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[2009] ZAGPPHC 196
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National Brands Ltd v G M Patel Foods CC (26151/2008) [2009] ZAGPPHC 196; 2009 BIP 160 (GNP) (1 June 2009)
NOT
REPORTABLE
IN
THE HIGH COURT OF SOUTH AFRICA
(NORTH AND SOUTH GAUTENG HIGH COURT,
PRETORIA)
CASE NO: 26151/2008
DATE: 1 June 2009
In
the matter between:
NATIONAL
BRANDS
LIMITED
..........................................................................
Applicant
and
G
M PATEL FOODS
CC
...................................................................................
Respondent
JUDGMENT
HARTZENBERG
J
The
applicant is the registered proprietor of a trade mark no. 1963/3324
for the design of it's TENNIS biscuit. The certificate
issued in
respect thereof appears as page 18 of the papers. It indicates that
it relates to “Class 30” in respect of
“Biscuits
and confectionery”. The mark is a square with a flower design
on the outer edges. In the centre and in between
flower petals there
are two rectangles with a third curved rectangle, slightly wider than
the other two between them. The rectangles
are blank. In paragraph 7
of the certificate entitled: “Admissions, disclaimers,
memoranda, limitations or conditions (if
any):” it is stated:
“
The
blank spaces appearing in the mark will, in practice, be occupied by
non-trade mark matter and/or and some other registered
used (sic) of
this mark and/or some other registered mark of the proprietors or a
registered user of this mark and/or the address
of the proprietor or
Registered user. Registration of this trade mark shall give no right
to the exclusive use of the device of
a biscuit as such separately
and apart from the mark.”
The
applicant and it’s predecessors sold TENNIS biscuits since
1911. At present, the packet in which it is sold has, for about
two-thirds of it, a white background on which there is, in the top
left corner, a representation of a baker and the name Bakers
in
prominent black letters. The main feature of this portion of the
package is the word TENNIS boldly written in red letters. Above
the
word TENNIS and in smaller gold letters the words “The
Original” are written. Below the word TENNIS and also in
gold
letters the word “Biscuits” is written. Below it and in
small black letters the words “Made with real butter,
real
coconut and real syrup” appear. The right third of package is
light brown and gold in colour. On it a number of the
biscuits
bearing the trade mark are depicted. The blank spaces in the mark
depict the words “Bakers” “Tennis”
“Biscuits”. It takes quite some effort to distinguish
only the word “biscuits” on one of the biscuits depicted
on the package. The flowery pattern on the biscuits is very
prominent. In addition thereto there is a an image of pouring syrup,
a scoop of butter and a half coconut showing the brown shell and the
white coconut flesh inside.
The
respondent sells a product of which the applicant claims that not
only does it infringe it’s trade mark but that the respondent
is in fact passing off its biscuits as those of the applicant. The
applicant applies for two different interdicts, the one to interdict
the respondent from infringing its aforesaid trade mark and the other
to interdict the respondent from passing off it’s product
as
that of the applicant. In addition the applicant prays for delivery
up of all materials to which the infringing marks have been
applied.
The package has a golden coloured background. Very prominent and in
bold red letters appears the word TanEE in Danish
font. Although the
"a" and the "n" are not capital letters they are
of equal size than the other three letters.
Directly below and in
black letters the words Coconut Biscuits appear. Above TanEE and in a
blue oval space the word Fenbury appears
in fine white lettering and
between it and TanEE one is invited to “Taste the difference”.
There is an image of three
biscuits on each of which there is
according to Mr. Patel of the respondent a design of cobbled pebbles.
In three rectangles on
the biscuits the words “nice ” “&
” “fresh ” appear. As in the case of the words
“Bakers”
“ Tennis” “Biscuits” on
the applicant’s product, the words” nice” “&”
" fresh” on the respondents product depicted on the
package are indistinct. Although there is no depiction of a scoop
of
butter on the respondent’s package, there is an image of
pouring syrup and of a half coconut showing the brown shell and
the
white flesh.
To
succeed with the claim for an interdict against the infringement of
the trade mark there is an onus on the applicant to show
the
probability of deception or confusion. To discharge the onus the
applicant has to show that a substantial number of customers
or
potential customers will be deceived or confused in the sense that
they will form the impression that there is a material connection
between the respondent’s products and those of the applicant.
Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd,
[1984] ZASCA 51
;
1984 (3) SA
623
(A) 640G-I. It is for the court to decide whether there is a
likelihood of deception or confusion. Evidence of actual deception
or
confusion will be very helpful but eventually the court must
conceptualize the potential customers and decide whether a
substantial
number of them will be deceived or confused.
Mr.
Patel on behalf of the respondent, in the opposing affidavit, avers
that the applicant’s trade mark consists of a flower
with
closely knitted petals that are natural and rounded and are
characteristically asymmetrical. (The trade mark contains quite
a
number of flowers.) In contrast he says that the respondent’s
design consists of images of cobbled pebbles put together
with a
distinct symmetrical shape. To my mind very few observers of the two
designs will even think about symmetry and asymmetry
and it is
unlikely that what appears on the respondent’s design will be
likened to pebbles in stead of petals. It is therefore
significant
that the respondent rather emphasizes the features which do not
coincide like the applicant’s use of the trade
mark “Bakers
biscuits” and “Tennis” and contrasts those features
to the respondent’s use of the words
“Nice”
“Fresh”. It must however be remembered that the spaces in
the trade mark are blank. Moreover both
on the package and on the
biscuit itself the wording is not all that distinct so that many
customers will not even observe the
difference. In my view there is a
distinct probability that a substantial number of potential customers
will be confused and will
regard the respondent’s design as
connected to the applicant in some way or another. It follows that in
my view the application
for an interdict against the infringement of
the trade mark ought to succeed.
When
it comes to the claim that the respondent is passing off its goods as
those of the applicant the fundamental principle is that
no one is
allowed to pass off his goods as the goods of another. In this case,
where it is alleged that passing off is achieved
through the
imitation of the applicant’s get-up, a potential buyer is to be
postulated who is neither over careful nor very
careless. The
purchaser may even be illiterate but will have a general idea in his
mind’s eye of what he intends to buy and
not an exact
representation thereof. The purchaser may not have the advantage of
seeing the two products next to each other and
he will not have been
alerted to single out fine points of distinction or definition.
Although the law of passing off is not designed
to grant monopolies
in successful get-ups and although a certain amount of copying is
permissible a party who copies is at risk,
unless he makes it clear
to the public that the goods that he is selling are not the goods of
the other manufacturer, that he may
be deemed to have purposely tried
to deceive the public that that is precisely what he is doing. Blue
Lion Manufacturing (Pty)
Ltd v National Brands Ltd.,
2001 (3) SA 884
(SCA) at 887B-G.
In
the Blue Lion case supra Schutz JA at 890H-J and with reference to
inter alia the matter of Harrods Ltd v Harrodian School Ltd.,
[1996] EWCA Civ 1315
;
[1996]
RPC 697
(CA) observed, that although a respondent who unwittingly or
innocently passes off his goods as those of another may be restrained
from doing so, the court, in the case of deliberate copying, will not
go out of its way to assist the person who wants to pass
off his
goods as those another. In this connection a very relevant
consideration, to decide whether there was deliberate copying
or not,
is whether the copier gives a plausible explanation for deciding on
the particular design. However that may be, in the
end, of course,
regardless of whether there was deliberate copying or innocent use of
the competitor’s get-up, the test will
be an objective one,
postulating the probable purchaser. It must be remembered that the
purchaser will be unaware of the dispute
between the competitors or
whether there had been copying or not.
The
real difference between the two types of cases is that in the case of
the innocent imitation the focus will be on the features
of the
offending design or get-up that are alleged to cause confusion and/or
deception. If the conclusion is that those features
will cause
confusion or deception there is passing off. In the case of
deliberate copying the focus will be on the distinguishing
features
to establish whether the alleged offending competitor “made it
perfectly clear to the public that the articles that
he is selling
are not those of the other competitor, but his own." If the
answer is negative there is passing off.
In
this case there can be no doubt that there was deliberate copying by
the respondent. In the first place there is no explanation
of why the
respondent decided on the particular design. In addition thereto it
is highly unlikely that a draughtsman would by coincidence
have
stumbled upon the idea of the name of the biscuit, TANEE in bright
red letters, pouring syrup, half a coconut, petal-like
images on the
biscuit, three spaces on the face of the biscuit, an indication that
the biscuits are coconut biscuits and a background
that coincides
with a third of the background of the applicant’s get-up.
The
important question then is whether the distinguishing features are
sufficient to persuade a purchaser that the product is not
the
product of the applicant. The patterns of the “petals”
and the “pebbles” are not so dissimilar that
they will
exclude possible confusion. The words “Bakers” “Tennis”
“Biscuits” on the one hand
and the words “Nice”
“Fresh” on the other hand are indistinct on both the
biscuits and the packages of
both products. A person with average
powers of observation may easily be deceived to believe that the
words are the same. There
is a difference between the background
colour of two thirds of the offending package with that of the
applicant’s package
but where there is great similarity between
the background of the other third of the respondent’s get-up
with that of the
applicant, and where the words TENNIS and TANEE,
both in red are very prominent, the difference is not so marked as to
make it
clear that the respondent’s product is not the product
of the applicant. Likewise in my view the absence of the Bakers
design
on the respondent’s package is not that significant that
it clearly distinguishes the respondent’s product as not that
of the applicant. The other differences are so insignificant that
many purchasers will not even notice them. The result is that
in my
view the applicant has clearly succeedcd in proving that the
respondent is passing off its product as that of the applicant.
I
make an order in terms of prayers 1, 2, 3 and 4 of the notice of
motion, dated 30 May 2008.
W.
J. HARTZENBERG
JUDGE
OF THE HIGH COURT
HEARD
ON : 25 May 2009
ON
BEHALF OF THE APPLICANT
Counsel
: B DU PLESSIS
Instructed
by : ADAMS & ADAMS
ON
BEHALF OF THE RESPONDENT
Counsel
: G M AMEER
Instructed
by : SHAHEED DOLLIE INCORPORATED c/o MOTHLE JOOMA SABDIA