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[2022] ZAFSHC 279
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Hendler and Hart (Pty) Limited v BV Cookware (Pty) Ltd (4735/2021) [2022] ZAFSHC 279; [2022] HIPR 206 (FB) (17 October 2022)
IN
THE HIGH COURT OF SOUTH AFRICA
FREE
STATE DIVISION, BLOEMFONTEIN
Case
No: 4735/2021
In
the matter between:
HENDLER
&
HART
(PTY) LTD
APPLICANT
and
BV
COOKWARE (PTY)
LTD RESPONDENT
JUDGMENT
BY: MOLITSOANE, J
HEARD
ON:
28
JULY 2022
DELIVERED
ON:
This
judgment
was
handed down electronically by circulation to the parties'
representatives by email and by release to SAFLII on 17 OCTOBER 2022.
The date and time for hand-down is deemed to be on 17 OCTOBER
2022 at 11h00.
[1]
The applicant seeks interdictory relief
against the respondent in terms of s34(1)(a) of the Trade Marks Act,
194 of 1993(the Act).
In the alternative, the applicant relies on
unlawful competition in breach of the
Consumer Protection Act, 68 of
2008
and passing-off.
[2]
The applicant is Hendler and Hart(Pty)
Ltd, a company organised and existing under the laws of South Africa.
It professes to be
a specialist in kitchenware, which includes pots
and pans, manufacturing and distribution whose numerous brands
include, the registered
'HART' trade mark.
[3]
The respondent is BV Cookware(Pty) Ltd,
a company organised and existing under the laws of the Republic of
South Africa. It is a
supplier of kitchenware products, including
pots and pans.
[4]
The applicant is the registered
proprietor of the trade mark 1950/02765
HART.
Seeing that applicant and the
respondent are suppliers and distributors of kitchenware products,
they are direct competitors
in
the market.
[5]
It is undisputed that the applicant's
products branded with the
Hart
trade mark are available in all major retail stores and other
independent stores in South Africa and Southern Africa. According
to
the applicant the total sales figures of the applicant's products
branded and sold under the Hart mark for the period 2015 to
August
2021 exceeded R1.7 billion.
According
to
the
applicant,
which
allegation
is undisputed,I ts
total
advertising expenditure
for
the
said period was in excess of R40
million.
[6]
The applicant owns and operates a
dedicated Hart trade mark profile on Facebook social media platform
and as at 23 September
2021
had
in
excess
of
155 000
'likes'
and
156 000 people who 'follow' the Hart trade mark. Its products also
sell on online stores. Takealot online store also sells the
applicant's J7 10-piece poUcasserole (the J7 range) set to the South
African consumers.
[7]
The J7 range consists of 10 pieces of
varying sizes comprising five pots and their lids. The pots and lids
are made up of metal
with plastic sides and lid handles/loops. Each
of the lids have a black plastic handle with the characteristic HART
trade mark
which is embossed on the handle and on the pot lid itself.
[8]
The range is sold in a packaging made up
of cardboard box enough to hold a 10-piece pot set and the
applicant's trade mark appears
on the lid handles/loops of the pots
as depicted on the said packaging. The applicant's identical
packaging of its range is thus
an
identical replication or
photo of the pots and lids that are
enclosed in the packaging.
[9]
It is common cause that the applicant's
HART trade mark is well known amongst the industry role players and
the consumers.
It
sis
the
case
of
the
applicant
that
the respondent
infringes
its trade in the sale of its Bon Voyage
pot/casserole set.
[10]
In the light of the above it is
necessary to refer to what the applicant contends is the offending
conduct of the respondent. During
August 2021 the Applicant was
alerted to the fact that the respondent was selling a 10-piece box
set of pots/ casseroles and lids
in a packaging which depicts a photo
of the alleged pots and had handles/loops which the applicant
contends bore HART trademarks
embossed on them.
[11]
The applicant launched an immediate
investigation. The applicant purchased the respondent Bon Voyage
Super
NW7
10 piece set which the applicant contends had HART trademarks
embossed on the lid handles/ loops of the pots. According to the
applicant the HART trade mark appeared on the packaging. This
packaging is at the heart of this dispute. The applicant contends
that the use of the trade mark on
the
lids handles/loops as depicted on the packaging was unauthorised and
thus unlawful.
[12]
It is the case for the applicant that
the respondent unlawfully uses the
applicant's HART trade mark or a
mark similar there to on goods that are
identifiable to and similar to the goods covered by the applicant's
registered HART trade
mark. In the course of the respondent's trade.
[13]
According to the applicant, a physical
inspection of the offending product enclosed inside the offending
packaging reveals that
the HART pots in
the packaging actually have no mark of
the trade mark of the applicant. This, in the view of the applicant
is evidence enough that
the conduct of the respondent is clearly
meant to mislead. It is the contention of the applicant that the
respondent uses its(applicant's)
trade mark in the course of its
business.
[14]
The respondent, on the other hand,
contends that it is a major kitchenware manufacturer and distributor
in the country. Its origins
date back to 1980's and trades under the
name J & A Kitchenware. It is a direct competitor of the
applicant.
[15]
The respondent contends that one of the
products of BV is its Bon Voyage range which comprise of cooking pots
of assorted sizes.
This Bon Voyage product was introduced in 1990. It
is sold throughout the country by well-known retailers and
wholesalers in South
Africa. BV is also the proprietor of several
trade marks for the Bon Voyage trade mark in South Africa, the
earliest of which dates
back to 1992. According to the respondent the
alleged offending packaging and design was created by an agency in
China in 2015.
[16]
Prior to this application, the
respondent had instituted an urgent application in the Gauteng
Division of the High Court under case
number 2021/44153. According to
the respondent, the urgent application was narrow in ambit and aimed
only in preventing the applicant
from making false statements to the
customers of the respondent and thereby unlawfully interfering in the
respondent's contractual
relationship with third parties. In my view
the proceedings in the urgent court play a limited role in these
proceedings and will
not be referred to unless it is absolutely
necessary.
[17]
Section 34(10{a0 of the Trade Marks Act
deals with the infringement of registered trademarks. It provides as
follows:
"
(1) The rights acquired by registration of a trade mark shall be
infringed by-
(a)
the unauthorised 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."
[18]
In order for the applicant to succeed
with its claim, it must satisfy this court:
a)
that the use by the respondent of the
registered trade mark or of a mark so nearly similar to it as to be
likely to deceive or cause
confusion;
b)
that the use is in relation to the goods
or services in respect of which the mark is registered;
c)
that there is use in the cause of a
trade;
d)
that the use is unauthorised; and lastly
e)
that the use in
question is'
trade mark use'.
[19]
An
infringement would require the mark on the alleged offending
packaging must be so resembling that of the HART mark of the
applicant
'as to be likely to deceive or cause confusion.
[1]
The requirements for proving this were set out as follows in
Plascon-
Evans Paints Ltd v Van Riebeeck Paints (Ply) Ltd
[2]
where
the court said:"
"
In an infringement action the onus is not on the plaintiff to show
the probability or likelihood of deception or confusion.
It is not
incumbent upon the plaintiff to show that every person interested or
concerned (usually as customer) in the class of
goods for which his
trade mark has been registered would probably be deceived or
confused. It is sufficient if the probabilities
establish that a
substantial number of persons will be deceived or confused. The
concept of deception or confusion is not limited
to inducing the
minds of interested persons the erroneous belief or impression that
the goods in relation to which the defendant's
mark is used are the
goods of the proprietor of the registered mark, i.e. the plaintiff,
or that there is a material connection
between the defendant's goods
and the proprietor of the registered mark; it is enough for the
plaintiff to show that a substantial
number of persons will probably
be confused as to the origin of the goods or the existence or
non-existence of such a connection.
The determination of these
questions involves essentially a comparison between the ark used by
the defendant and the registered
mark and, having regard to the
similarities and differences in the two marks, an assessment of the
impact which the defendant's
mark would make upon the average type of
customer who would likely to purchase the kind of goods to which the
marks are applied.
This notional customer must be conceived of as a
person of average intelligence, having proper eyesight and buying
with ordinary
caution. The comparison must be made with reference to
the sense, sound and appearance of the marks. The marks must be
viewed as
they would be encountered in the market place and against
the background of relevant surrounding circumstances. The marks must
not only be considered side by side, but also separately. It must be
borne in mind that the ordinary purchaser may encounter goods,
bearing the defendant's mark, with an imperfect recollection of the
registered trade mark and due allowance must be made for this.
If
each of the marks contains a main or dominant feature or idea the
likely impact made by this on the mind of the customer must
be taken
into account. As it has been put, marks are remembered rather by
general impressions or by some significant or striking
feature than
by a photographic recollection of the whole. And finally
consideration must be given to the manner in which the marks
are
likely to be employed as, for example, the use of name marks in
conjunction with a generic description of goods."
[20]
It is in the light of the above that the
alleged infringement must be adjudged. As a preliminary issue, there
is a dispute as to
when the applicant became aware of the alleged
infringement. According to the applicant it became aware of the
alleged infringement
of its trade mark in August 2021. The
respondent
disputes this
assertion and
contends that
the current packaging of Bon Voyage pot
set had been around since 2016. The respondent contends that there is
thus a real bona fide
and genuine dispute of fact as to when the
current packaging was first used in South Africa. It is submitted
that since these are
motion proceedings where final relief is sought,
the version of the respondent in respect of this issue ought to be
accepted.
[21]
The respondent contends that the
evidence of the agents of the
applicant
(Messrs Gordon and Conradie) who deposed in affidavits of how and
when they became aware of the alleged offending packaging,
was vague,
unsubstantiated and contradicted the evidence of Mr Soni who is the
deponent in the founding affidavit.
[22]
I have no reason to disregard the
evidence of Gordon and Conradie. Admittedly they are in the employ of
the applicant. Such employment,
however, does not necessarily render
their testimony less weighty. Their evidence must be seen in context.
Gordon has been in
the
employment of the applicant for 26 years of which 17 years thereof
was as a sales agent. He
is
responsible for the
sales, marketing and merchandising of
the goods of the applicant. In his confirmatory affidavit he avers
that as part of his duties
he visits third party outlets with a
specific purpose of advancing the business of the applicant as well
to determine what competing
products are offered and how they are
priced.
[23]
On the other hand Conradie has been an
independent agent of the applicant since 2000. As a sales agent he is
responsible for sales
and merchandising of in-store promotions of the
products of the applicant. It is inconceivable that both Gordon and
Conradie, being
responsible for sales and merchandising of the
products of the applicant would ignore the products of the direct
competitor of
the applicant. This competition clearly impacts on the
sales of the applicant. In all likelihood they would take any step to
alert
the applicant of any unlawful competition. I find it
difficult to accept that they will
acquiesce where in their view they perceive any infringement of the
trade mark of the products
of the applicant as this will have direct
impact on their sales.
[24]
It is common cause that the applicant is
a major manufacturer and distributor of kitchenware products having
sold millions of Rands
worth of pots and pans branded and sold under
the HART trade mark. Its sales figures for the years 2015-2021
totalled over one
billion Rands. In
the
same period the applicant spent over forty million Rands in promoting
and advertising its products. It is inconceivable that
the Bon Voyage
products would have been in
the
market for about five years without the
applicant being aware of it as its direct competitor. The speed with
which it acted when
noticing the alleged infringement of its trade
mark, lends credence to the assertion that the applicant only became
aware of the
Bon Voyage in August 2021.
[25]
The respondent raises a number of
versions in opposition of the application. Firstly, it contends that
there is no mark on its pot
handles/loops; secondly, it contends that
there is a mark but it is illegible; thirdly, it contends that there
is a mark and it
is legible but is not confusingly similar to the
applicant's trade mark of HART; fourthly, it contends that there is a
mark but
that the consumers will not notice it.
[26]
The
respondent contends that the image that appears on the 'pot lid
loops' on
the
offending packaging will not be legible to the naked eye
[3]
,
especially
not consumers with average eye sight who come across the respondent's
products in the course of events. In my view this
contention cannot
be sustained. The testimony of Gordon and Conradie refutes this claim
by the respondent. When they saw the offending
packaging they
immediately took action and the said packaging was purchased and
closely inspected.
[27]
The difficulty I have with the defence
of the respondent is articulated in the following versions as set out
in the answering affidavit:
"
6.4 The evidence presented by the Applicant
as
well
as
the Respondent will, Without
a
shadow of
a
doubt and
if evaluated objectively, prove that the image that appears on the
''pot lid loops" in the Alleged Offending Packaging
will not be
legible to the naked eye, especially not to consumers with average
eyesight who come across the Respondent's products
in the normal
course of events. As such, no confusion
or deception
can ever arise from the Respondent's
use of the mark
that appears on its ''pot lid loops".
6.5
The evidence presented by the
Applicant
as
well
the Respondent unequivocally confirms that the image that appears on
the ''pot lid loops" in the Alleged Offending Packaging,
even
when enlarged, is not the HART trade mark
as
contended by the Applicant. Despite
the Respondent complaining about the quality of the Applicant's
evidence it has significantly
failed to produce any better image or
evidence
6.6
Furthermore, and although the
mark depicted on the" pot lid loops" is illegible, it is
blatantly obvious from
a
comparison
of it with the Respondent's HART trade mark that they are in no way
similar, let alone confusingly or deceptively Insofar
as
the Applicant relies on enlarged
image of the packaging, this is unacceptable
as
one has no control over the manner in
which
as
image
is manipulated and it could be done in such
a
way that it constitutes something
vastly different that would be seen by the consumers with the naked
eye.
6.7
The differences between the
respective image are striking. They are represented in different
fonts and, whereas the Applicant's
HART trade mark consists of 4
letters only, the mark that appears on the "pot lid loops"
of the Respondent's products
consist of a number of letters, most
likely 6 or
7
letters.
The mark used by Respondent simply bears no resemblance to the HART
trade mark that appears on the "lid loops"
of the
Applicant's pots at all. The application is ill-advised.
6.8
Furthermore, and even though the
above evidence, in no uncertain terms, confirms that the
mark that appears on the ''pot
lid loops" of the Respondent's products is not the HART trade
mark and, also not at all similar
to the Applicant's HART trade mark,
I must emphasize that it is artificially contrived to rely on
"enlarged images" of
the ''pot loops lids" of the
Respondent's products to support the Applicant's
case,
as
: (i) the "enlarged
images" are not
representative of the manner in which consumers will come
across
and purchase the respective parties'
products in the market;(ii) any image that may appears on the ''pot
lid loops" of competitors
products, which will, in the trade in
any event simply be illegible, will simply not play any role when the
products are viewed,
assessed and bought by consumers; (iii)
consumers will rely, exclusively on the distinctive trade marks and
get ups of the
respective parties' products when purchasing the
goods; (iv) consumers will not peer closely at the packaging and
will, particularly
having regard to the doctrine of imperfect
recollection, remember the trade marks HART in respect of the
Applicant's product and
BON VOYAGE in respect of the Respondent's
products, which are undoubtedly the dominant features of the parties'
respective get-up."
[28]
The respondent asserts that the mark is
not legible to the naked eye. At the same time, it asserts that it is
not a HART trade mark.
If one were to be able to say that it is not a
HART trade mark, then it implies that it is indeed legible and can be
read which
negates the notion that it is neither legible nor that it
is not a HART trade mark. Notwithstanding that the respondent asserts
that it is not a HART trade mark, what it fails to say is what the
mark on the offending packaging is. What this court is told
is that
the offending packaging, obviously also the mark depicted on the pot
lids, was designed in China.
[29]
I was favoured with the original
packaging of both the J7 range and Bon Voyage packaging. Closer
scrutiny of the offending packaging
clearly indicates that the mark
on the pot lids resembles the HART mark. Such marks appear at exactly
the identical position in
which the HART trade make appears on the
applicant's products. The respondent fails to explain the resemblance
between the HART
trade mark of the applicant and one used by the
respondent on the offending packaging.
[30]
It is common cause that the pot lids
contained in the packaging bear no mark at all and are plain. What
the respondent fails to
explain is why the embossment appears on the
offending packaging and not on the pots themselves. The inescapable
conclusion is
that the purpose of depicting the
HART
mark
on
the
packaging
and
not
on
the
pot
sets
themselves
is
to
mislead
the
consumers
into
thinking
that they are buying pots of the
applicant or associated with it.
[31]
It is in my view evident that the
respondent in using the mark on the offending packaging while same is
not embossed on the actual
pot lids and handles uses the mark to
confuse or deceive the average consumer.
The use of the said mark is not
authorised and its use constitutes the prohibited use in the course
of trade.
[32]
Having regard to the fact that the HART
trade mark is well known and that the applicant has acquired, through
its use reputation
and good will, the applicant has established the
requisite reputation to sustain the passing off claim. I am satisfied
that the
use of the mark by the applicant on its Bon Voyage packaging
is geared at deceiving an average consumer and as a result there is
a
likelihood of damages flowing from the unlawful conduct of passing
off. I accordingly make the following order:
ORDER
1.
The respondent is, in accordance with
the provisions of
section 34(1)(a)
of the
Trade Marks Act No. 194 of
1993
, interdicted and restrained from infringing the applicant's
registered trade mark nos. 1950/02759, 1950/02765 and 2003/16912 (the
"HART Trade Marks") by using the HART Trade Marks, or any
other trade mark confusingly or deceptively
similar
to
the HART
Trade
Marks in respect
of class 21 goods and in particular the
kitchenware and its packaging; including
casserole sets, pots and pans (and its lids, handles and lid loops).
2.
The respondent is ordered to deliver up
to the applicant for destruction all packaging and other material in
the Respondent's possession
or under its
control which includes reference to HART
or any other mark confusingly / deceptively similar to the HART Trade
Marks.
3.
There shall be an enquiry held into the
damages suffered by the applicant, alternatively the reasonable
royalty payable to the applicant
as a result of the Respondent's
infringement of the HART Trade Marks.
4.
The
Respondent
shall
make
a
payment
to
the
applicant
of the
damages
found
to
have
been
suffered
by
the
applicant or royalty
payable
to
the applicant
pursuant
to such enquiry.
5.
In the event that the parties are unable
to reach agreement as to the future pleadings to be filed and as to
discovery, inspection
and / or other matters of procedure in relation
to the enquiry, either party is authorized to make application to
this court for
directions in regard thereto.
6.
The costs of this application are to be
paid by the Respondent.
P.
E. MOLITSOANE, J
On
behalf
of
the
applicantt: Adv.
P. Cirone
Instructed
by: Phatsoane
Henny
BLOEMFONTEIN
On
behalf of the Respondent: Adv.
LG Kilmartin
Instructed
by: Hill
McHardy & Herbst
Johannesburg
[1]
Section 34(1)(a)
of the
Trade Marks Act, 1993
.
[2]
1984(3) SA (A) 623(A) at 640G-641E.
[3]
Paginated papers page 314 para 6.4.