About SAFLII
Databases
Search
Terms of Use
RSS Feeds
South Africa: Free State High Court, Bloemfontein
SAFLII
>>
Databases
>>
South Africa: Free State High Court, Bloemfontein
>>
2012
>>
[2012] ZAFSHC 180
|
|
Pioneer Foods (Pty) Ltd v Bothaville Milling (Pty) Ltd (3424/2011) [2012] ZAFSHC 180; 2012 BIP 351 (FB) (20 September 2012)
FREE STATE HIGH
COURT, BLOEMFONTEIN
REPUBLIC OF SOUTH
AFRICA
Case No.: 3424/2011
In the matter between:
PIONEER FOODS (PTY)
LTD
.......................................................
Applicant
and
BOTHAVILLE MILLING
(PTY) LTD
..........................................
Respondent
JUDGMENT:
LEKALE, J
HEARD ON:
26 JULY 2012
_______________________________________________________
DELIVERED ON:
20 SEPTEMBER 2012
_______________________________________________________
INTRODUCTION AND
BACKGROUND
[1] This is an opposed
application for an order in the following terms:
1.1.
“Restraining
the respondent from passing off its business and products as those of
the applicant, and from using the STAR
get-up (which includes the
trade mark THE PEOPLE’S CHOICE) in any manner so as to connect
it with the applicant’s business
and products;
1.2. Directing the respondent to
remove all reference to the STAR get-up (which includes the trade
mark THE PEOPLE’S CHOICE)
from all matter and material to which
it has been applied whether as packaging, signage or otherwise;
1.3. Interdicting the respondent from
unlawfully competing with the applicant;
1.4. Directing the respondent to pay
the costs of the application including the costs of two counsel.”
[2] The parties herein
are both involved in the production and distribution of diverse food,
beverage and related products including
super maize meal.
[3] The applicant,
inter
alia,
produces and distributes a super maize meal product sold
under the WHITE STAR get-up. The respondent, on its part,
manufacturers
and distributes its super maize meal product under the
STAR get-up.
[4] The applicant’s
WHITE STAR get-up consists of the white star word trade mark and the
star device using a combination of
green, red and white colours with
a strapline, THE CLEVER CHOICE. This get-up has been consistently in
use since March 1999 when
the product was first launched nationwide.
[5] The respondent, on
its part, is a family business which has been using the STAR get-up
in its present form from August 2003
when the pay off line “THE
PEOPLE’S CHOICE” was introduced. The get-up underwent a
number of changes since the
6 September 2000 when the respondent
acquired the STAR trademark from Naledi Mills (Pty) Ltd (“Naledi
Mills”) in Henneman.
The said trademark having been registered
in favour of Naledi Mills in 1987.
[6] Prior to September
2000 the respondent was purchasing and using packaging material from
Naledi Mills for its special maize meal.
This material bore the
NALEDI and the STAR word marks and the STAR device trademark.
[7] In May 2000 the
respondent changed the colour of the packaging for its super maize
meal to the colours green, red and white.
In September 2000 the
respondent commenced the use of the NALEDI and the STAR word
trademarks and the STAR device until March 2001
when the NALEDI trade
mark was discarded following a demand from a competitor.
[8] On the 15
th
December 2000 the respondent, through its attorneys, directed a
letter to the applicant regarding its use of the WHITE STAR and
STAR
device trademarks on its packaging and demanding that it stop the use
of the same on the ground that it constituted passing
off. The
applicant responded acknowledging receipt of the letter and
indicating that same had been referred to its attorneys for
response.
[9] In 2010 the applicant
caused a letter of demand to be directed to the respondent as a
precursor to the present proceedings.
The respondent, however,
refused to oblige.
ISSUES IN DISPUTE
[10] The parties are
essentially in dispute over whether or not:
10.1. the applicant had
acquired a reputation as the producer and distributor of super maize
meal under the WHITE STAR get-up as
at August 2003 when the
respondent introduced its present day STAR get-up;
10.2. the use by the
respondent of the STAR get-up, in its current form, is reasonably
likely to cause confusion or deception in
the market as to the source
of the STAR SUPER MAIZE MEAL or as to its connection or relationship
with the applicant.
[11] The respondent,
further, contends that the applicant is estopped from interdicting it
because of its inaction or unequivocal
failure to take any steps to
advice the respondent of its alleged right for over 9 years, thus,
causing the latter to spend substantial
amounts of money acquiring
substantial reputation and goodwill in its STAR packaging.
[12] On the 24 July 2012
the respondent delivered a notice to strike-out certain affidavits,
averments and annexures in the applicant’s
papers on the
grounds that they are either inadmissible, vexatious or irrelevant
and new matter.
APPLICANT’S
CASE
[13] In support of its
case the applicant delivered founding and replying affidavits
together with affidavits deposed to by some
consumers of its WHITE
STAR product in the Western Cape as annexures, among others. The said
consumers effectively express opinions
and speculate on how they and
the general purchasing public would react if they were to encounter
the respondent’s STAR product
at the market place.
[14] The applicant,
further, supplied evidence, by way of annexures, on how it has been
promoting and marketing its product aggressively
since January 1999
at high costs. It also provides figures indicating that from 1999 to
September 2010 it sold 2765672 tons of
the relevant product
throughout South Africa. In 2010 alone it spent R14,5 million on
marketing the product.
[15] In its view the
applicant has built a substantial reputation in its product and the
WHITE STAR packaging has become so distinctive
of its product that
the purchasing public recognises and associates the same with it.
[16] The applicant,
further, contends that the use of the STAR get-up by the respondent
in its packaging of super maize meal amounts
to an unlawful
representation that its product is that of the applicant or is
associated therewith or licensed or approved by the
applicant. It is
not necessary to deconstruct the get-ups in order to determine
whether or not there is a likelihood of confusion
or deception. What
counts, according to the applicant, our first impressions.
[17] There exists,
according to the applicant, a likelihood that a substantial part of
the purchasing public will be deceived or
confused as to the source
of the respondent’s product or its association with the
applicant, thereby, causing damage to the
reputation of the applicant
in the light of the fact that both parties are participants in the
same industry and promote and sell
super maize meal.
[18] There exists no
evidence, the applicant submits, that there was a duty on the
applicant to respond to the respondent’s
demand made in
December 2000. There is, further, no evidence before the court that
the respondent was misled by the applicant’s
silence and acted
thereon.
[19] The applicant is
entitled to vindicate its rights, so submits Mr Sholto-Douglas for
the applicant, at any time unless they
have prescribed or it has
waived them. There exists no evidence of the aforegoing before the
court.
[20] In the applicant’s
view there exists no cause in law to strike out the affidavits. The
six affidavits in question are
deposed to by prospective consumers
who are not yet exposed to the respondent’s product. The
process of securing the affidavits
in question was not a survey and,
as such, should not be subjected to the requirements of a survey
which, in effect, is an affidavit
or report by the surveyor.
[21] The respondent’s
choice of the STAR get-up is a direct and immediate adoption and
duplication of the applicant’s
performance and, as such,
constitutes unlawful competition according to the applicant.
RESPONDENT’S
CASE
[22] The respondent
resists the application on the following grounds among others:
22.1 The colours green,
red and white are commonly used by many producers of maize meal,
particularly super maize meal;
22.2 The word “STAR”
and/or STAR device trade mark is used by a number of other maize meal
producers on their packaging;
22.3 The respondent
commenced using the NALEDI trade mark and STAR word mark as well as
STAR device in September 2000;
22.4 The impugned
packaging, inclusive of the pay-off line, has been in use for over 8
years and the respondent has, therefore,
acquired a substantial
reputation and goodwill in the STAR word mark and the STAR device as
well as its product get-up;
22.5 As at 2000 when the
respondent commenced the use of its packaging, it is highly unlikely
that the applicant had any repute
or goodwill in its WHITE STAR
get-up. The applicant’s sales and advertising figures do not
prove that it had a reputation
in 2000;
22.6 The use by the
respondent of its current STAR get-up does not constitute a
representation which is either directly or indirectly
likely to cause
confusion or deception among the consumers. The parties’
relevant products have co-existed in the market
place without any
instances of confusion and/or deception for more than a decade. The
get-ups have to be looked at as a whole and
prominent features
thereof be appreciated for trade mark purposes.
[23] The respondent,
further, maintains that the evidence sought to be relied upon to
prove likelihood of deception and/or confusion
is inadmissible as it
purports to be a market survey when it fails to comply with the
requirements for admissible market survey.
[24] In the respondent’s
view the evidence of some 3 700 MMS messages in an attempt to prove
confusion or deception is inadmissible
for constituting hearsay and
should, in any event, have been contained in the founding affidavit.
[25] The likelihood of
confusion or deception arising is further reduced by the fact that
the respondent does not distribute his
products to the retail trade
and supermarket groups.
[26] According to the
respondent the applicant ought to be estopped from interdicting the
respondent due to its inaction since 2001
when it began its
investigations against the conduct of the respondent. The applicant
failed to alert the respondent to its concerns
when it had an
opportunity to do so following a letter of demand directed to it at
the behest of the respondent in 2000.
[27] In the respondent’s
view no case of any form of unlawful competition other than alleged
passing-off has been made out
by the applicant.
[28] The applicant simply
seeks to suppress healthy competition because it clearly regards the
respondent as a threat in the market
place.
APPLICABLE LEGAL
POSITION
[29] The common law
action for passing off is a form of unlawful competition consisting
essentially in a representation, express
or implied, that one’s
merchandise or services or business is the same as or is connected to
that of the other. (See
BRIAN BOSWELL CIRCUS (PTY) LTD v
BOSWELL-WILKIE CIRCUS (PTY) LTD
1985 (4) SA 466
(A) at 478.)
[30] An implied or
indirect representation arises where one trader uses, in relation to
his own products, the name, trade mark or
get-up which is the same as
or is so similar to the one adopted by and distinctively associated,
in the mind of the public, with
another trader that it can be said to
be calculated to deceive or cause confusion. (See
BEECHAM v
SOUTHERN TRANSVAAL PHARMACEUTICAL PRICING BUREAU
[1992] ZASCA 207
;
1993 (1) SA
546
(A) at 554H – J.
[31] In an action for
passing off the alleged victim should prove the existence of a
reputation in the relevant name, trade mark
or get-up as well as the
representation by the alleged culprit.
[32] The reputation in
the relevant name, trademark or get-up must have existed at the time
the alleged culprit entered the market
and when the misrepresentation
was made.
(See
CATERHAM CAR
SALES AND COACH WORKS LTD v BIRKIN CARS (PTY) LTD
[1998] ZASCA 44
;
1998 (3) SA
938
(SCA) at 950H - I.)
[33] The existence of the
requisite reputation may be inferred from evidence of extensive sales
and advertising. See
HOLLYWOOD CARS (PTY) LTD v TWINS PRODUCTS
(PTY) LTD(1)
1989 (1) SA 236
(A).
[34] Once the reputation
has been proved, the question is whether, in the light of all the
circumstances of the case, there is a
reasonable likelihood that
ordinary members of the public or a substantial section thereof might
be confused or deceived into believing
that the business or
merchandise of the alleged culprit is that of or is connected with
that of the alleged victim. (See
RECKITT AND COLMAN SA (PTY)
LTD v SE JOHNSON AND SON SA (PTY) LTD
1993 (2) SA 307
(A) at
315B – C.)
[35] In determining
whether a defendant’s product is likely to deceive regard must
be had to the whole get-up of the product.
It is not necessary that
the whole get-up be distinctive. A part of the get-up may be shown to
be so identifiable with the plaintiff’s
goods that its use for
similar goods is calculated to pass them off as his.
(See
ADCOCK-INGRAM
PRODUCTS LTD v BEECHAM SA
1977 (4) SA 434
(W).)
[36] It is permissible,
to an extent, for one trader to copy or imitate the ideas and devices
of other traders provided such a trader
takes the trouble to clearly
distinguish his goods in the eyes of the ordinary purchaser to
obviate the possibility of deception
that his goods are those of
other manufacturers. Similar get-ups may be distinguished by clear
marks. (See
BLUE LION MANUFACTURING (PTY) LTD v NAHON BRANDS
LTD
2001 (3) SA 884
(SCA) at 887F – G and
ADCOCK-INGRAM
PRODUCTS v BEECHAM SA (PTY) LTD
supra
at 437F –
438A.
[37] Opinion evidence as
to the likelihood of confusion or deception arising from the
particular packaging is of little value as
that is the very question
the court is seized with. Evidence of actual deception or confusion
is of a greater importance although
it is not essential. (See
BLUE
LION MANUFACTURING (PTY) LTD v NATIONAL BRANDS LTD
supra
at 889H – I.)
[38] A comparison of the
get-ups involved may be helpful in enabling the court to place itself
in the position of the purchasing
public intended for consumption of
the products in question. (See
JOHN CRAIG (PTY) LTD v DUPA
CLOTHING INDUSTRIES (PTY) LTD
1977 (3) SA 144
(T) at 153G.)
[39] A defence of
estoppel essentially depends, for its success, on the existence of a
representation through word or conduct, which
leads another to act or
omit to act on its basis and which representation would cause the
representee to suffer prejudice if the
representor is allowed to deny
the veracity thereof. (See generally
CONCOR HOLDINGS (PTY) LTD
v POTGIETER
2004 (6) SA 491
SCA at 495 and
ARIS
ENTERPRISES (FINANCE) (PTY) LTD v PROTEA ASSURANCE COMPANY LTD
1981 (3) SA 274
(A) at 291D – E.)
[40] A person who has
acquired a right is entitled, at any time, to vindicate that right
when it is infringed save where the right
to vindicate has prescribed
in terms of the law. A person is further at liberty to waive or
abandon his right to protect himself
through consent or acquiesce
either by word or by conduct. (See generally
POLIKANSKY
BROTHERS v HERMANN AND CANARD
1910 TPD 1265
at 1278 and
TURBEK TRADING CC v A & D SPITZ LTD AND ANOTHER
(2010) 2 All SA 284
(SCA).)
[41] A delay may, in an
appropriate case, evince an intention to waive or a misrepresentation
which might found estoppel. (See
TURBEK TRADING CC v A & D
SPITZ LTD AND ANOTHER
supra
at 290a – b.)
[42] Opinion, as evidence
before the court, is generally inadmissible as being irrelevant
except where it is given by an expert
in the relevant field or a lay
person in respect of a fact which is difficult for him to describe in
any other way than by opinion
evidence. (See
RUTO FLOUR MILLS
(PTY) LTD v ADELSON (1)
1958 (4) SA 235
(T) at 237A.)
[43] The court may strike
out from any affidavit matters which are scandalous, vexatious or
irrelevant and only if it is satisfied
that the applicant for such a
relief will be prejudiced in its case if the relief is not granted.
(See
ANDERSON AND ANOTHER v PORT ELIZABETH MUNICIPALITY
1954 (2) SA 299
(EC).)
[44] Allegations which
may or may not be relevant but which are so worded as to be abusive
or defamatory constitute scandalous matter.
Allegations, which are
worded so as to convey an intention to harass or annoy whether or not
they are relevant are vexatious while
allegations which do not apply
to the matter in hand and do not contribute one way or the other to a
decision of such a matter
are irrelevant. (See
VAATZ v LAW
SOCIETY OF NAMIBIA
1991 (3) SA 563
(NM).)
[45] In argument Mr
Sholto-Douglas confines himself to the issue of passing off and is
silent on alleged unlawful competition on
the part of the respondent.
STRIKING OUT
[46] In determining
whether or not the matters identified by the respondent as
objectionable are worthy of being struck out the
main issue between
the parties viz whether or not the respondent passes off its STAR
super maize meal as emanating or being connected
with the applicant
serves as a guiding star.
[47] In the light of the
view that I have taken of the matter, I shall confine this judgment
to issues specifically raised in oral
submissions. I further accept
documents and notices delivered by the parties as being properly
before the court in the light of
absence of prejudice to any party.
[48] I am satisfied that
the affidavits of the applicant’s customers in the Western Cape
constitute opinion evidence to the
extent that the deponents express
opinions or are speculative on how the purchasing public would react
when it is confronted with
the respondent’s product in the
market place.
[49] The affidavits in
question, therefore, fall to be struck out to the aforegoing extent
for simply being irrelevant.
[50] I am, furthermore,
satisfied that the evidence of MMS messages constitutes new evidence
insofar as they are contained in the
replying affidavit and that, it
would, as such, not be fair to admit the same.
[51] The parties are
ad
idem
with regard to applicable law and are only at
variance
on whether or not the applicant had the requisite reputation as at
the date on which the respondent entered the market and as to
the
existence of an indirect representation by the respondent which is
likely to cause a confusion or deception in the market place.
REPUTATION
[52] Although the
respondent contends that it is highly unlikely that the applicant had
the requisite reputation in its WHITE STAR
get-up in 2000 when the
respondent commenced its packaging, I am satisfied that the
determinative date is the date on which the
respondent entered the
market with its current get-up which includes a strapline.
[53] I am persuaded, from
the extensive national marketing campaigns undertaken by the
applicant since 1999 and the high volumes
of sales made as at 2003,
that the applicant had most probably acquired a reputation in its
get-up as at the time when the respondent
adopted its current
packaging.
REPRESENTATION
[54] The applicant relies
on indirect representation in its case and, effectively, contends
that the STAR is so similar to its WHITE
STAR get-up that it was
calculated to cause confusion or deception in the minds of the
purchasing public.
[55] In order to
determine whether or not the two get-ups are similar, one needs to
notionally place them side by side to make a
comparison. A look at
the two get-ups as a whole and as pictorially depicted side-by-side
in the founding affidavit reveals that
they are similar in the sense
that they both have STAR device and STAR word marks and pay-off lines
in a combination of green and
red colours against a white background.
[56] There are, however,
clear differences in the trade marks which seem to distinguish one
from the other such as the word mark
WHITE in respect of the WHITE
STAR and the depiction of the STAR device as well as the arrangement
and combination of the colours.
In the applicant’s get-up the
STAR device is red with a protruding point and four small red stars
pouting into it. In the
STAR get-up the STAR device is red surrounded
by a green circle with an addition of a green corn icon in the
centre.
[57] Although at first
glance the two packages, as a whole, elicit some nostalgic
resemblance, I am convinced, among others, that
the absence of the
word mark WHITE in the STAR product as well as the differences in the
wordings of the straplines sufficiently
distinguish the two products
from each other. It is, further, effectively common cause between the
parties that the colours green,
red and white are in general use by
manufacturers of super maize meal. There is, in my judgment, indeed a
measure of copying on
the part of the respondent. I am, however, not
satisfied that the similarities are such that they are calculated to
cause confusion
or deception regard being had to the distinguishing
or prominent features referred to above and pointed out by Mr Puckrin
for the
respondents. If the similarities were so striking as to be
calculated to cause confusion or deception, one would have reasonably
expected the applicant to have taken steps to protect its interests
sooner than later.
LIKELIWOOD OF
CONFUSION OR DECEPTION
[58] Even if I am wrong
in the aforegoing finding with regard to indirect representation, I
am not satisfied that there is a reasonable
likelihood of deception
or confusion regard being had to the applicable guidelines set out
below.
[59] In the absence of
evidence of actual deception or confusion, as in the present matter,
the evidence adduced must be compelling
or “
of the most
cogent sort
” as correctly pointed out by Mr Sholto-Douglas
in the Heads of Argument. (See
JOHN CRAIG (PTY) LTD v DUPA
CLOTHING INDUSTRIES (PTY) LTD
supra
at 156 to 157.)
[60] In determining the
issue
“
One
postulates neither the very careful nor the very careless buyer, but
an average purchaser, who has a general idea in his mind
of what he
means to get but not an exact and accurate representation of it. Nor
will he necessarily have the advantage of seeing
the two products
side-by-side. Nor will he be alerted to single out fine points of
distinction or definition.”
(See
BLUE
LION MANUFACTURING (PTY) LTD v NATIONAL BRANDS LTD
supra
at 887D – F.)
[61] The hypothetical
purchaser contemplated is not to be regarded as a “
moron in
a hurry
” (See
MORNING STAR v EXPRESS NEWSPAPERS
[1979]] FSR 113.)
[62] The respondent
effectively contends that there has existed a healthy competition
between the two products for years without
any confusion or deception
arising in the market. On its part the applicant sought to rely on
the impressions of the consumers
of its product in the Western Cape
who have not yet been exposed to the STAR product. It is, thus, not
disputed by the applicant
that in areas in which the two products
have co-existed no confusion or deception has been evidenced.
[63] In the circumstances
of the present matter, where the two products have been together in
the market in their present get-ups
since at least 2003, I am
convinced that the absence of such evidence carries the day
particularly where the similarities cannot
be said to overshadow the
differences. In this regard one may only point out that if a
reasonable likelihood of confusion or deception
exists, it should
have existed since 2003 and cases of actual confusion or deception
would, most probably, have come to light.
The average purchaser
would, most probably, be able to distinguish between the two
products. The aforegoing accords, in my view,
with the
respondent-friendly test applicable herein.
[64] The applicant is
apparently and obviously concerned about and conscious of the
respondent’s steady strides into the market
and seeks to curb
its advances into other areas where it had no presence in the past.
South Africa is, however, a unitary state
and the two products are
allowed a free race in all economic regions and provinces of our
country.
ESTOPPEL
[65] In the light of my
aforegoing findings it is, in my view, not necessary to dwell much on
the issue of estoppel save to point
out that there exists no evidence
before the court to suggest that the applicant is estopped from
launching the present proceedings
by reason of either consent or
acquiescence.
UNLAWFUL
COMPETITION
[66] For the sake of
completeness I may mention that no case of distinct unlawful
competition has been made out for the applicant.
It is probably on
the basis of this realisation that the issue was correctly not
pursued in argument by Mr Sholto-Douglas.
COSTS
[67] The parties are in
agreement that the matter warranted employment of two counsel on both
sides and I am in respectful agreement
therewith.
ORDER
[68] In the result the
application is dismissed with costs including the costs of two
counsel.
_______________
L. J. LEKALE, J
On behalf of the
applicant: Adv A. R. Sholto-Douglas SC
with Adv B. J. Vaughan
Instructed by:
Weksmans Attorneys
c/o Webbers Attorneys
BLOEMFONTEIN
On behalf of the
respondent: Adv. C. E. Puckrin SC
with Adv. L. G. Kilmartin
Instructed by:
Honey Attorneys
BLOEMFONTEIN
/eb