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[1987] ZASCA 5
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Hoechst Pharmaceuticals (Pty) Ltd. v Beauty Box (Pty) Ltd. and Another (256/85) [1987] ZASCA 5; [1987] 2 All SA 128 (A) (12 March 1987)
256/85/AV
IN
THE SUPREME COURT OF SOUTH AFRICA
(
APPELLATE DIVISION
)
In the matter
between:
HOECHST PHARMACEUTICALS
(PROPRIETARY)
LIMITED
APPELLANT
and
THE BEAUTY BOX
(PROPRIETARY) LIMITED
1st RESPONDENT
(in liquidation)
MEDCALF BARRY & ASSOCIATES
(PROPRIETARY) LIMITED
2nd RESPONDENT
(in liquidation)
CORAM
: CORBETT, GROSSKOPF, VIVIER JJA, NICHOLAS et
BOSHOFF, AJJA
HEARD
: 19 February 1987
DELIVERED
: 12 March 1987
JUDGMENT NICHOLAS, AJA
This is an appeal against an order of VAN NIEKERK J
in
2
in the Witwatersrand Local Division dismissing an application
for an interdict in respect of alleged passing off.
The applicant in the
Court a
quo
was HOECHST PHARMACEUTICALS (PTY) LIMITED ("HOECHST"). One of
the products manufactured by it is called FIBRE TRIM. This is said
to provide a
natural way of reducing weight, and consists of tablets composed mainly of grain
and citrus fibre and milk powder. HOECHST
introduced it to the South African
market in the latter part of November 1983.
The tablets are contained in a
bottle packed in a cardboard box. The following is a black and white
reproduc-tion of the front of
the box, which is what would ordinarily be seen by
a prospective purchascr:
SEE ORIGINAL JUDGMENT PIGTURE
3
On the actual box the background is white; the printing is black; the
half-orange and the head of wheat are in natural colours; and
the tape measure,
which surrounds the box, is yellow with black figures.
The bottle bears a label the front of which is sub-
stantially
4
stantially identical.
Between November 1983 and February 1985 HOECHST en-gaged, at a cost of over
Rl million, in an extensive adver-tising campaign to promote
FIBRE TRIM. This
included a tele-vision commercial, which was shown sixty-nine times on South
African television between January
1984 and February 1985; and also radio
advertisements, full page colour advertisements in magazines with a national
circulation,
and coloured posters exhibited at points of sale in pharmacies and
supermarkets throughout the country. During 1984 HOECHST sold
over 1,2 million
boxes of FIBRE TRIM, with a turnover in excess of R8 million. FIBRF TRIM, it was
alleged and not denied, be-came
a market leader in the slimming aids market in
South
Africa
5
Africa and in April 1985 when the application was launched,
it held the dominant share of the market.
The television commercial was said to be the core
of HOECHST's case. The
following is a brief description
of it.
Articles of women's clothing are seen falling to the floor, apparently thrown
from behind a screen. A slim, attractive blonde appears.
She is clad in a white
leotard, which has the words FIBRE TRIM and the motifs of half orange and head
of wheat on the chest. She
stands with arms akimbo and says that she is throwing
away her fat clothes, forever. She is then seen in the same get-up holding
a
yellow tape measure about her waist. This pic-ture fades and a FIBRE TRIM pack
emerges, the words and the motifs and the tape measure
from the leotard taking
their place on the box, in front of which stands a FIBRE TRIM bottle.
In
6
In February 1985, THE BEAUTY BOX (PTY) LTD (the first
respondent in the application) produced a product under the name EASI SLIM,
with
substantially the same ingredients as FIBRE TRIM. MEDCALF BARRY & ASSOCIATES
(PTY) LTD (the second respondent) was responsible
for its marketing and
distribution. In the case of EASI SLIM, too,the tablets were in a bottle, packed
in a cardboard box having
the same dimensions as the FIBRE TRIM box. The
following is a black and white reproduction of the front of the box:
On
SEE ORIGINAL JUDGMENT PIGTURE
7
On the actual box the background is white; the printing is black except for
the word FIBRE, where it is first used, which is in red;
the girl has blonde
hair; the leotard she is wearing is red; and the tape measure, which surrounds
the box, is yellow with black
markings.
The
8 The bottle bears a label, the front of which is
substantially
identical.
In the notice of motion, HOECHST sought an order in-
terdicting the
respondents
inter alia
(i) from dealing in the course of trade with a
product marketed in the bottle and box in
the form illustrated; (ii) from using a tape measure in conjunction
with any slimming product in circumstances
which were specified; (iii) from using a yellow tape measure in relation
to any packaging or label for a fibre slim-
ming product; and (iv) from passing off any fibre slimming product
as the applicant's FIBRE TRIM product.
Its cause of action was said to be based on unlawful compe-tition and, more
particularly, on passing off.
In his judgment in the Court a
quo
, VAN NIEKERK J
said
9
said that in his view, whether the products were placed side by
side or inspected individually, there could be no confusion whatsoever
between
them; and that, taking full cognisance of the television advertisement, he was
not per-suaded that the respondents had in
any way represented EASI SLIM as the
product of the applicant. Accordingly, the applicant had failed to make out a
prima facie
case for the relief which it claimed, and the application was
dismissed with costs.
Leave to appeal to this Court was granted.
After the appeal had been
noted, both the respondents were placed under provisional liquidation.
Thereafter HOECHST duly gave notice,
in terms of s. 359(2)(a) of the
Companies
10
Companies Act
, No 61 of 1973, of its
intention to proceed with the appeal. The attorneys acting for the respondents
advised the Registrar of this
Court that in the light of their financial
situation the respondents would not formally be opposing the appeal. In
consequence only
HOECHST was
represented at the hearing.
and General Agencies (Pty) Ltd In the leading case of
Capital EstateTand
Others v
Holiday Inns Inc and Others
197 7(2) SA 916 (A), RABIE JA
said at 929 C-E:
"The wrong known as passing-off consists in a representatíon by one
person that his business (or merchandise, as the case may
be) is that of
another, or that it is as-sociated with that of another, and, in order to
determine whether a representation amounts
to a passing-off, one enquires
whether
11
whether there is a reasonable likelihood that members of the
public may be con-fused into believing that the business of the one is,
or is
connected,with that of another ... Whether khere is a reasonable likelihood of
such confusion arising is, of course, a question
of fact which will have to be
determined in the light of the circumstances of each case."
In
Policansky Bros. Ltd. v L & H Policansky
, 1935
AD 89, WESSELS CJ pointed out at 97 that -
"The Roman-Dutch Law was well acquainted with the general principle that a
person cannot, by imitating the name, marks or devices
of another who had
acquired a reputation for his goods, filch the former's trade."
and said at 98 that -
"As our Roman-Dutch authorities do not deal with the various aspects of
passing-off actions that modern conditions have evoked, we
in South Africa have
followed the principles enunciated by the English
and
12
and American courts where such principles are not in conflict
with either our com-mon law or our statute law."
The classic dictum in England is that of LORD KINGSDOWN
in
Leather Cloth Co Ltd v American Leather Cloth Co Ltd
[1865] EngR 199
;
(1865) 11 HL Cas 523
at 538
(11 ER 1435):
"The fundamental rule is, that one man has no right to put off his goods for
sale as the goods of a rival trader, and he cannot, therefore
(in the language
of Lord Langdale in the case of
Perry v Truefitt
[1842] EngR 1167
;
(1845) 6 Beav. 66)'be
allowed to use names, marks, letters, or other indicia, by which he may induce
purchasers to believe that the goods which he is sel-ling
are the manufacture of
another per-son..' "
The applicable principles were stated in the speech
of LORD PARKER OF
WADDINGTON in
A.G. Spalding and Bros v A W
Gamage Ld
(1915) 32
RPC 273
(H.L.) at 284 lines 16-29:
"My
13
"My Lords, the basis of a passing-off action being a false representation by
the defendant, it must be proved in each case as a fact
that the false
representation was made. It may, of course, have been made in express words, but
cases of express misrepresentation
of this sort are rare. The more common case
is, where the re-presentation is implied in the use or imitation of a mark,
trade name,
or get-up with which the goods of another are associated in the
minds of the public, or of a particular class of the public. In such
cases the
point to be decided is whether, having regard to all the circum-stances of the
case, the use by the de-fendant in connection
with the goods of the mark, name,
or get-up in question impliedly represents such goods to be the goods of the
plaintiff, or the
goods of the plaintiff of a particular class or quality, or,
as it is sometimes put, whether the defendant's use of such mark, name,
or
get-up is calculated to deceive. It would, however, bc impossible to enume-rate
or classify all the possible ways in which a man
may make the false
representa-tion relied on."
The
14
The application of the principles is not limited to
material
appearing on the goods themselves. That was made clear in
the opinion of the Judicial Committee of the Privy Council
in an appeal
from Australia (
Cadbury-Schweppes Pty Lbd v
The Pub Sguash Co Ltd
(1981) RPC 429)where
LORD SCARMAN said
at 490 lines 36-44:
"The width of the principle now authori-tatively recognised by the High Court
of Australia and the House of Lords is, there-fore,
such that the tort is no
longer anchored, as in its early nineteenth century formulation, to the name or
trade mark of a product
or business. It is wide enough to encompass other
descrip-tive material, such as slogans or visual images, which radio, television
or news-paper advertising campaigns can lead the market to associate with a
plaintifjf's product, provided always that such de-scriptive
material has become
part of the
goodwill
15
goodwill of the product. And the test is whether the product
has derived from the advertising a distinctive character which the market
recognises."
In the present case, HOECHST's complaint is that the EASI SLIM packaging
misrepresents that it is the product of, or is associated
with, HOECHST.
It
does not contend that the misrepresentation appears from a comparison of the
EASI SLIM pack with the FIBRE TRIM pack alone. That
attitude is undoubtedly
correct, having regard to the general impression produced by the two packs, and
the important differences
between them - in particular, the FIBRE TRIM pack does
not contain a representation of a blonde in a red leotard, and the EASI SLIM
pack does not have the motifs of a half orange and a head of wheat.
As
16
As formulated in the founding affidavit, and de-
veloped at length in counsel's heads of argument, HOECHST's
case was that the comparison to be made was one between the
EASI SLIM pack and the complete "gestalt impression" of FIBRE
TRIM. This "gestalt", it was said by Mr NEL, who is the
product marketing manager of the relevant division of HOECHST,
"... lies not only in the physical product packaging but also very materially in
HOECHST's advertising of it. Put another way, users
of slimming aids, who have a
passing familiarity with the product FIBRE TRIM, have an image of it comprised
in part of recollection
of the packaging and in part of recollection oC
themes
in advertising for it." (Nel's emphasis)
Reliance
was placed particularly on the television commer-
cial
17 cial, but also on HOECHST's other advertising. NEL said
that "a costumed blonde is central to the trade dress or gestalt of ...
FIBRE
TRIM", and that the symbols of a cos-tumed blonde and yellow tape measure
perform the function of "linking ineluctably the
television advertising with the
image on the FIBRE TRIM packaging itself". What he appears to be saying is that
the "gestalt impression"
is a composite memory image derived from the
recollection of visual per-ceptions received at different times from the FIBRE
TRIM
pack and from advertising sources.
The word "gestalt" came into the
English language by way of Gestalt Psychology. It is defined in Volume I of the
Supplement of the
Oxford English Dictionary as:
"A
18
"A 'shape''configuration', or 'structure' which as an object
of perception forms a specific whole or unity incapable of ex-pression
simply in
terms of its parts (e.g. a melody in distinckion from the notes that make it
up)."
NEL and HOECHST's counsel do not, ib is clear, use
the word "gestalt" in that sense. As they use it, it is
an object not of
perception, but of recollection. Counsel
could not refer to any such use of
it in a dictionary or a
standard work of reference, or a work on psychology.
Nor
was there expert evidence from a psychologist to lend sup-
port to the
bald assertions of NEL, whose only claim to ex-
pertise is in the field of
marketing pharmaceutical, personal
hygiene and health products. At best the
existence of a
"gestalt impression" is no more than theoretical, and there has
been
19 been no attempt to prove that any individual, let alone
a substantial part of the public, has the "gestalt impression" which NEL
describes.
When faced with these difficulties, counsel abandoned any reliance
on "gestalt impression". At the end of the day their argument was
that the
repeated showing of the tele-vision commercial, and the other advertising, had
established a blonde in a leotard,and a yellow
tape measure,as symbols
per
se
of HOECHST's product, which it was said, "are linked together through the
packaging".
From some of the affidavits filed on behalf of HOECHST, it
appears that when the deponents were shown the EASI SLIM pack in the course
of
the marketing survey which will be re-
ferred
20 ferred to later in this judgment, it recalled to them the television
commercial, including the lady throwing away her "fat clothes",
and a yellow
tape measure. That, however, does not establish a case. What HOECHST had to show
was that as a result of the television
advertising a blonde in a leotard,and a
yellow tape measure,had become part of the goodwill of the product, which
required proof
that the product had derived from the advertising a distinctive
character which the market recognized. (See the statement by LORD
SCARMAN in the
Cadbury-Schweppes
case quoted above.)
In O
ertli A G v E J Bowman (London) Ld & Others
388 (1957)RPC (CA) JENKINS LJ said at 397 lines 10 to 34:
"It is,of course, essential to the success of any claim in respect of
passing-off
based
21
based on the use of a given mark or get-up that the plaintiff should be able
to show that the disputed mark or get-up has become by
user in this country
dis-tinctive of the plaintiff's goods so that the use in relation to any goods
of the
kind dealt in by the plaintiff of that
will mark or get-up will be understood by the trade
and the public in this country as meaning
that the goods are the
plaintiff's goods.
The gist of the action is that the plaintiff,
by using
and making known the mark or get-
up in relation to his goods, and
thus
causing it to be associated or identified
with those goods, has
acquired a quasi-
proprietary right to the exclusive use of
the mark or
get-up in relation to goods of
that kind,which right is invaded by
any
person who, by using the same or some
deceptively similar mark or
get-up in re-
lation to goods not of the plaintiff's
manufacture, induces customers to
buy from
him goods not of the plaintiff's manufac-
ture as goods of the
plaintiff's manufac-
ture, thereby diverting to himself orders
intended
for and rightfully belonging to
the
22
the plaintiff. But, as appears from "Kerly on Trade Marks",
7th Edition, at page 521, "it is not, however, necessary to show that
the
customers who knew the goods of the plaintiff's firm by a particular name or
get-up knew anything whatever about the plaintiff.
It is immaterial that they
did not even know his name; for it is sufficient to prove that pur-chasers of
his goods recognised, by
the use of the marks in question in connection with
them, that they were goods of a par-ticular class, and to show that such class
is, in fact, constituted by his goods". See also
William Edge & Sons Ld.
v
.
William Niccolls & Sons Ld
.,
(1911) A.C. 693.
Nevertheless, if
the plaintiff can-not prove the association or identification of the disputed
mark or get-up in this country with
goods in fact of his manufac-ture, the
action fails in
limine
."
(See also the speech of VISCOUNT SIMONDS in the appeal to
the House of
Lords((1959)RPC 1 at 4 lines 21 to 31)).
JENKINS
23
JENKINS W was dealing with the use of "a given mark or
get-up", but what he said applies with equal force to the use of other
descriptive
material such as visual images on tele-vision.
In the FIBRE TRIM
commercial there are various camera shots of the costumed blonde, showing her
inter alia
throw-ing away her "fat clothes", standing with arms akimbo,
and standing with a yellow tape measure about her waist. Posters exhibited
in
shops and supermarkets showed the same or a "look-alike" blonde in the latter
pose.
in my opinion persons viewing the commercial would not see the girl as
a symbol of FIBRE TRIM at all; they would see her as a girl
who plays a part in
a commercial which adver-
tised
24
tised FIBRE TRIM. (It is open to doubt whether a blonde, in
leotard or swimming costume, could, as such and without more, ever be
distinctive of a particular slimming product: pic-tures of women (blonde or
brunette) so clad form part of the common coinage of
slimming and other product
advertising.)
Nor do I think that it has been shown that the shot of the girl momentarily
standing with arms akimbo (which is the only one bearing
any similarity to the
blonde on the EASI SLIM package) has become distinctive of FIBRE TRIM.
There is no evidence, other than NEL's assertion, that a yellow tape measure
has become distinctive (in the
relevant
25 relevant sense) of FIBRE TRIM. From the copies of
adver-tisements contained in the papers, it would seem that a tape measure is
a
visual cliché in slimming products adver-tising - not surprisingly in the
present day, when a woman's figure is often defined
by her "vital statistics",
and the waist-line is a preoccupation of the not-so-slender.
The conclusion
is that HOECHST did not prove the necessary association or identification of a
costumed blonde or a tape measure with
FIBRE TRIM.
It was argued, however, that it had been shown that there was actual
confusion between FIBRE TRIM and EASI SLIM. In this regard reliance
was placed
on the report of a market-ing survey carried out by MARKINOR (PTY) LTD, under
the direction of Dr PRISCILLA DE GASPARIS,
its research director
since
26 since 1983, whose affidavit was filed by HOECHST.
In a passing off case decided in 1968 (
Coca Cola Co v William Struthers
& Sons Ltd
,(1968)RPC 231 (Court of Session) there was evidence of this
kind. This had been
obtained by an employee of SOCIAL SURVEYS GALLUP POLLS LIMITED,
out an organisation which carried market research and the like.
The LORD PRESIDENT (LORD CLYDE) observed at 236 lines 8-10:
"We are accustomed to Gallup Polls of this nature conducted to confirm a
politician's hopes or fears, but it is a novel ex-pedient
to use answers to a
questionnáire as evidence in a court of law."
The expedient is novel no longer. The law reports contain
a number of
cases in which it has been adopted: in South
Africa in
Rusmarc(SA)(Pty)
Ltd v Hemdon Ent
erp
rises (Pty) Ltd
1975
27 1975(4) SA 626 (W) and
Die Bergkelder v Delheim
Wines (Pty
)
Ltd
, 1980(3) SA 1171 (C); in New Zealand in
Customglass Boats Ltd v Salthouse Brothers Ltd
,(1976)RPC 589; and in
England in the
G E Trade Mark Case
,
(1969) RPC 418
(Ch.D);
(1970) RPC 339
(Court of Appeal); and
(1973) RPC 297
(House of Lords);
Lego System
Aktieselskab and Another v Lego M Lemelstrich Ltd
(1983)FSR 155 (Ch.D);and
Stringfellow v McCain Foods (G.B.) Limited
(1984) RPC 501
(in the
Chancery Division and the Court of Appeal).
There are two problems associated
with such surveys: the problem of getting the evidence before the court (the
problem of admissibility);
and the problem of the value of the survey, having
regard to the way in which it was con-
ducted
28 ducted (the problem of weight).
In the view which I take of
the survey in the present case, it is not necessary to consider the first
problem, and I shall assume,
without deciding, that the survey is admis-sible in
evidence.
There has been scepticism expressed as to the value
of such evidence. In
his judgment in the Chancery Division
in the
Stringfellow
case
(
supra
) at 513, WHITFORD J said:
"Before I come to the evidence on which I am able to rely, I must mention
some evidence upon which I do not propose to rely at all.
Both parties decided
to commission public opinion surveys. I confess that my experience in the past
so far as public opinion surveys
in pro-ceedings of this kind are concerned
has
not
29
not been a happy one and this case has been no exception. I do
not say that the day may not come when I shall find such a survey or
such
surveys of value; I say only that it has not come yet."
(Compare the observations of SLADE L J in his judgment in
the Court of Appeal at 532 lines 10-12).
The survey in the present case was commissioned by
HOECHST in January 1985
in anticipation of the market launch
of EASI SLIM. It was stated in the introduction to the re-
port:
"(The pack of EASI SLIM) uses the same themss as advertising for (HOECHST's)
highly successful product, Pibre-Trim - a young woman
in a bathing suit and tape
measure. (HOECHST) suspects that Fibre-Trim's seating in the public mind is
being misappropriated by Easi-Slim.
Consequent-ly research was commissioned to
establish
whether
30
whether in fact consumers of slimming products are confused between the two
products, Easi-Slim and Fibre-Trim."
The survey consisted of
separate interviews, at
which a questionnaire was used, with two hundred
white females who were users of slimming products. An EASI SLIM product pack was
shown to each interviewee, who was then asked a number of questions, including
-Q.2 Have you seen or heard of this before? Q.3 When
did you first see or hear
of this? Q.4 How did you first get to see or hear about this? Q.5 Have you seen
or heard any advertising
for this? Q.6 Please tell me everything you can
remember about the advertising.
Dr. DE GASPARIS analysed the results of the survey.
which
31
which she summarized in her affidavit as follows:
In regard to Q.l, she said:
"Of the 200 persons interviewed,
45,5%(or 91 interviewees) said
that they
had seen or heard of EASI SLIM fibre
tablets before;
A further 35% (or 70 interviewees) said
that they had possibly heard of the product,
but were not quite sure;
The remaining 39 interviewees in the sample
initially declared the product to be FIBRE
TRIM, but almost immediately changed their
mind."
In regard to Q.2, 40 interviewees claimed to have
first seen or heard of
the product on television, 20 inter-
viewees claimed to have seen it in
magazines and 12 inter-
viewees claimed to have heard about the product in
radio ad-
vertising. Dr. DE GASPARIS said that -
"While
32
"While no certain conclusion can be
drawn from the mere fact that
36% of the
sample claimed to have
first
encountered
in advertising a product which had not
been advertised (i.e. the interviewees
could have been speculating) a very
different picture emerges (when the
answers to Qs. 5 and 6) are analysed)...
105 interviewees claimed to have seen
advertising for the product. (This re-
presents 65% of the 161 interviewees who
declared they were familiar with the product).
Thus in total 72 interviewees (or 36% of
the sample) claimed first to have heard
of the product in advertising."
She continued:
"The nature of a great deal of the adver-tising material recalled
unequivocally
in-dicates, in my opinion, familiarity with distinct themes
in FIBRE TRIM's adver-tising, with which themes I am fully familiar ...
Those
themes are -1. the lady who thrcw away her fat clothes/
a skinny model throwing away her fat clothes
(25
33
(25 interviewees);
2. the use of the Springbok cricketer, Alan
Kourie, in the advertising (2 interviewees)."
Her conclusion was that "this aspect of the survey positive-
ly indicates
complete confusion in a significant proportion
between the EASI SLIM pack and
FIBRE TRIM as advertised."
In my opinion, that conclusion is unacceptable for
the reasons which
follow ..
(a) A fundamental criticism of the survey is, to use the
words of LORD
CLYDE in the
Coca Cola
case (s
upra
)at 236-7:
"... that it arises from an artificially contrived situation wholly divorced
from 'the course of trade', and the evidence thus sheds
little if any light on
the question whether when the persons inter-viewed were actually buying the
products
of
34
of one or the other of the parties to this case they would
confuse one product with the other."
(b)
No comparison between the
two products was at any time invited. Interviewees were not shown the FIBRE TRIM
pack, even at the end of
the interview, when a sight of it might have provided a
wholesome corrective to their mistaken im-pressions.
(c)
Two of the questions were subject to serious criticism. It is basic,
if a survey is to have any value, that the questions should be
fair, and that
they should be so formulated as to preclude a weighted or conditioned response.
In his affidavit, Mr. GREEN, the managing
director of MANIKOR, said that "It is
important that questions asked in survcys of this kind be free from bias so that
a true response
is elicited
from
35 from each interviewee." It is at least as important
that the guestions should be free from
suggestio falsi
.
Qs 1 and 5
were likely to mislead and conseguently to elicit incorrect answers. It was
implicit in Q.1 (namely, "Have you seen ...
this before") that the pack
exhibited was available to be seen in the market place. Similarly it was
implicit in Q.5 (namely, "Have
you seen ... any adver-tising for this") that the
product had been the subject of visual advertising which could have been seen by
the inter-viewee. Both suggestions were false. The survey, accord-ing to GREEN,
was conducted "within one or two days of the initial
and sporadic first
distribution of EASI SLIM fibre tablets on the market". And up to that time
there had been no visual advertising
of EASI SLIM. In these circumstances,
it
36 it would have been natural for interviewees to think,
mis-takenly, that they had seen the EASI SLIM pack, and that they had seen
advertisements for it. It is probable that many
of them were in doubt, or
guessing - that is indicated by
that the fact that out of a total of 200, 70 interviewees said that
they had possibly heard of the product, but were not quite
sure, and 39
initially declared the product to be FIBRE TRIM
but almost immediately
changed their minds. If they were
in doubt or guessing, they would have been likely, in view
of the false
suggestion, to give the answers "yes" to Q.l
and to Q.5, and in answer to Q.6
to recall the advertising
which they had seen, namely, that of FIBRE
TRIM.
(d) The survey did not deal with the important question of
what
37
what was the cause of any confusion which might have
existed.
Confusion per se does not give rise to an action for passing
off.
It does so only where it is the result of a misre-
presentation by the
defendant that goods which he offers are
those of the plaintiff or are
connected with the plaintiff.
That has not been shown. The cause of any
confusion is pro-
bably to be found elsewhere.
In Halsbury's
Laws of England
,(4th ed., Vol 48 para
153)) it is said:
"Where the public is familiar with the plaintiff's goods or services of a
parti-cular kind, substantial numbers of persons may assume
that competing goods
or services offered by a newcomer are the goods or services of the plaintiff
with whom they have hitherto been
familiar, but confusion arising merely from
this cause is to be disregarded."
In
38
In support the learned authors cite
Jones Bros Ltd v
Anglo-
American Optical Co
(1912) 29 RPC 361
(C.A.), where
FLETCHER
MOULTON L.J., having posed the question, "What evidence have
(the plaihtiffs)called?", said at 369 lines 19-24:
"They have called people, most of whom knew of the Plaintiffs' goods and did
not know of anybody else who was making goods of that
colour and nature; and it
is very natural that, having seen dusters of that colour and nature they
thought, at first sight, that
they were the Plain-tiffs' goods, because they did
not know of anybody else who was making them."
See also
Compatibility Research Ltd v Computer Psyche Co Ltd
1967 RPC 201
(Ch.D) where STAMP J said (206 lines 17-25):
"No doubt both the plaintiff and the defen-dant companies are carrying on
similar businesses; also, no doubt, they are using similar
methods; and, if it
be the fact that,
until
39
until the defendants set up business, the plaintiff's business
or its methods was almost unique in this country ... it seems very
likely that
members of the public who had heard of the plaintiff's business and how it was
carried on would, when the defendants
started their business, assume, when they
came upon the defendant's pamphlets or brochures, that this was the business of
which they
had heard. ..."
When it was introduced by HOECHST, FIBRE TRIM was the
first fibre slimming
product on the South African market.
HOECHST's advertising of it was
extensive. Sales were "huge".
The only competing fibre tablet referred to in
the papers was
QUIKSLIM, which the first respondent introduced in
September
1984. According to NEL "the product did not do anywhere near
as well as FIBRE TRIM". The QUIKSLIM pack was not depicted in the
papers and there was no evidence of the extent to which it
had
40
had been advertised.
In these circumstances, it is probable
that inter-viewees, who had heard of FIBRE TRIM, and seen the advertising would,
when shown
the EASI SLIM pack, assume that this was the product of which they
had heard and which they had seen advertised.
My conclusion is therefore that
HOECHST failed to make out a case of passing off, and that VAN NIEKERK J
cor-rectly dismissed the
application.
The appeal is dismissed with costs.
H C NICHOLAS, AJA CORBETT, JA
BOSHOFF, AJA
GROSSKOPF, JA) Concur
VIVIER,JA )
BOSHOFF,AJA)