply to a
trade mark referred to in
section 70
(2).
(2)
……
(3)
Where
a trade mark registered in terms of this Act has been infringed, any
High Court having jurisdiction may grant the proprietor
the following
relief, namely-
(a)
an
interdict;
(b)
….;
(c)
….;
(d)
in
lieu of damages, at the option of the proprietor,
a reasonable
royalty
which would have been payable by a licensee for the use
of the trade mark concerned, including any use which took place after
advertisement
of the acceptance of an application for registration
and which, if taking place after registration, would amount to
infringement
of the rights acquired by registration.
(4)
For
the purposes of
determining
the amount of
any
damages or
reasonable
royalty to be awarded
under
this section,
the
court may direct an enquiry to be held
and
may prescribe such procedures for conducting such enquiry as it may
deem fit.
(5)
…..’ (My emphasis)
[25]
It will be recalled that the applicants relied for relief on all
three subsections
of s 34(1), as well as the common law remedy of
passing-off. I shall deal with the submissions under the next
heading.
EVALUATION
OF THE EVIDENCE AND THE PARTIES’ SUBMISSIONS
Change
of 1
st
respondent’s company name
[26]
The first issue to be addressed is the applicants’ reliance on
s 11
of the
Companies Act in
seeking an order that the first
respondent shall change its company name, to wit Dumax Paints (Pty)
Ltd. In order to determine
whether a company name satisfies the
requirements of the
Companies Act, one
must have regard to
s 11
of
the
Companies Act. Whilst
there is an inter-relatedness between the
Companies Act and
the principles of trade mark law, there are
distinct differences of importance. No doubt, the relevant enquiry in
respect of the
Companies Act is
the name alone and not the entire
trade mark as is the case in the TMA. Furthermore, the respective
goods and/or services in respect
of which the trade mark relied upon
is registered, have no bearing on the question of confusion in
relation to company names. In
any event, this issue does not have to
be considered by the court for the reason mentioned in the next
paragraph.
[27]
The applicants relied
inter alia
on the registered trade mark,
Dulux, in claiming trade mark infringement, but there is no company
registered with the CIPC under
such name. Mr Michau correctly
conceded during oral argument that this court could not grant the
relief sought in terms of
s 11(2)(a)(iii)
read with
s 160(3)(b)(ii)
of the
Companies Act. The
correct entity to deal with the issue is
the Companies Tribunal, which has to consider any confusion between
company names as is
evident from the various rulings of the Companies
Tribunal referred to by Mr Michau in his heads of argument. The
relief sought
in prayers 8 and 9 of the notice of motion should be
refused.
Passing-off
[28]
Passing-off is a
common law remedy and concerns a trader’s get-up, including its
trading name. In
Capital
Estate and General Agencies Pty Ltd v Holiday Inns Inc and Others
[2]
the court defined passing-off as follows:
‘
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.’
[29]
It is trite that
proof of passing-off requires proof of reputation, misrepresentation
and damage. Reputation is not an issue in
casu
as the Dulux trade
mark has been in substantial use for decades. The use may also be
inferred from the extensive sales and marketing
of Dulux products
which have been conceded by the respondents.
[3]
Whether
a mark is well-known has been considered in
Truworths
Ltd v Primark Holdings.
[4]
The manner
and scale of the use of a trade mark can in itself be sufficient to
warrant a conclusion that the relevant public regards
it as
distinctive of its owner.
[5]
[30]
The use of
different names in otherwise similar get-ups does not necessarily
exclude the probability of deception. In
Blue
Lion Manufacturing
(Pty)
Ltd v National Brands Ltd
[6]
(Blue
Lion)
the
competing marks were ‘Tea Lovers’ and ‘Tennis
biscuits’. The Supreme Court of Appeal
[7]
emphasised in
Blue
Lion
that
the fact that rival traders choose to imitate their competitors’
get-up and then seek to maintain their imitation suggests
that they
believe that the imitation confers some advantages on them that
different or original get-ups would not provide.
In
that case the court referred to the competitor’s explanation as
to why it changed the wrappings of its Tea Lovers biscuits
to
identify so closely with that of National Brands  as a ’sheer
evasion’.
[8]
I have reason
to believe that the respondents’ explanation
in
casu
is
of a similar nature. I deal with this in detail hereunder. Suffice to
say at this stage that they obviously elected the name
DUMAX in order
to sail as close as possible to the wind. But, as is trite and
confirmed in numerous judgments of our courts, ‘imitation
is
the lifeblood of competition’ and the ‘bare imitation of
another’s product, without more, is permitted.’
[9]
[31]
In
Quad
Africa Energy (Pty) Ltd v Sugarless Co (Pty) Ltd and Another
[10]
the Supreme Court
of Appeal had to consider passing-off as well as trademark
infringement. Pertaining to the packaging of the rival
traders, the
court dealt with the similarities, but found there were overwhelming
dissimilarities, especially in respect of the
logo’s.
[11]
In that case the trade marks, Sugarless and Sugarlean, formed part of
the get-up.
[32]
The latest
judgment on passing-off is
Dart
Industries Inc and Another v Botle Buhle Brands (Pty) Ltd and
Another.
[12]
The Supreme Court
of Appeal had to deal with the similarities between hourglass shaped
bottles of two competitors, Tupperware’s
Eco bottles and the
Botle Buhle bottles. The court emphasised that ‘the law against
passing-off is not designed to grant
monopolies in successful
get-ups’ and that a certain measure of copying is permissible.
Furthermore, in order to reach a
conclusion that confusion is likely,
the entire get-up of the respective products must be 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. In this case the words
‘Tupperware’ and
‘Botle Buhle’ embossed on the bottles did not assist to
differentiate as they were inconspicuous.
The court concluded that
the requirements for passing-off were met. It accepted,
[13]
based on a
dictum
in
Pioneer
Foods (Pty) Ltd v Bothaville Milling (Pty) Ltd
[14]
that if there is a likelihood of confusion, or deception, there is
usually a likelihood that damage will follow.
[33]
In casu
, the dissimilarities are obvious. I refer to the
examples of the get-ups of the two rival parties as shown above.
Having considered
the authorities quoted above, I am not convinced
that the applicants are entitled to relief based on passing-off.
However, this
is not the end of the matter as will become clear in
the next paragraphs.
Premature
application
[34]
The respondents
submitted that the applicants’ application is premature and
should be dismissed for that reason only. They
incorrectly alleged
that the first respondent had applied for registration of the DUMAX
mark as a trade mark which application
had been accepted
conditionally.
[15]
This is not
correct. The objective evidence shows that the second respondent has
applied for registration of the trade mark and
obtained conditional
rights. The respondents also submitted that if an interdict would be
granted, this court would effectively
hamstring the Registrar of
Trade Marks to consider the pending trade mark application.
Consequently, they averred, the applicants
should lodge their
objections against the trade mark application, once it is advertised
as provided for in
s 21
of the TMA.
[35]
The applicants
have a totally different approach. According to them the respondents
are confusing trade mark infringement proceedings
with trade mark
opposition proceedings. The respondents had to answer
inter
alia
a
trade mark infringement case, whilst the process before the Registrar
of Trade Marks is irrelevant for purposes of the present

application.
[16]
I agree there
is no reason to dismiss or stay the application.
[36]
It is perhaps appropriate to mention at this stage that there is a
close connection
between the requirements for trade mark registration
and those contained in
s 34(1)(c).
I quote
s10(17)
of the TMA:
’
10.
The following marks shall not be registered as trade marks or, if
registered, shall, subject to the provisions of
sections 3
and
70
, be
liable to be removed from the register:
(17)
a
mark which is identical or similar to a trade mark which is already
registered and which is well-known in the Republic, if the
use of the
mark sought to be registered would be likely to take unfair advantage
of, or be detrimental to, the distinctive character
or the repute of
the registered trade mark, notwithstanding the absence of deception
or confusion, unless the proprietor of such
trade mark consents to
the registration of such mark:….’
[37]
In
National
Brands (Ltd) v Cape Cookies CC and Another
[17]
‘
S
nackcrax
’
was held to be too
close to ‘Salticrax’ for the purpose of
s 10(17)
of the
TMA which I quoted above. As mentioned, this subsection deals with
similar considerations as in
s 34(1)(c).
Trade
mark infringement
[38]
According to the
first respondent it started to trade under the name and style of
DUMAX Paints (Pty) Ltd after its registration
which was in January
2021. Consequently, it has exclusive rights to trade under the
aforesaid name and style. It is the first respondent’s
case
that it is an emerging company, recently established and entirely
owned by a black person. According to the respondents’
deponent
the applicants ‘brag about the historic dominance’, but
it is clear that ‘this monopoly and dominance’
are what
the applicants seek to protect by ‘muzzling lawful competition’
and thereby ‘essentially trying to squeeze
the first respondent
out of the market.
[18]
He then
continued his political argument by stating that the applicants’
conduct is ‘an antithesis of transformation
and has a massive
potential to halt the economic transformation’, bearing in mind
‘that during the years in which the
applicants were formed,
black people were not allowed to participate in the mainstream
economy …’
[19]
[39]
The respondents relied in no uncertain terms on the right of
previously disadvantaged
persons to be allowed to become competitive
in markets from which they were excluded during apartheid. I am
satisfied that I may
consider the TMA and the issues which have
arisen herein through the prism of the Constitution. Section 22
stipulates that ‘(E)very
citizen has the right to choose their
trade, occupation or profession freely.’ The section continues
to make it clear that
such practice may be regulated by law. The
respondents are new entrants in a competitive market. There is no
doubt that the Dulux
trade mark is dominant to such an extent that
the Competition Commission recently refused to consent to the merger
of Dulux and
Plascon, the biggest and second biggest paint brands in
South Africa, the reason being that it would limit competition.
[40]
No one can claim an absolute right to exercise their trade or
profession without
interference and in so doing contravene the rights
of their rivals. This is trite. Although the importance of a free
market and
robust competition cannot be under-estimated, no one shall
be allowed to interfere with the clear rights of others.
[41]
It is ironic that when Mr Mthombeni pronounced the words Dulux and
Dumax in
one particular sentence during his oral argument, his
pronunciation of the two words was so remarkably the same that I
commented
about it at the time. In my view it is fair to say that,
save for the identical first syllable, ‘Du’, the second
syllable
in both words may often be pronounced the same, eg as in
‘sucks’. Also, both words end on an ‘x’. It
is
apposite to mention that it is the applicants’ case that the
word DUMAX is a combination of DU for Dulux and MAXICOVER, the
last
being one of the registered trademarks referred to above.
[42]
In
casu
,
the respondents’ deponent did not explain convincingly why the
trade mark DUMAX was chosen, save to say that the name ‘resonates

with [his] vision’.
[20]
I referred earlier
to the fact that the first respondent copied an identical image of
the first applicant’s website onto its
own website. The
following averments of the respondents’ deponent are quoted
fully in order to show the fallacy of the respondents’
argument
that their brand name is distinctive and easily distinguishable from
Dulux:
[21]
‘
20.
Its formation was careful [sic] considered. I must add that its
information was triggered by a
wide range of considerations,
including a need to have new players who can offer unique, quality,
and affordable products…
21.
Prior to the registration of first respondent, I have [sic] to
conduct comprehensive research,
analyse the market and challenges
which may be a stumbling block, including taking a decision on the
name to be used for purpose
of trade. This also meant that I must be
mindful about infringement …
2.2.
I was very clear that the name which must be used as trading name
must be one which is distinct,
and capable of being distinguished. So
that our goods and trade mark should be recognised as such to ensure
that the company is
distinct and competitive. In other words, the
intention was that it must be clearly distinguishable.
23.
After very informative research and thoroughly [sic] consideration, I
have decided to register
the company under the name and style Dumax
Paints (PTY) LTD. This name resonates with the visions I had. More
importantly, it was
capable of being distinguished from any existing
players and/or companies.
24.
In fact, I must state that the registration was possible because
there was no similar nor
identical name which resemble [sic] or could
be confused with Dumax Paints (PTY) LTD.’
[43]
The respondents’ submissions as quoted in the previous
paragraph are
misconceived. The word ‘Dulux’ does not
appear in the name of any company registered with the CIPC. This is
irrelevant.
It is a trade name and a registered trade mark in terms
of the TMA and this is a trade mark infringement case.
[44]
Although the
applicants submitted that the devices shown in the parties’
get-ups contribute to consumer confusion, only the
marks have to be
considered at this stage in adjudicating whether there is a
likelihood of deception or confusion. Numerous judgments
have been
delivered over the years, the
locus
classicus
probably
being
Plascon
Evans Paints (TVL) Ltd v Van Riebeck Paints (Pty) Ltd.
[22]
In that case two companies in the paint industry clashed. The
registered trade mark in that case was Micatex. The respondent
started
to sell and offer for sale a similar paint than Micatex under
the mark Mikadek. After an objection by the appellant, the respondent

agreed to desist from using the mark, but then started using the mark
Mikacote. The court held that the two marks must not only
be
considered side by side, but also separately, and it had to be borne
in mind that the ordinary purchaser might encounter goods,
bearing
the respondent’s mark, with an imperfect recollection of the
registered mark and due allowance had to be made for
this.
[23]
In comparing the two marks the court held :
‘
V
iewed
side by side the marks exhibit similarities and differences. They are
both trisyllabic; they both have as their first two
syllables the
word "mica". (Though in respondent's case this is spelt
"mika", phonetically the words are identical.)
On the other
hand, the only similarity between the suffix "cote" and the
suffix "tex" is that they are both
monosyllabic.’
[24]
The court concluded that
the dominant impression conveyed by each of the marks centred on the
word ‘mica’ and that the
suffixes ‘tex’ and
‘cote’ made less of an impression. Consequently, the
court found that the appellant
had established an infringement of its
registered trade mark.
[45]
In
Puma
AG Rudolf Dassler Sport v Global Warming (Pty) Ltd
[25]
(Puma)
the
court held as follows:
‘…
the
question of the likelihood of confusion or deception is a matter of
first impression and that one should not peer too closely
at the
registered mark and the alleged infringement to find similarities and
differences.’
[46]
The approach in
Puma
was followed in
Siqalo
Foods (Pty) Ltd v Clover SA (Pty) Ltd.
[26]
The Supreme Court
of Appeal stated the following which also applies to trade mark
infringement as well as passing off:
‘
In
the course of the determination of a likelihood of deception and/or
confusion, the commonsensical approach by a court is guided
by the
following principles. The first impression is usually determinative
of the issue. A court does not have to peer too closely
at the
offending article to make the determination as to whether it is
likely to mislead.
The
court should notionally transport itself from the courtroom to the
marketplace and look at the article as it will be seen there
by
consumers. When considering the likelihood of deception and/or
confusion, regard must be given to the role played by the dominant

feature of the offending article, because consumers will be focused
on that feature and will not necessarily be alerted to the
fine
points of distinction or definition in order to clear up confusion.
The
confusion experienced by consumers need also not be lasting –
even if it lasts only for a ‘fraction of time’,
it is
sufficient to find a likelihood of confusion, albeit that the
confusion might later be cleared up.’
[47]
Clearly, the marks of the two parties are not identical as is
apparent from
the pictures above. Although this is a borderline case,
I am not satisfied that the DUMAX mark so nearly resembles the
registered
trademark, Dulux, as to likely deceive or cause confusion.
No case has been made out in respect of s 34(1)(a).
[48]
The relationship
between ss 34(1)(a) and 34(1)(b) and the elements of the latter have
been described as follows in
Mettenheimer
and Another v Zonquasdrif Vineyards CC and Others
[27]
:
‘
[11]
… Unlike s 34(1)
(a)
,
the provisions of s 34(1)
(b)
do
not require that the offending mark be used in relation to goods in
the class for which the trademark had been registered.
It
contemplates two elements, namely,
(a)
a
mark identical or similar to the trademark used in relation
(b)
to
goods which are so similar to those for which it had been registered,
that it gives rise to a likelihood of deception or
confusion. …’
[49]
The DUMAX mark is not identical or similar to the Dulux trademark and
used
in relation to goods which are so similar to those for which
Dulux had been registered, that it gives rise to a likelihood of
deception
or confusion. No relief in terms of s 34(1)(b) should be
granted. These conclusions do not signal the end of the road for the
applicants.
I still need to consider s 34(1)(c) which will be done in
the next paragraphs.
[50]
Section 34(1)(c)
of the TMA introduced a new species of trade mark infringement,
commonly known as dilution. It was accepted as
such in
Laugh
It Off Promotions CC v SAB International (Finance) BV t/a Sabmark
International (Freedom of Expression Institute as amicus
curiae).
[28]
Unlike s 34(1)(a)
and (b) of the TMA, s 34(1)(c) does not require any comparison
between the respective goods and/or services and
does not require a
likelihood of deception or confusion. It is trite that dilution can
be either ‘blurring’ or ‘tarnishment’.
In
casu
,
Mr Michau relied on ‘blurring’ which takes place when the
distinctive character or inherent uniqueness of the Dulux
trade mark,
a well-known registered trade mark, is weakened or reduced. In
National
Brands Ltd v Blue Lion Manufacturing (Pty) Ltd
[29]
trade
mark dilution recognises a function of a trade mark which goes beyond
the traditional origin or distinguishing function of
the trade mark.
The aim is to protect the commercial value that attaches to the
reputation of a registered trade mark, rather than
the capacity to
distinguish the goods from others.
[51]
In the case of s 34(1)(c) the following statutory integers to
establish infringement
are:
a.
the respondent’s use of a mark must
be identical or similar to
the applicant’s registered mark;
b.
the use is unauthorised, in the course of
trade, and would be likely
to take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the applicant’s
registered mark; and
c.
the applicant’s registered mark is well-known
in the Republic.
[52]
Section 34(1)(c)
does not require actual loss, but the likelihood of loss.
[30]
In
Societe
Des Produits Nestle SA and Another v International Foodstuffs Co and
Others
[31]
(Nestle)
the
Supreme Court of Appeal dealt with the issue as follows:
‘
[50] The section
‘
aims to protect the commercial value
that attaches to the reputation of a trade mark
,
rather than its capacity to distinguish the goods or services of the
proprietor from those of others . . . That being so, the
nature of
the goods or services in relation to which the offending mark is
used, is immaterial, and it is also immaterial that
the offending
mark does not confuse or deceive’.
[51]
The protection of s 34(i)(
c
) extends beyond the primary
function of a trade mark which is to signify the origin of goods or
services.
It strives to protect the unique identity and reputation
of a registered trade mark which sells the goods
. Its object it
to avoid ‘blurring’ and ‘tarnishment’ of the
trade mark.
[52]
The advantage or detriment complained of must be of a sufficiently
significant degree to restrain the use of the trade mark.
The court
must be satisfied by evidence of actual detriment, or of unfair
advantage, but depending on the primary facts, these
may be
self-evident.
I agree with the
submission by Nestlé that as the sales of Iffco’s Break
chocolate bars increase consumers will associate
Nestlé’s
registered finger wafer shape with the product of Iffco, or as the
shape of a chocolate bar sold by a number
of proprietors in South
Africa. The loss of the unique shape of Nestlé’s Kit Kat
bar as a distinctive attribute will
inevitably result in a loss of
advertising or selling power to Nestlé. This will clearly
result in ‘blurring’
of
Nestlé’s finger wafer shape trade mark. In addition,
because Nestlé and Iffco are direct competitors,
increased
sales of Iffco’s Break chocolate bars will be at the expense of
Nestlé’s Kit Kat chocolate bar. Economic
harm to Nestlé
is consequently self-evident from the primary facts
.’
(My emphasis)
[53]
I am satisfied
that, contrary to the explanation provided by the respondents’
deponent, this is a case that falls squarely
within the parameters of
s 34(1)(c). The respondents’ deponent, he being the sole
director of both companies, has decided
to ‘sponge’ on
the well-known Dulux and MaxiCover trade marks by ‘pirating the
product of years of invention’
and ‘reap the fruits’
sown by the applicants.
[32]
[54]
In conclusion, the
protection of a product’s badge of origin and its reputation,
is explained in
Verimark
(Pty) Ltd v BMW AGB
.
[33]
Section 34(1)(c) seeks to protect the reputation, advertising value
or selling power of a well-known brand. Mr Michau submitted
that the
second applicant as the owner of the Dulux mark has a legitimate
interest in continuing to maintain the position of exclusivity

acquired through large expenditures of time and money. As is apparent
from the authorities, the purpose of s 34(1)(c) is not prevent
any
form of confusion, but to protect an acquired asset against
impairment.
[34]
The ratio for
protection under s 34(1)(c) is evident. I agree with Mr Michau that
the use of the offending mark by a competitor
will lead to the
gradual consumer disassociation of the registered trade mark of the
proprietor’s product. The reputation
and unique identity of the
registered trade mark will become blurred, causing the selling power
to become eroded and the trade
mark diluted. The court must be
satisfied of a likelihood of detriment or unfair advantage. Although
no direct evidence was placed
before me, I am satisfied that economic
harm is self-evident from the facts on record.
[55]
In my view the respondents’ bare denial of certain allegations
by the
applicants, their far-fetched version as mentioned above and
the undisputed evidence clearly point into one direction only, and

that is that the applicants are entitled to relief in terms of s
34(1)(c).
[56]
I have also been asked to grant an order in terms whereof the matter
should
be continued in accordance with s 34(3)(d) of the TMA for the
court to establish payment of a reasonable royalty by the first
respondent
to the applicants. Insufficient facts have been placed
before the court to enable me to justify such an order. The doors of
the
court are not closed to the applicants and they would be fully
entitled to file a claim, once they have put their ducks in a row.
CONCLUSION
[57]
I conclude that the applicants are entitled to relief in accordance
with the
provisions of s 34(1)(c) of the TMA. They as the successful
parties are entitled to their costs of the application insofar as
they
have achieved substantial success. Mr Michau as senior counsel
appeared without the assistance of junior counsel and consequently,

there is no reason to order the costs consequent upon the employment
of two counsel as requested in the notice of motion. The costs
order
should include the costs of senior counsel.
ORDERS
[58]
The following orders are issued:
1.
The first and second respondents are interdicted and restrained in
terms of
s 34(1)(c)
of the
Trade Marks Act 194 of 1993
from
infringing the second applicant’s well-known trade mark
registration number 1931/00131 Dulux in class 2 by using in
the
course of trade in relation to any goods or any services, any name,
trade mark, trading style, company or domain name identical
or
similar to the second applicant’s well-known registered Dulux
trade mark, including but not limited to the name and trading
style
DUMAX and/or DUMAX PAINTS and/or any other similar trade mark to the
second applicant’s aforementioned well-known registered
Dulux
trade mark.
2.
The first and second respondents, are ordered to pay, jointly and
severally, the one to pay
the other to be absolved, the applicants’
costs, including the costs consequent upon the employment of senior
counsel.
JP
DAFFUE J
Counsel
for the applicants:
Adv R
Michau SC
Instructed
by:
Spoor
and Fisher
c/o
Phatshoane Henney Attorneys
BLOEMFONTEIN
Counsel
for the first and second respondents:
Adv P
Mthombeni
Instructed
by:
Motlhamme
Attorneys
BLOEMFONTEIN
[1]
Replying
affidavit p 775.
[2]
1977
(2) SA 916
(A) at 926 C.
[3]
See the relevance mentioned in
Hollywood
Curl (Pty) Ltd and Another v Twins Products (Pty) Ltd
1989 (1) SA 236
(A) at 249 J; and
Adidas
AG and Another v Pepkor Retail Ltd
[2013] ZASCA 3
para 29.
[4]
2019
(1) SA 179 (SCA).
[5]
Hollywood
Curl (Pty) Ltd and Another v Twins Products (Pty) Ltd
(1)
1989 (1) SA
236
(A) at 251 D – F.
[6]
2001 (3) SA 884
(SCA) para 14.
[7]
Supra
para
14
[8]
Ibid
para
16.
[9]
Cochrane Steel Products (Pty) Ltd v M-Systems Group (Pty ) Ltd and
Another
2016 (6) SA 1
(SCA) para 25.
[10]
2020 (2) SA 90 (SCA).
[11]
Ibid
para 38.
[12]
2023 (4) SA 48 (SCA).
[13]
Ibid
paras 39 &
52.
[14]
[2014] 2 all SA 282 (SCA) para 7.
[15]
Answering affidavit par 33 p 523, read with the acceptance, annexure
AA7 on p 731.
[16]
See
replying affidavit para 41 on p 775 and further.
[17]
(309/2022; 567/2022)
[2023] ZASCA 93
;
[2023] 3 All SA 363
(SCA) (12
June 2023).
[18]
Answering
affidavit paras 13 & 14 p 519.
[19]
Answering
affidavit paras 14 & 16 pp 519 & 520.
[20]
Answering
affidavit para 23 p 521.
[21]
Answering
affidavit paras 20 – 24, record p 521.
[22]
1984 (3) SA 623 (A).
[23]
641 A – B.
[24]
642
C – D.
[25]
2010
(2) SA 600
(SCA) para 9.
[26]
(425/2022)
[2023] ZASCA 82
para 20.
[27]
2014 (2) SA 204
(SCA) para 11, but refer also to paras 12 –
14.
[28]
[2005] ZACC 7
;
2006 (1) SA 144
(CC) para 36.
[29]
2001 (3) SA 563
(SCA) at para 11.
[30]
Laugh
it off promotions CC v South African Breweris International
(finance) BV t/a Sabmark International
[2005] ZACC 7
;
2006
(1) SA 144
(CC) at para 54.
[31]
(100/2014)
[2014] ZASCA 187
;
[2015] 1 All SA 492
(SCA) (27 November
2014) paras 50 - 52.
[32]
See t
he
American case of
American
Safety Table Co Inc v. Schreiber
(1959)
269 F 2
nd
255
,
at 271-272.
[33]
2007 (6) SA 263
(SCA) at para 13.
[34]
Nestle
fn 31 and
Triomed
(Pty) Ltd v Beecham Group PLC and Others
2001 (2) SA 522
(T) at 556 H – 557 B.