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[1992] ZASCA 2
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Weber-Stephen Products Company v Alrite Engineering (Pty) Ltd. and Others (201/91) [1992] ZASCA 2; 1992 (2) SA 489 (AD); (24 February 1992)
Case No. 201/91
IN THE SUPREME COURT ÓF SOUTH AFRICA (APPELLATE DIVISION)
In
the matter between:
WEBER-STEPHEN PRODUCTS COMPANY
Appellant
and
ALRITE ENGINEERING (PTY) LIMITED
1st Respondent
JAMES JOHN
BAYMAN JORDAN
2nd Respondent
RAYMOND GABRIEL JOSEPH
3rd
Respondent
CORAM:
CORBETT, CJ, EM GROSSKOPF, MILNE, GOLDSTONE,
VAN DEN HEEVER, JJA
HEARD:
22 November 1991
DELIVERED:
24
February 1992
2
JUDGMENT E M GROSSKOPF, JA
This is an appeal against a judgment of
STEGMANN J in the Transvaal Provincial Division in which he dismissed an
application for relief
based upon alleged infringements of an interdict. The
judgment is reported: see
1990 (2) SA 718
(T).
The appellant is a corporation
incorporated under the laws of the State of Illinois in the United States of
America. It manufactures
and sells,
inter alia
, a product known as the
Weber One Touch Barbecue Grill. This barbecue grill has been imported into the
Republic of South Africa since
the late 1970s. Since about 1986 the first
respondent, a South African company having its principal place of business in
Johannesburg,
has manufactured and sold a competing product called the Mirage
Braai Oven which is virtually identical to the appellant's product.
In 1987 the appellant instituted motion proceedings in the Transvaal
Provincial Division against the first respondent. For present
purposes only two
of the grounds of relief relied
3
upon by the appellant are relevant. The first was passing-off
the
appellant contended that the first respondent was passing off its Mirage Oven as
the appellant's Weber Grill. The second unlawful
act was alleged to consist in
plagiarism of the Weber Grill, which, it was contended, constituted unfair
trading.
The matter came before VAN ZYL J. On 30 November 1987 he allowed the
application on the grounds of passing-off and granted an interdict
restraining
the offending conduct. I shall deal later with the exact terms of the interdict.
VAN ZYL J found it unnecessary to deal
with the appellant's complaint of
plagiarism.
With the leave of the trial judge the matter went on appeal to the full
court.
On 23 March 1989 the full court dismissed the appeal. I shall henceforth
refer to its judgment simply as the judgment of the full
court. The full court
did slightly amend the order granted by VAN ZYL J, but this was done only for
the sake of clarity. Nothing
turns on this amendment. The order, as
4
amended, reads as follows:
"The respondent, its servants and agents, are interdicted from passing off as a
'Weber One Touch Barbecue Grill', by sale, distribution
or any other means, its
kettle type barbecue grill known as the 'Mirage' or any other grill which
embodies a get-up confusingly or
deceptively similar to the 'Weber One Touch
Barbecue Grill' without clearly distinguishing it from the 'Weber One Touch
Barbecue
Grill' of the applicant".
Even prior to the appeal the first respondent
(acting
through its directors, the second and third
respondents) obtained
legal advice about the effect of VAN ZYL J's judgment.
On the
strength of this advice the respondents had notices printed in
both
official languages for attachment to their Mirage Ovens.
These notices read
as follows:
"This MIRAGE braai/oven is an all South African product by ALRITE and has NO
CONNECTION WITH the 'One Touch Barbecue Grill' of WEBER-STEPHENS
CO. of
America."
"Hierdie MIRAGE braai/oond is 'n eksklusiewe Suid-Afrikaanse produk deur ALRITE
en het GEEN VERBINDING hoegenaamd met die 'One Touch
Barbecue Grill' deur
WEBER-STEPHENS CO. van Amerika."
As stated by the court
a quo
(at p. 725 C-D),
these
5
notices were of a generous size in.relation to the objects to
which they were to be attached. ,The respondents caused four of the
notices to
be attached by means of adhesive tape to the outside of each Mirage Oven they
sold after the dismissal of the appeal,
two such notices in English and two in
Afrikaans. Two were attached to each lid and two to each bowl, in such a way
that the notices
covered most of the outer surfaces of the Mirage Oven and,
whilst in position, could not be overlooked by any potential purchaser.
The
respondents also stipulated to retailers to whom they thereafter sold Mirage
Ovens that they were only to be displayed and sold
with the notices
attached.
On 2 June 1989 the appellant applied to the Transyaal Provincial division for
an order imposing sanctions on the respondents for alleged
contempt of the order
of the full court. The second and third respondents were joined in these
proceedings as being the persons responsible
for the acts of the first
respondent. The respondents did not contest their joinder or the grounds on
which it was based.
6
At the hearing of the matter, the appellant sought in the alternative an
order declaring that the respondents had acted in conflict
with the judgment and
order of the full court.
Both the main and the alternative claim were based
mainly on the propósition that the affixing of the said notices was not
sufficient to distinguish the respondents' Mirage Oven from the appellant's
Weber Grill. In addition the appellant complained of
a number of specific
incidents in which Mirage Ovens had been displayed for sale without the notices,
and one or two other isolated
alleged infringements of the interdict.
On 14 December 1989 STEGMANN J dismissed the application with costs. With his
leave the matter now comes on appeal before us.
While the appeal to this court was pending the appellant applied on notice of
motion for leave to adduce further evidence on appeal.
The evidence sought to be
adduced was set out in affidavits accompanying the notice of motion. I shall
deal with their contents later.
The respondents filed opposing
7
affidavits, to which the appellant replied.
When the matter
was called Mr. Puckrin, who appeared for the appellant, informed us that the
appellant was not proceeding with the
case based on alleged contempt of court,
but was seeking only the relief which it sought as an alternative in the court
a quo
, viz, an order declaring that the respondents had acted in conflict
with the judgment and order of the full court. There are accordingly
now two
matters before us, namely, the application to lead further evidence and the
appeal as limited by counsel.
For reasons which will become apparent later, I propose dealing with the
appeal first, and I start with the main issue, viz, whether
the sale or display
of Mirage Ovens with the above notices affixed to them constitutes an
infringement of the interdict. The answer
to this question depends firstly on an
interpretation of the terms of the interdict. In
Firestone South Africa (Pty)
Ltd v. Gentiruco A.G.
1977(4) SA 298 (A) at 304 D-E TROLLIP JA said the
following:
8
"The basic principles applicable to construing documents also apply to the
construction of a court's judgment or order: the, court's
intention is to be
ascertained primarily from the language of the judgment or order as construed
according to the usual, well-known
rules. See
Garlick v. Smartt and Another,
1928 A.D. 82
at p. 87;
West Rand Estates Ltd. v. New Zealand Insurance
Co. Ltd.,
1926 A.D. 173
at p. 188. Thus, as in the case of a document, the
judgment or order and the court's reasons for giving it must be read as a whole
in order to ascertain its intention."
To determine the content and ambit of the interdict
it
will accordingly be necessary to read the order
of the full court
in the light of its judgment, and the judgment of VAN ZYL J
in.
so far as it has not been disturbed on appeal. The order of the
full court
in essence prohibits the "passing-off ... by sale,
distribution or any other
means" of the respondents' Mirage Oven
for the Weber Grill "without clearly distinguishing it" from the
Weber
Grill. This wording is somewhat inelegant - once the
first respondent has clearly distinguished its product from that
of the appellant, it would no longer be passing it off. However,
be that as it may, what the interdict clearly contemplates is
that the first respondent will not be entitled to sell,
9
distribute or otherwise deal with its product without so ._
distinguishing
it. The order itself does not prescribe how the
respondent should distinguish
its product (as noted later, this
form of order is common in passing-off
cases). It does, however,
give a hint of what the court regarded as the
objectionable
feature of the Mirage Oven when it lays down that the
interdict
applies also to any other grill "which embodies a
get-up
confusingly or deceptively similar to the Weber Grill."
That it was the "get-up" of the Mirage Grill, in
the
sense of its appearance (ie, its shape,
configuration,
appurtenances, etc.) that was the essential feature of
the
passing-off in the view of VAN ZYL J and the full court, appears
clearly from their judgments. This was in accordance with the
case put forward by the appellant, which VAN ZYL J described as
follows:
"The applicant has placed great emphasis on its averment that the shape or
configuration of the Weber grill, together with its whole
appearance or
'get-up', is central to the advertisements and other publicity relating to it.
It is this get-up which is recognised
10
by potential customers as originating from the applicant. It is, according to
the applicant, clearly distinctive and has been basic
to the high repute in
which it is held. The applicant, has, it is submitted, built up considerable
goodwill and reputation on the
basis of its distinctive shape and get-up which
are described as unique and unusual."
After setting out the various matters raised in the
"
affidavits and the requirements for an action of
passing-off (as
laid down in cases such as
Capital Estate and General
Aqencies
(Pty) Ltd and Others v. Holiday Inns Inc. and Others
1977(2) SA
916
(A) at 929 C;
Brian Boswell Circus (Pty) Ltd and Another
v.
Boswell-Wilkie Circus (Pty) Ltd
1985(4) SA 466 (A) at p. 478
J
and
Hoechst Pharmaceuticals (Pty) Ltd v. The Beauty Box (Pty)
Ltd
(in liquidation) and Another
1987(2) SA 600 (A) at pp. 613 D to
614 D) VAN ZYL J dealt with the reputation which a plaintiff in
a
passing-off action must establish in respect of the goods in
question. By
reason of the case presented by the appeilant, he
concentrated on the get-up and appearance of the goods. He said:
"The reputation in question may be direct or indirect. In the latter case the
applicant must prove that the respondent 'has used
or is using, in connection
with
11
his own goods, a name, mark, sign or get-up which has become distinctive' and
that the feature or features on which the applicaht
relies 'has acguired a
meaning or significance so that it indicates a single source ' of goods on which
that feature is used' (see
Adcock-Ingram Products Ltd v Beecham.SA (Pty) Ltd
1977 4 SA 434
(W) at
436H to 437A).
Where the reputation is alleged to be the imitation of get-up, various
principles apply. The concept 'get-up' has been defined in
the English case of
JB Williams Co. v H Bronnley & Co Ltd
(1909) 26 RPC 765
at 773 (per
Fletcher Moulton, LJ) as 'a capricious addition to the article itself - the
colour, or shape, it may be, of the wrapper,
or anything of that kind'.
Elsewhere 'get-up' has been described as 'the dress in which the goods are
offered to the public' (see
John Haig & Co Ltd v Forth Blending Co Ltd
& Another
[1953] ScotCS CSOH_3
;
(1953) 70 RPC 259
at 261, cited with approval in
Agriplas
(Pty) Ltd & Others v Andrag & Sons (Pty) Ltd
1981 4 SA 873
(C) at
889 C-E).
Imitation of the shape or design of an article may also be a form of
representation, provided that the shape or design is distinctive
of the
applicant's goods while the respondent's imitation is of such a nature that it
may be likely to deceive or confuse the public.
This is the case even if
potential customers should not know who the manufaturer of the applicant's
product is. See
F. Hoffmann-La Roche & Co AG & Another v DDSA
Pharmaceuticals Ltd
(1969) FSR 410
at 416 D (per Harman LJ):
'Goods of a particular get-up just as much proclaim their origin as if they
had a particular name attached to them, and it is
12
well-known that. when goods are sold with a particular get-up for long enough
to be recognised by the public as goods of a particular
manufacture it does not
matter whether you know who the manufacturer is'"
After considering the evidence on affidavit, VAN
ZYL
J reached the following conclusion about the
appellant's
reputation in respect of the Weber Grill:
"Despite the respondent's protestations to the contrary it would appear that the
applicant has indeed built up a reputation and hence
substantial goodwill in
respect of the Weber grill. This grill, which has proved to be an extremely
useful device, came into being
as a result of considerable effort, skill and
expertise applied and expense incurred over a period of some time. A vigorous
advertising
campaign led to significant sales in South Africa during the period
from 1980 to November 1986 when some 4 020 units with a retail
value of R960 000
were sold.
The shape of the grill and its general appearance or get-up can
indeed be described as unusual or unique in a country where the 'braai'
and
barbecue have become a way of life
...
and it must be concluded that the
applicant has established the existence of goodwill in respect of the particular
get-up of the Weber
grill. It is this get-up which has become distinctive and is
associated in the minds of potential purchasers with the Weber grill
. This
conclusion is supported by the applicant's evidence on affidavit, despite the
respondent's evidence to the contrary.
It is furthermore not disputed by the
respondent that the
13
shape and external configuration of the Weber grill is not functional so that
other shapes and configurations may be equally effective
." (emphasis
added)
It is clear from this passage that the
feature in respect of which the appellant was held to have acquired a
reputation, was the appearance
of the Weber Grill - its "particular get-up", its
"shape and external configuration".
After a further discussion of the
evidence, VAN ZYL J concluded that there was "a reasonable possibility that
pptential purchasers
may be confused or deceived into believing that the Mirage
grill is the same as the Weber grill". The appellant "has hence established
passing-off by the respondent as alleged and is entitled to ah interdict".
Before the full court, the main issue argued was stated
as follows by ELOFF DJP:
"The issue can be said to be whether it was shown by the respondent that the
marketing of the Mirage raises
a reasonable likelihood that ordinary members. of the public, or a
substantial section thereof, may be confused or deceived into believing
that the
Mirage emanates from the respondent or that the appellant is connected in the
course of trade with the respondent".
14
The judgment of the full court first summarized
again
the applicable legal principles. Then, before
considerihg the
evidence, ELOFF DJP stressed the following specific aspects
of
the two competing products:
"The shape of the Weber grill is not. the same as that adopted by other enclosed
grill manufacturers. It was established that kettle
type barbecue grills come in
all shapes and sizes; the respondent opted for the specific shape depicted in
the photographs.
Related thereto is the fact that the shape of the enclosed barbecue grill is not
a functional feature thereof. Such a grill would
operate equally well if it had
a shape substantially different from that of the Weber. The shape chosen for the
Weber grill is a
distinctive part of its get-up. To' this I should add that the
various features making up the totality of the shape can be described
- by
adopting a phrase used by FLETCHER MOULTON LJ in
J B Williams Co v H Bronnley
& Co Ltd
(1909) 26 RPC 765
at 773 - as capricious additions to the
product, incorporated so as to make it, as a whole, appealing to the eye and to
distinguish
it."
The court thereafter considered the evidence
presented
on behalf of the present appellant to
prove that it had
established a reputation for its product in South Africa. I need
not repeat the evidence: what matters is the court's conclusion.
15
It
was that VAN ZYL J had "correctly held that the respondent
(ie, the present appellant) had established a reputatioh in this
country
relative to the Weber grill".
The full court then went on to consider whether VAN ZYL
J was also correct in finding that there was a likelihood of
deception. In
this regard ELOFF DJP said:
"I have considered the appearance of the two articles as depicted in the
photographs. At the hearing of this appeal models of each
of the two grills were
placed before us. It is no overstatement to say that the Mirage is to the last
detail a very close imitation
of the Weber. One is hard put to find any points
of difference. Particularly noteworthy is the new ash removal device. That was
carefullý
reproduced in the Mirage. A close scrutiny of the two products
"furthermore reveals that the Mirage has a diameter, bowl depth, lid
dimension
and side curvature identical to that of the Weber. Some points of difference
were ailuded to in the affidavits. Special
mention was made of the materials
used in the construction of the Mirage and the method of manufacture. These are,
of course, not
apparent to the viewer. The only significant point of difference
is the name and this feature loomed large in the argument presented
on behalf of
the appellant.
It was pointed out that the name Mirage appears plainly in the packaging of the
product and in its promotional material. The name
Mirage also appears on the
product itself but, significantly, on exactly the same places
16
one finds on the Weber. The Weber name
inter alia
appears on the white
rim of the otherwise black wheels on two legs of the tripod. That is exactly
where the name Mirage appears on
appellant's product. The name 'Weber' appears
on one of the wooden handles affixed to the bowl. The name 'Mirage' appears on
the
same spot on appellant's product."
After reference to the judgment in
Adidas
Sportschufabriken Adi Dassler K G v
Harry Walt & Co (Pty) Ltd
1976(1) SA 530 (T) at p. 538 F - 539 D, the
full court held that
the use of different names did not effectively exclude
the
likelihood of confusion. It then added:
"It is also relevant that it was not necessary for the respondent to show that a
purchaser of the goods is aware of the identity
of the respondent or that he
knew of it at all. It is sufficient that members of the public associate the
respondent's get-up with
goods of a particular class and that those goods are
the goods of the respondent
(Adcock-Ingram Products (Pty) Ltd v Beecham SA
(Pty) Ltd
,
1977 4 SA 434
(W) from 436H
-437A)."
ELOFF DJP concluded by expressing the view
that the likelihood of confusion was substantial.
Having thus agreed with the major findings of VAN ZYL J, the full court
dismissed the appeal, subject to the slight
17
amendment to the order
which I mentioned previously.
It is convenient at this stage to state and
emphasize a few principles concerning the status of the judgment of the full
court and,
in so far as it has not been disturbed on appeal, that of VAN ZYL
J.
The judgment of the full court was a final judgment between the appellant
and the first respondent. As stated above, the second and
third respondents do
not dispute that they were properly joined in this application, nor do they
contend that they were not bound
to comply with the interdict. In the
circumstances the judgment of the full court constitutes "die judisiëel
vasgelegde reg
tussen die partye" (
Makings v. Makings
1958(1) SA 338 (A)
at p. 349 C). We are accordingly not sitting in appeal on the judgment of the
full court, and even if we were to
disagree with the findings of fact and law
which make up its
ratio decidendi
, we would be bound to give effect to
such findings
inter partes
.
The legal and factual position was therefore, in
my
18
view, correctly assessed by STEGMANN J in
the court
a quo
, when
he accepted (at p. 726 D-H) that the following
three sets of
facts were
res judicata
between the parties:
"1. The applicants have acquired incorporeal property in the form of goodwill
deriving from the reputation which the Weber Grill has
built up in the South
African market during a period which began some ten years ago in the late
1970's.
2.
The reputation is such that
potential customers identify the applicants' product by its get-up, which in
this particular instance
is said to consist principaliy of its shape and
configuration. This is not a case in which get-up relates mainiy to packaging.
The
get-up is said to be constituted by the shape, finish and general appearance
of the product itself. Cf
Lasar v Sabon Precision Machine Co (Pty) Ltd
1954(2) PH A37. The name 'Weber' which appears on the applicants' product
was held to be of minor significance. The reputation is
one in which the source
of the product is virtually unidentified. It is not even known as an American
product. As a matter of fact
the reputation, and hence the goodwill, are
essentially attached to the shape of the appiicants' product and to no other
feature
of much significance. The source and origin of the product remain
substantially anonymous.
3. Members of the public perceive that the
19
applicants' product and respondents' rival product are identical because
their shapes are indistinguishable. The names 'Weber' and
'Mirage' which appear
on the applicants' and respondents' products respectively are hardly significant
as distinguishing features."
The court
a quo
further accepted that the respondents' notices do no
more than to inform the reader that the product to which the notices are
attached
(the Mirage Oven) is from a South African source which has no
connection with the American source of the Weber Grill.
Having regard to the facts thus accepted by the
court
a quo
, the appellant argued in.this
court and the court
a quo
that the notice was ambiguous and accordingly failed to
distinguish the
Mirage Oven clearly from the appellant's Weber
Grill. STEGMANN J set out this
argument as follows (at p. 727
B-F):
"The ambiguity of the notice results from the fact that the reputation of the
Weber Grill was proved to attach principally to the
shape and not to the name or
to the product's American source. The potential purchaser, on seeing the Mirage
Oven with its notice,
and knowing that the product with the reputation has the
shape in
20
question, must remain confused after reading the respondents' notice. For the
notice merely alerts him to the fact that there are
two unconnected sources of
products having the same shape. It does not enable him to know which of such two
sources is the one that
has built up the reputation of which he is aware and
which he has learned to connect with the shape alone. Therefore, Mr
Ginsburg's
first argument concluded, the respondents' notice fails to
distinguish the respondents' Mirage Oven clearly from the applicants'
product
which enjoys the reputation, and it is accordingly inadequate to prevent a
passing off. Without the notice, the identity
of shapes of the two products is
the source of likely confusion. With a notice which does no more than to draw
attention to the fact
that there are two sources of the same shape, the identity
of shapes remains the source of likely confusion. For, according to Mr
Ginsburg's
argument, the interdict reguires that the likely confusion
should be cleared up by the respondents. It is not enough, according to
the
argument, for the respondents merely to alert the potential purchaser to the
need to make further enquiries in order to find
out to which of the two products
the reputation that he knows of attaches."
This argument seems to me to be unanswerable.
The
first respondent has been interdicted from
passing off its
product as that of the appellant. In these circumstances, if
it
wishes to continue selling its product, it is required to make
it "perfectly clear to the public that [it] is not selling the
21
goods of the original manufacturer". (
Policansky Bros., Ltd. v. L & H
Policansky
1935 AD 89
at 103
in fine
, as applied in
Brian Boswell
Circus (Pty) Ltd and Another v. Boswell-Wilkie Circus (Pty) Ltd
1985(4) SA
466 (A) at p. 483 I to 484 B. See also
Distilleerderij voorheen Simon
Rijnbende en Zonen v. Rolfes Nebel & Co.
1913 WLD 3
at p. 9. The notice
by itself did not suffice. The features of the respondents' Mirage Oven which
created the confusion were its
shape and configuration, and the notice did not
do anything effectively to eliminate this confusion.
I consider therefore that the appellant should have succeeded in the court
a quo
.
I have now to deal with various arguments advanced on behalf of the
respondents as well as the reasoning of the court
a quo
, to show why I
consider them unacceptable.
The respondents' first argument was based on the following propositions:
1. The appellant had asked before VAN ZYL J and the full court, in addition
to the relief on the grounds of passing-off, for
22
relief against the plagiarizing of its Weber Grill. This relief was not
granted.
2.
The order of VAN ZYL J and
the full court did not contain an absolute prohibition on the sale,
distribution, etc. of the Mirage Oven.
It merely prohibited such sale,
distribution, etc. "without clearly distinguishing it" from the Weber
Grill.
3.
During the argument in the full
court, the appellant had
asked for an order
unqualifiedly prohibiting the sale,
distribution, etc, of the Mirage Oven.
The full court dealt
with this argument as follows:
"It was contended on behalf of the respondent that the effect of the order was
to prevent the selling or distributing of the Mirage
and we were invited to
alter the wording of the order so as to make it clear that
no dealing
in
the product might take place. This was objected to on behalf of the appellant
and it was pointed out that selling or distributing
might take place without it
amounting to passing off. I do not think we should accede to respondent's
request."
From the form of the order, which
permits
the sale,
distribution, etc. of the Mirage Oven in its present form
if it could be effectively distinguished, together with the
23
unsuccessful attempts by the appellant to obtain an unqualified prohibition
on such sale and distribution, the respondents seek to
infer that the order of
the full court
positively authorizes
the sale, distribution, etc. of the
Mirage Grill in its present form, provided it is accompanied by a proper
disclaimer designed to
distinguish it from the Weber Grill. This would be so, it
was contended, even if the disclaimer did not in fact serve to remove the
confusion caused by the shape of the Mirage Grill.
In my view there is no
substance in this line of argument. The fact that VAN ZYL J and the full court
found it unnecessary to decide
the claim based on alleged plagiarism is of no
real significance for present purposes. If anything it counts against the
respondents
- it suggests that VAN ZYL J and the full court were of the view
that the relief which they granted was substantially as extensive
as that which
the appellant might have obtained for plagiarism and that a decision on the
latter case was accordingly not necessary.
The fact that the order of the full court permits the
24
sale, etc, of the Mirage Grill subject to its being clearly
distinguished
from the Weber Girill, does not assist the
respondents either. The qualified
form of the full court's order
is a customary one arising from the nature of
passing-off. The
essence of passing-off is a representation by one person
that his
merchandise or business is that of another, or that it is
associated with that of another. See the cases quoted by VAN ZYL
J,
supra
. The interdict in a passing-off case must accordingly
seek to ensure that the business or merchandise in question will
in future be clearly distinguished from that of the successful
plaintiff or applicant. How the defendant is to do that is not
normally indicated. As was said by GREENE MR in a well-known
passage from his judgment in
Wright Layman and Umney v. Wright
(1949) 66 RPC 149
at p 152, lines 40 to 44:
"It has been said many times that it is no part of the function of this Court to
examine imaginary cases of what the defendant could
or could not do under this
form of injunction. The best guide, if he is.an honest man, is his own
conscience, and it is certainly
not the business of this Court to give him
instructions or hints as to how near the wind he can
sail."
25
The phrase "without clearly
distinguishing" thus enables the defendant to carry on hisbusiness, if he can,
in a manner which does
not amount to passing-off, by using disclaimers or other
precautions. However, if he does attempt to do this, he runs the risk that
the
disclaimer or other precaution will prove, in law, to be ineffective; but that
is his concern (the
Brian Boswell
case,
supra
, at p. 484 H). This
form of order does not authorize him to continue passing-off merely because it
is difficult or even impossible
for him effectively to distinguish his product
from that of the successful plaintiff.
A good example of the application of
this principle is to be found in
Reckitt and Colman Products Ltd v. Borden
Inc. and Others
, a case which went through three courts in England. In that
case the respondents supplied preserved lemon juice under the trade name
JIF in
convenient plastic squeeze packs coloured and shaped like lemons. The appellants
produced three different versions of plastic
containers (referred to
respectiveiy as "Mark
26
I", "Mark II" and "Mark III") which they proposed to launch
on
the market. An action to restrain them succeeded in the
Chancery
Division of the High Court. See
Reckitt & Colman
Products
Limited v. Borden Inc. and Others
(no 3)
(1987) FSR 505.
An
appeal to the Court of Appeal failed (see
[1988] FSR 601)
as did
a
further appeal to the House of Lords ([1990]
1 All ER 873
(HL)).
In the trial court.the question was discussed:
how
would a potential competitor be able to use the
convenient and
appealing lemon shaped squeezy pack and still distinguish his
product from that of the plaintiff? WALTON J's reply was as
follows ([1987] FSR at 515):
"... it is not for the court to tell the defendant how to solve the difficulty,
or indeed in my judgment even to consider whether
the difficulty can be solved
... The onus is on the defendant to ensure that the goods do not make the false
representation that
they are the goods of the plaintiff, and for that purpose,
in my judgment, the defendant must take the market as he finds it, and
ensure
that no false representation is made in the light of that market, and the habits
of shoppers shopping therein."
27
The same problem was dealt with in the House of
Lords
as follows by LORD BRIDGE OF HARWICH ([1990] 1
All ER at p. 877
b-f):
"The idea of selling preserved lemon juice in a plastic container designed to
look as nearly as possible like the real thing is such
a simple, obvious and
inherently attractive way of marketing the product that it seems to me utterly
repugnant to the law's philosophy
with respect to commercial monopolies to
permit any trader to acquire a de jure monopoly in the container as such. But,
as counsel
for the respondents quite rightly pointed out, the order made by the
trial judge in this case does not confer any such de jure monopoly
because the
injunction restrains the appellants from marketing their product -
in any container so nearly resembling the Plaintiff's JIF lemon shaped container
... as to be likely to deceive
without making it clear to the ultimate
purchaser that it is not of the goods of the plaintiff
...' (My emphasis.)
How then are the appellants, if they wish to sell their product in plastic
containers of the shape, colour and
size of natural lemons, to ensure that the
buyer is not deceived? The answer, one would suppose, is by attaching a suitably
distinctive
label to the container. Yet here is the paradox: the trial judge
found that a buyer reading the labels proposed to be attached to
the appellants'
Mark I,II or III containers would know at once that they did not contain Jif
lemon juice and would not be deceived;
but he also enjoined the appellants from
selling their product in those
28
containers because he found, to put it shortly, that housewives buying plastic
lemons in supermarkets do not read the labels but
assume that whatever they buy
must be Jif. The result seems to be to give the respondents a de facto monopoly
of the container as
such, which is just as effective as de jure monopoly. A
trader selling lemon juice would never be permitted to register a lemon as
his
trade mark, but the respondents have achieved the result indirectiy that a
container designed to look like a real lemon is to
be treated, per se, as
distinctive of their goods.
If I can find a way of avoiding this result, I would. But the difficulty is that
the trial judge's findings of fact, however surprising
they may seem, are not
open to challenge. Given those findings, I am constrained ... to accept that the
judge's conclusion cannot
be faulted in law."
It is clear from these passages that the
qualified
order granted by the court in the
Reckitt & Colman
case did not
entitle the appellants in that case
to continue using their
plastic containers unless they could effectively
distinguish
their product from that of the respondents. If there was no
way
of so distinguishing their product short of changing the
container, then that is what they would have had to do if they
wished to
continue selling their product.
29
I turn now to an analysis of the judgment of the court
a quo
,
the reasoning of which incorporates the rest of the respondents' main arguments.
Since the judgment is reported I shall confine
myself to its salient features.
They may be set out in the following propositions.
1.
The steps taken up to the
present by the respondents to distinguish the Mirage Oven from the Weber Grill
have been ineffective because
the confusion between the two products arises from
the similarity in their shapes (p. 733 H - 734 A).
2.
The question then is: since the steps actually taken to distinguish
the Mirage Oven from the Weber Grill are the only steps available,
short of
changing its shape, and since such steps do not eliminate the likelihood of
confusion, does the interdict have the effect
of obliging the respondents to
alter the shape of the Mirage Oven? (p. 734 B-C).
3.
To answer this question consideration should be given to a number of
cases in which it has previously been shown that a product's
reputation had
become associated with its shape whilst
30
its
source had remained anonymous. The purpose of this consideration is to determine
whether those circumstances have ever bee'n held
to entitle the anonymous source
to prevent a competitor from using the shape for a competing product,
irrespective of the competitor's
efforts to distinguish his own product by means
other than the shape (p. 734 C to 746 G). 4. Having reviewed the cases, STEGMANN
J sought to answer the following two questions (p. 746 H.to 747 B).
"1. When an article is made up of elements of
which
none is entirely non-functional and capricious, ánd of which none is
'purely' functional (since every element can be
seen to have some value in use
and could nevertheless be made in any of a variety of shapes), is the article
one that may freely
be copied exactly and marketed in the course of lawful
competition, secure in the knowledge that the common law does not permit any
monopoly for such a product; and secure in the knowledge that the person who
first marketed it, not having given it any badge of
origin (in the fórm
of a name or a mark or capricious, non-functional feature capable of becoming
distinctive of his product),
has nothing to which any goodwill his product may
develop could attach, and has therefore failed to avail himself of the legal
means
31
by which lawful copying is to be distinguished from unlawful passing off?
2. Is such an article one in respect of which (despite the value in use of
all its parts, and despite the absence of anything clearly
identifiable as a
distinctive indication of origin with no other value in use) goodwill in the
sense of the article's being known
to have a particular source (even though the
source is unidentified) may yet be acquired and protected by the remedy for
passing
off?"
5.
The answers to these
questions are not clear, either in English law or in Soúth African law
(p. 747 C-F).
6.
STEGMANN J's own view is
expressed as follows (at 748
C-E):
"In my judgment the authorities to which I have referred indicate that the
applicants (although they may have acquired goodwill as
a result of the fact
that the shape of the Weber Grill has come to be associated with themselves as
the source of it, despite their
anonymity, and have therefore been granted the
protection of an interdict against passing off) have nevertheless not acquired
(because
the common law does not grant) a monopoly of that shape or of the shape
or arrangement of the handles or legs or wheels or ashtray,
all of which has at
least some value in use and none of which is purely capricious and
non-functional.
Since, as a matter of law, the
interdict creates no such monopoly, it also does not oblige the respondents
32
to change the shape of the Mirage Oven or the shape or arrangement of its
handles or legs or wheels or ashtray. The terms of the
interdict do not
expressly oblige the respondent to make any such changes, and neither is that
its effect in law. What the respondents
have been required to do.is to
distinguish the Mirage Oven clearly from the Weber Grill. They have done all
that they have in their
power to do so to distinguish
it."
It is clear therefore, that he would answer yes
to question 1 in paragraph 4
supra
and no to question 2.
This
reasoning seems to.me to be flawed in several respects. The first relates to
res judicata
. The basis upon which the full court decided that the first
respondent was guilty of passing-off was not in issue. It was by reason
of the
deceptive appearance and shape of the Mirage Oven. This is accepted at p. 747 F
by STEGMANN J where he states that the qualification
suggested by GRAHAM J (in
Benchairs Ltd v. Chair Centre Ltd
[1974] RPC 429
at 436 line 10 to 19),
or something like it, must lie at the root of the findings that gave rise to the
decision of the full court
that the marketing by the respondents of the Mirage
Oven amounted to a passing-off of that
33
product as the Weber Grill of the appellant.
This qualification reads as follows:
"... I think there might be a case where an article itself is shaped in an
unusual way not primarily for the purpose of giving some
benefit in use or for
any other practical purpose, but in order purely to give the article a
distinctive appearance characteristic
of the particular manufacturer's goods. In
such an event it seems to me possible that such manufacturer must be able in
course of
time to establish such a reputation in such distinctive appearance of
the article itself as would give him a cause of action in passing
off if his
goods were copied, because in the circumstances assumed the putting of the copy
on the market would amount to a representation
that it emanated from the
plaintiff."
Since STEGMANN J was
clearly fully aware of the status
of the judgment of the full court as being both
res
judicata
between the parties and a precedent binding on him (p. 747
G-H)
his reasoning seems to be the following: although it is
res
judicata
that there has been a passing-off by the marketing
of
a product with a deceptive shape that is partly functional and
partly
capricious, nevertheless the court's order should not be
given the effect of prohibiting that form of passing-off: it
34
should be restricted to requiring the respondents to do whatever is possible,
short of changing the shape of the article, to distinguish
their product from
that of the appellant's, even if the means adopted are totally
ineffective.
Quite clearly this was not the effect intended by the full
court. As I have indicated above, the full court's order was the normal
one in
passing-off cases. Read with the judgment, it identified the actions of the
first respondent which amounted to passing-off,
and restrained it from
continuing with such actions without clearly distinguishing its product from
that of the appellant's. It would
not be consistent with this order for the
respondents to continue passing-off their product as that of the appellant's
should there
be means short of changing the shape of their product by which they
could distinguish their product. The full court held that passing-off
had been
committed and ordered that it should cease. That is the end of the matter.
Whether it was right or wrong is not for us to
decide. If the respondents cannot
comply with the order without changing the
35
shape of their product, then
they must change the shape of their product or stop trading in it.
In view of
this conclusion it is not necessary to consider whether STEGMANN J was in any
event correct in the view he took concerning'the
questions posed in para 4
supra
. In view of the importance of the matter it is nevertheless
desirable to comment briefly on the validity of his reasoning.
At the outset
the matter should be seen in its proper perspective. It is accepted that the
shape of the Mirage Oven, and the shape
and arrangement of the handles, legs,
wheels and ashtray, give rise to the deception or confusion of which the
appellant complains.
It is also accepted that these features, although they
pertain to necessary parts of the article, are nevertheless capricious in
the
sense that the article will operate as efficiently and, it may be inferred, can
be manufactured as economically with a different
shape or with a different
arrangement or shape of its parts. In these circumstances it is difficult to
imagine that there can be
any
36
reason of principle or policy for allowing the respondents to
continue
their deception rather than change the shape or
arrangement of the article or
its parts.
I turn now to some of the specific
propositions
underlying the reasoning of the court
a quo
. The first relates
to the meaning of the concept of get-up. At
p. 736 A STEGMANN
J derives the following proposition, which is central to
his
reasoning, from the case of
J.B. Williams Co. v. H Bronnley
and
Co. Ltd.
;
J B Williams Co. v. J H Williams
[1909] 26
RPC 765
(CA):
"A distinction is to be drawn between the article
itself and its get-up. Anything that has a value in
use belongs to the article itself and not to its get-
up. The get-up is confined to capricious additions
having no value in
use."
Now, firstly, as STEGMANN J recognizes at 736 G,
both
VAN ZYL J and the full court used the
expression "get-up" to
include features of the article which have a value in use. In
so far as the meaning of the expression may have been relevant
to their decision, the matter has accordingly been concluded
37
against
the respondents.
But in any event it is not clear that as a matter
of
language the expression "get-up" has such a
limited meaning.
Thus in the
Reckitt and Colman
case in the Court of
Appeal,
GLIDEWELL LJ said ([1988] FSR at p. 636:
"For myself, I do not accept the proposition that the product itself, or part of
it, cannot constitute or contribute to the get-up.
I understand the word
'get-up' to be convenient shorthand for those distinctive features of the
article,. its container and/or its
packaging in the form in which it is
presented for sale to members of the public which indicate it to be the product
of a particular
manufacturer or trader."
And, finally, even if the true meaning of get-up
is
what STEGMANN J held it was, this would, in my
view, be of no
more than semantic interest. This is well illustrated by
the
following passage from
British American Glass Co Ltd v. Winton
Products (Blackpool) Ltd
[1962] RPC 230
at p. 232 lines 30 to 34,
referring to the passing-off of ornamental glass dogs:
"This is not really a passing-off case as regards get-up in any way at all. It
is not a question of getting up; it is a question
of the appearance of the
actual article sold. The plaintiff company must, therefore,
38
show that the trade or public on seeing the dogs of this configuration and shape
will understand that the dogs are dogs of the plaintiff
company's
manufacture."
Here the learned judge (PENNYCUICK J)
was clearly not prepared to accept that the appearance of the dogs was a matter
of get-up. At
the same time, as noted by LORD JAUNCEY in the
Reckitt and
Colman
case in the House of Lords ([1990] 1 All ER at 897 d), he was
"clearly recognising that the shape and configuration of the article
could be
protected against deception".
And, commenting further on the
British American
Glass
Co.
case as well as that of
William Edge & Sons Ltd v. William
Niccols & Sons Ltd
[1911] AC 693
(a case also dealt with by
STEGMANN J) LORD JAUNCEY continued ([1990] 1 All ER at 897 e-f):
"In my view these two cases are merely examples of the general principle that no
man may sell his goods under the pretence that they
are the goods of another.
This principle applies as well to the goods themselves as to their
get-up
. A markets a ratchet screwdriver with a distinctively shaped handle.
The screwdriver has acquired a reputation for reliability and
utility and is
generally recognised by the public as being the product of A because of its
handle. A would be
39
entitled to protection against B if the latter sought to market a ratchet
screwdriver with a similarly shaped handle without taking
sufficient steps to
see that the public were not misled into thinking that his product was that of
A. It is important to remember
that such protection does not confer on A a
monopoly in the sale of ratchet screwdrivers nor even in the sale of such
screwdrivers
with similarly distinctive handles if other appropriate means can
be found of distinguishing the two products. Once again it will
be a question of
fact whether the distinguishing features are sufficient to avoid deception."
(emphasis added)
In this passage LORD JAUNCEY, with
respect, makes it clear that even if "get-up" in its proper connotation cannot
include the appearance
of the article itself or any functional part of it, this
would not lead to the conclusion that the shape and configuration of an
articie
cannot be protected against deception.
At the same time the above-quoted
passage from the speech of LORD JAUNCEY effectively answers a further argument,
strongly pressed
on us on behalf of the respondents, that it is not possible in
common law to obtain a monopoly in the shape of an article, and that
the shape
of an article, even if deceptive,
40
therefore cannot give rise to a successful action for
passing-off. This
argument was also dealt with by LORD OLIVER
([1990] 1 All ER at 889 b-c) in words which, in my view, are
equally
applicable to the facts of the present case:
"It is pointed out that recent decisions of this House, for instance,
British
Leyland Motor Corp Ltd v Armstrong Patents Co Ltd
[1986] 1 All ER 850
,
[1986] AC 577
and
Re Coca-Cola Co's Applications
[1986] 2 All ER 274
,
[1986] 1 WLR 695
, have stressed the suspicion with which this House regards any
attempt to extend or perpetuate a monopoly and it is suggested again
that,
because it is not easy in the circumstances of this market effectively to
distinguish the appellants' products from the respondents'
except at
considerable expense, the respondents are achieving, in effect, a perpetual
monopoly in the sale of lemon juice in lemon-shaped
squeeze packs. I do not
accept at all that this is so, but in any event the principle that no man is
entitled to steal another's
trade by deceit is one of at least equal importance.
The facts as found here establish that, unless the injunction is continued,
that
is what the appellants will be doing and it is not necessary for them to do so
in order to establish their own competing business
for there is nothing in the
nature of the product sold which inherently requires it to be sold in the
particular format which the
appellants have chosen to adopt."
And, finally, concerning the argument based on
the
law's repugnance to monopolies, I would refer to
the speech of
41
LORD BRIDGE, an extract from which was quoted
earlier.
The principles set out in the above passages from the
Reckitt and
Colman
case are, in my view, entirely consistent with our law. They are the
principles applied by VAN ZYL and the full court in the earlier
stages of the
present case, and by VAN DIJKHORST J in the recent case of
Press Designs
(Pty) Ltd v. GY Lounge Suite Manufacturers (Pty) Ltd and Another
1991(2) SA
455 (W) at p. 471 C to 472 H.
From what I have said it follows that the case in thecourt
a quo
should have been decided on the simple basis that the notices affixed to the
respondents Mirage Oven did not serve to distinguish
their product clearly from
that of the appellant, and that the respondents consequently infringed the
interdict.
On behalf of the appellant it was further argued that, even if the notices
were sufficient to distinguish the respondents' product
from that of the
appellant, they were not properly or permanently affixed to the Mirage Ovens
with the
42
result that shopkeepers and others could display the Mirage Ovens without the
notices, and that the notices ceased to distinguish
the Mirage Ovens once the
consumer removed the notices, which he invariably did. Consequently it was
contended that the manner of
affixing the notices was not adequate for the
purpose of distinguishing the two products. In view of my conclusions set out
above
I need not consider the validity of these arguments. And, since I have
held that the affixing of the notice by itself was not sufficient
to distinguish
the Mirage Oven, I also need not consider the evidence relating to specific
occasions on which it was alleged the
respondents had failed to affix the
notice, or otherwise committed specific acts which allegedly infringed the
interdict.
I turn now to the application to lead further evidence. Mr Puckrin conceded
that, if the appeal succeeded on the record as it stood,
the application would
have proved to be redundant, and should be dismissed with costs. I would not,
however, rest my judgment only
on that basis, and prefer to consider the
merits
43
of the application briefly.
The evidence which is sought to be led is the
following:
(a) On three occasions, viz. on 5 September 1990, 16 May
1991 and 22 May
1991, Mirage Ovens were found displayed
without notices in shops.
(b) On 5 September 1990 a Mirage Oven was purchased. On
removing it from its
box, it was found that some of the
notices had come partially unstuck.
(c) In or about August 1991 the respondent displayed
representations of the
Mirage Oven on the boxes in
which they were packed, without any disciaimer
designed
to distinguish it from the appellant's Weber
Grill.
It will be recalled that the judgment of the
court a
quo
was delivered on 14 December 1989. These events consequently
occurred some time after the judgment which is now on appeal.
It has often been laid down that, in general, this court in deciding an
appeal decides whether the judgment appealed
44
from is right or wrong according to the facts in existence at
the time it was given and not according to new circumstances which came
into
existence afterwards. See
Goodrich v. Botha and Others
1954(2) SA 540 (A)
at 546 A;
S v. Immelman
1978(3) SA 726 (A) at p. 730 H;
S v. V en 'n
Ander
1989(1) SA 532 (A) at p. 544 I to 545 C; and
S v. Nofomela
(unreported, AD, case no. 161/91 delivered on 28 November 1991). In principle,
therefore, evidence of events subsequent to the judgment
under appeal should not
be admitted in order to decide the appeal. Whether there may be exceptions to
this rule (the possibility
of which was not excluded by SCHREINER JA in
Goodrich's
case,
supra
, at 546 C) need not now be decided, because
there are in my view no exceptional circumstances in the present case which
would render
it desirable to hear such evidence. The new evidence sought to be
adduced in effect amounts to instances of further infringements
of the
interdict, allegedly committed after the judgment was given in the present case.
As such they might have formed the subject
of new contempt proceedings before
an
45
appropriate court of first instance. There does not seem to me to be any
ground of principle.or. convenience why we should, in effect,
perform the
functions of such a court. The present appeal comes before us because the trial
judge, rightly, in my view, considered
that there are important guestions of law
in issue which deserve the attention of the highest court in the country. We
should not
be expected to decide, in addition, new questions of fact .
Mr
Puckrin did not dispute the principles set out above, and consequently accepted
that the evidence of the representations displayed
on the boxes in which the
Mirage Ovens were packed, could not be admitted. He submitted, however, that the
evidence set out in paragraphs
(a) and (b) above was relevant to the existing
issues before the court inasmuch as it showed that the method of fixing the
notices
was inadequate, and that the notices could be easily removed. The manner
in which the notices were attached, was, however, always
an issue in the
proceedings and was clearly explained to the court in the
46
original affidavits. No new evidence was required to show that
the notices could easily be removed, and might even perhaps on occasion
become
loose by themselves. If that was the only purpose of the evidence, there could,
accordingly, be no good grounds to admit it
at this late stage.
In the result
the application to lead further evidence must in my view be dismissed.
For the aforegoing reasons the following order is made:
1. The application to lead further evidence is dismissed
with
costs.
2. (a) The appeal is allowed with costs,
including the costs
of two counsel. (b) The order of the Transvaal Provincial Division is set
aside and the following substituted: (i) It is declared
that the First
Respondent, Second
Respondent and Third Respondent have acted in conflict with the terms of the
Court Order of the Full Court of the Transvaal Provincial
Division of the
Supreme Court
47
dated 23 March 1989 under Case Number A.979/88.
(ii)
It is declared that the aforesaid Court Order was
breached by the sale, distribution or disposal in any other way of the 'Mirage'
kettle-type barbecue grill (shown in Annexure 'DAG2'
to the Applicant's Founding
Affidavit) to which had been affixed notices in the form of Annexures 'DAG7' and
'DAG8' of the Applicant's
Founding Affidavit.
(iii)
The First Respondent, Second Respondent and Third
Respondent are ordered to pay the Applicant's costs jointly and
severally.
E M GROSSKOPF, JA CORBETT, CJ
MILNE, JA CONCUR
GOLDSTONE, JA
VAN DEN HEEVER, JA