REPUBLIC OF SOUTH AFRICA
IN THE HIGH COURT OF SOUTH AFRICA
GAUTENG DIVISION, JOHANNESBURG
CASE NUMBER: 2024 / 095598
DELETE WHICHEVER IS NOT APPLICABLE
1.REPORTABLE: NO
2.OF INTEREST TO OTHER JUDGES: NO
3.REVISED : NO
Judge Dippenaar
In the matter between:
BLISS BRANDS (PTY) LTD APPELLANT
and
COLGATE -PALMOLIVE (PTY) LTD FIRST RESPONDENT
COLGATE -PALMOLIVE COMPANY SECOND RESPONDENT
ADVERTISING REGULATORY BOARD NPC THIRD RESPONDENT
28 FEBRUARY 2025
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Coram: Adams, Dippenaar JJ et Botsi -Thulare AJ
Heard: 18 February 2024
Delivered: This judgment was handed down electronically by circulation to the parties’
legal representatives via e-mail and by being uploaded to the electronic
platform . The date and time for hand -down is deemed to be 10h00 on the
28th of FEBRUARY 2025.
Summary: Appeal by respondent under s 18(4) (ii) of Superior Courts Act –
enforcement order granted under s 18(3) in favour of respondent –
requirements : (a) the existence of exceptional circumstances; (b) proof, on
a balance of probabilities that: (i) respondents have suffered and will
continue to suffer irreparable harm and (ii) the appellant will not suffer a ny
irreparable harm – principles restated – exceptional circumstances a factual
enquiry – history of litigation in context of the facts of the case and existence
of extant order of 21 February 2024 constituting exceptional circumstances
– remaining requirements established – appeal dismissed with costs of two
counsel on scale C.
ORDER
On appeal from: The Gauteng Division of the High Court, Johannesburg (Manoim J sitting
as Court of First Instance)
1. The appeal is dismissed with costs, such costs to includ e the costs consequent upon
the employment of two counsel, one being senior counsel , on Scale C.
JUDG MENT
DIPPENAAR J (ADAMS J et BOTSI -THULARE AJ concurring) :
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[1] This is an automatic appeal in terms of s 18(4) (ii) of the Superior Courts Act (‘the
Act’)1 in terms of which the appellant, Bliss Brands (Pty) Ltd (‘Bliss’) seeks to set aside
an order granted by Manoim J (‘the court a quo ’) on 27 January 2024 (‘the enforcement
order’) under s 18(1) , read with s 18(3) of the Act . In terms of that order, it was directed
that the order of Manoim J of 13 December 2024 (‘the December judgment’) be enforced
pending the appeal of that judgment to the Supreme Court of Appeal . The enforcement
order in releva nt part provides:
‘1. The operation an d execution of the order of Manoim J dated 13 December 2024 is not
suspended by any application for leave to appeal or any appeal and will continue to operate
and be executed in full, until the final determination of a ll present and future leave to appeal
applications and appeals ;
2. The First respondent ( ‘BLISS ’) is to pay the costs of this applicat ion suc h costs to include
the costs consequent upon the employment of one senior and one junior counsel on scale C’.
[2] Bliss contend ed that the court a quo erred in finding that the requirements of s18(1)
and s 18(3) of the Act were satisfied. The first and second respondents, (collectively
referred to as ‘Colgate’) oppose d the application and contend ed the opposite . The third
respondent, the Advertising Regulatory Board NPC (‘ ARB’), did not participate in the
appeal.
[3] The order of Manoim J in the December 2024 judgment provides in relevant part :
‘The Fi rst Respondent [Bliss] is directed to comply with paragraph 3 of the Manoim J order,
forthwith, and no later than 15 working days from the date of this order, by withdrawing the
Offending Packaging and the Latest Offending Packaging, depicted in Annexures B and C
annexed to the Notice of motion, from every medium in which they app ear, over which the
second respondent has jurisdiction, by virtue of them being members’.
1 10 of 2013.
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[4] The Manoim J order referred to is an order which was granted on 21 February
20242 in review proceedings launched by Bliss against a ruling of the ARB’s Final Appeal
Committee ( FAC) during August 2020. That order was never the subject matter of an
appeal and remains extant.
[5] To contextualise the present appeal, it is necessary to set out the litigation history
between the parties in some detail , which has endured for so me five years. T his is
necessary as the primary contention s of Colgate for the existence of exceptional
circumstances are predicated on that history.
[6] Colgate and Bliss both produce a functionally similar product, known as hygiene
soap ; Colgate under the n ame Protex and Bliss under the name Securex. Colgate first
made a complaint with the ARB during December 2019 pertaining to Bliss’ similar
packaging . The complaint went through the ARB’s internal processes . The ARB’s
Advertising Appeals Committee ( ‘the ACC ’) found in favour of Colgate.
[7] Bliss appealed to the FAC. The FAC finally decid ed the matter on 3 August 2020
with its Chairperson, Ngoepe JP, as the presiding member, exercising a casting vote in
favour of Colgate . The FAC held that Bliss breached clause 8 (which deals with exploiting
the advertising goodwill of a member’s product) a nd clause 9 (which deals with imitation
of another’s packaging) of the ARB’s Code, given the substantial overall similarity
between the two competing architectures of th e packaging . It accepted that creativity
should not be stifled but found that ‘to allow imitation masquera ding as creativity does
nothing to nurture or encourage the latter ’. It held that Bliss, in introducing Securex, was
‘inspired by Protex’s secret sauc e on a number of levels. This inspiration, instead of
resulting in a healthy, competitive visual distance (visual differentiation ) between Protex
and Securex actually had the opposite effect. Instead of taking a spoonful of inspiration
from Protex’s design , Securex opted to take a spade full of inspiration. This has resulted
in a significant reduction of the perceptual distance between the two brands’ design
2 Dealt with in para 9 below.
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architecture. Consumers can be forgiven for getting confused between the two brands
when standing in front of a supermarket shelf’ . The FAC ruling directed Bliss to comply
with the ACC ruling by 30 September 2020.
[8] Bliss sought to interdict the implementation of the ARB’s award, which failed before
Yacoob J on 28 September 2020 , who dismissed the applicat ion. Bliss launched a review
application, which was heard by Fisher J, who mero motu raised a constitutional issue
pertaining to the ARB’s jurisdiction and sought submissions from the parties . Bliss had
submitted to the ARB’s jurisdiction. Bliss amended its notice of motion to incorporate such
constitutional issue . Fisher J resolved the jurisdictional issue in favour of Bliss on 21 May
2021 , based on finding s of unconstitutional ity, resulting in no findings being made on the
merits of the review applicati on. An appeal to the Supreme Court of Appeal followed ,
resulting in the order of Fisher J being overturned and the constitutional challenge being
dismissed .3 The merit s of the review application was remitted to the High Court. Bliss
approached the Constitu tional Court which , in refusing leave to appeal , held that because
Bliss consented to the jurisdiction of the ARB, it was not in the interests of justice to
entertain any other issue in the matter. It further held that where a non -member submits
to the ARB ’s jurisdiction, the ARB can make directions which are binding on the non -
member.4
[9] The review application was heard by Manoim J , who on 21 February 2024, granted
an order dismissing the review and upholding the relief granted by the FAC. He held that
there was no reason to review the findings of the FAC that Bliss had contravened clause s
8 and 9 of the ARB’s Code . He further did not review the sanction imposed by the FAC .
An order was further granted reconsidering and discharging an interim interdict grante d
by Fisher J in favour of Bliss on 30 November 2020. Manoim J further granted an order
3 Advertising Regulatory Board NPC and Others v Bliss Brands (Pty) Ltd [2022] ZASCA 51; 2022 (4) SA
57 (SCA).
4 Bliss Brands (Pty) Ltd v Advertising Regulatory Board NPC and Others [2023] ZACC 19 para 18.
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that ‘Bliss must comply with the FAC decision within three months of date of this order.
This applies to dissemination of new packaging, and does not require on -shelf r emoval.’
[10] Bliss indicated that it would comply with the order and launched new packaging in
the market in May 2024. Colgate, being of the view that the new packaging too closely
resembled the infringing packaging and only slightly modified it and that Blis s still
continued to market the offending packaging on various online platforms , took the matter
to the ARB on 17 July 2024 with a detailed breach complaint. The issue was whether or
not the slightly modified packaging sufficiently departed from the offend ing packaging
under clause 3.6 of Section 1 of the Code.
[11] The matter came before the Chairperson of the FAC, Ngoepe JP . On 12 August
2024, he ruled that the May 2024 packaging was not compliant and that the new
packaging was a continuation of and part and parcel of the offending packaging. He held
that ‘minor alterations were effected but those were insignificant ’. He ordered Bliss to,
amongst others, remove the offending packaging and the slightly modified packaging
from all mediums in which it appears (the breach ruling) . Colgate sought an undertaking
that Bliss would respect the Manoim J order and Ngoepe JP’s br each ruling. No
undertaking was forthcoming. Bliss adopted the stance th at the ruling was incorrect and
as a result it would not be complying with it.
[12] Colgate thereafter approached the High Court for urgent interdictory relief. Bliss in
turn launched an ur gent application to suspend the breach ruling pending a review. The
applications were heard on the same date by Vally J. Colgate contended that Bliss was
in contempt of the Manoim J order in two respects: ( i) tampering with the old packaging
in such a way that in all material and important aspects it remained unchanged; and ( ii)
failing to remove the advertisement of Securex in the old packaging from certain websites.
[13] Bliss adopted the stance that it had made significant changes to the old packaging,
depar ting from the characteristics identified in the ruling as being offensive and had
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complied with the Manoim J order. Bliss argued that the correct approach in determining
the allegation of contempt was to compare the new Securex packaging with that of Prote x.
[14] On 11 October 2024, an order was granted by Vally J, holding Bliss in contempt of
the Manoim J order, together with certain costs orders. Bliss was further ordered ‘to
comply with paragraph 3 of the Manoim J order, forthwith, and no later than 30 calen dar
days from the date of this order, by withdrawing the offending packaging and the slightly
offending packaging …from every medium in which it appears ’.
[15] It was further ordered: ‘In the event that the First Respondent [Bliss] fails to comply
with this order the Applicants are authorised to approach the Court on the same papers,
duly supplemented, for further relief ’, thus entitling Colgate to merely supplement those
papers in any further application, whilst relying what had already been stated. Vally J
struck Bliss’ suspension application from the roll, directing that it was not entitled to enroll
the matter until it ha d purged its contempt of the Manoim J order.
[16] Whilst finding that there app eared to be significant differences between the
packaging of S ecurex (old and new) and that of Protex , Vally J held that such comparison
was irrelevant as it had already taken place and was the focus of the hearings before the
ARB, the FAC and the review application before Manoim J. He held that a decision on
the sim ilarities between Protex and Securex occurred in those fora and it was not a matter
that c ould be revisited. Vally J found that t he old and new Secure x packaging had to be
compared.5 Vally J concluded that the Manoim J order ha d not been complied with as the
changes to the old packaging were insufficient and Bliss continued to advertise with the
old packaging.6 He held that the May packaging was ‘willfully designed so as not to be
materially distinguishable from what existed prev iously’.7
5 Judgment Vally J para 10 .
6 Para 12 -14.
7 Para 17.
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[17] The contempt order is the subject of a pending appeal before the Supreme Court
of Appeal, and an enforcement application under s 18(3) of the Act. That enforcement
application remains pending. Leave to appeal to the Supreme Court of Appeal was
granted by Vally J on 6 November 2024.
[18] During November 2024, Colgate launched a further urgent contempt application
which was hea rd by Manoim J. That resulted in the December j udgment , delivered on 13
December 2024. In that application, Colgate incorporated the contents of its founding
affidavit in the proceedings before Vally J in its founding affidavit . Bliss in its answering
affidavit, did the same . Bliss maintained that it was obliged to change it s packaging and
did so in October 2024, pursuant to Vally J’s order. The main debate on the merits was
what Manoim J termed ‘the measurement issue’. Bliss contended that in determining
whether it has infringed, the correct comparison was between the Colgate packaging
which was found to have infringed and the present Bliss packaging (the October
packaging), i .e. the visual distance between the 2019 Protex packaging and the October
2024 Securex pac kaging. It argued that applying that metric it would be clear t hat the
October packaging has a number of features which differentiate it from the 2019 Protex
packaging. Bliss further argued that even i f the correct metric was a comparison of its
May 2024 to October 2024 packaging there would still be no infringement g iven the
sufficient visual distance between the two. Colgate contended the opposite , arguing that
the correct comparison was between the different versions of Securex and that there was
still infringement .
[19] Manoim J compared the May 2024 and October 2024 S ecurex versions . Relying
on Rule 3.6 of the Code8, he conclud ed that the visual distance was slight. Reliance was
further placed on the approach adopted by courts in relation to visual distance in
trademark cases, such as Broderick9 and PPI Makelaars10. In the latter, the Supreme
8 It provides: ‘ When objections in respect of advertisements that were amended resulting from an ARB
ruling are received, both the original and amended version will be taken into consideration’.
9 Broderi ck & Bascomb Rope CO v Manoff 41F (2d) 353 (1010) pp 18 -1071 -18-1072, referred to in
Manoim J’s December 2024 judgment para 29 .
10 PPI Makelaars v PPS Provident Society of South Africa 1998 (1) SA 595 (SCA).
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Court of Appeal held that once a party has been found to be in breach, they must keep a
‘safe distance’ from the margin line, even if it involves a ‘handicap ’. Reference was also
made to Milestone Beverage CC , wherein it was held that the memory and impression
created in the mind of the public was not erased and hence the advertising material ‘cast
its shadow backwards’11. Manoim J held that Bliss ha d continued to operate too close to
the margin line and was reluctant to introduce the kind of change the law required. An
order was granted that the October 2024 packaging infringe d the Manoi m J order and
that Bliss was in breach of it , together with an order directing Bliss to comply with
paragraph 3 of the Manoim order, already refer red to .
[20] Bliss sought leave to appeal the judgment. Colgate in turn, launched the s 18(3)
enforcement application forming the subject matter of this appeal and an application for
leave to appeal a portion of the order to extend the ambit of the relief gran ted in its favour
to non ARB member s. The underlined portion of that order is repeated for ease of
reference .
‘Directing Bliss to comply with paragraph 3 of the Manoim J order, forthwith and no later than
15 working days from the date of the order by withdrawing the offending packaging depicted
in Annexures B and C annexed to the Notice of motion and the latest offe nding packaging
from every medium in which they appear, over which the ARB has jurisdiction, by virtue of
them being members ’ (Emphasis added .)
[21] In granting leave to appeal to Bliss, it appears by necessary inference that the
court a quo considered the fact that leave to appeal on the same issues had already been
granted to the Supreme Court of Appeal by Vally J , as a compelling reason under
s 17(1)(a)(ii) of the Ac t to gran t leave to appeal . In considering the s 18(3) application, the
court a quo held that Colgate had strong prospects of success on appeal, by necessary
11 Milestone Beverage CC and Others v the Scotch W hiskey Association and Others (1037/20190 [2020]
ZASCA 105 (18 September 2020) para 27 .
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inference , that Bliss did not. Colgate’s counter application for leave to appeal was also
granted . Bliss noted its appeal on 6 February 2025.
[22] Against this backdrop I turn to consider the merits of the appeal. Section 18 in
relevant part provides:
“18. Suspension of decision pending appeal
(1) Subject to subsections (2) and (3), and unless the court under exceptional circumstances
orders otherwise, the operation and execution of a decision which is the subject of an application
for leave to appeal or of an appeal, is suspended pending the decision of the application or appeal.
(3) A court may only order otherwise as contemplated in subsection (1) or (2), if the party who
applied to the court to order otherwise, in addition proves on a balance of probabilities that he or
she will suffer irreparable harm if the court does not so order and that the other party will not suffer
irreparable harm if the court so orders ’.
[23] The relevant principles are well established The most recent judgment of the
Supreme Court of Appeal on the issue, Tyte Security Services CC v Western Cape
Provincial Government and Others,12 was quoted extensively in the judgment of the court
a quo and it is not necessary to repeat it . In University of the Free State v Afriforum
(‘UFS’) , the Supreme Court of Appeal confirmed that the existence of exceptional
circumstances must be fact -specific and ‘be derived from the actual predicaments in
which th e given litigants find themselves’. It further confirmed that a court may take into
account a party’s prospects of success on appeal when considering whether to grant
enforcement relief.13
[24] Colgate’s application under s 18(3) was centrally predic ated on th e Manoim J order
granted on 2 1 February 2024. Its case was that exceptional circumstances existed to
direct enforcement as Bliss on an ongoing basis failed to comply with paragraph 3 of that
12 Tyte Security Services CC v Western Cape Provincial Government and Others 2024 (6) SA 175 (SCA) .
13 University of the Free State v Afriforum 2018 (3) SA 428 (SCA) par as 13 and 15.
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order by continuing to advertise the offending packaging, introdu cing packaging with
barely perceptible changes in the slightly modified offending packaging (May 2024) and
the latest offending packaging (October 2024) , both with imperceptible changes from
what the FAC and Manoim J had found to be breaches of the Code . It submitted that t he
effect was that Bliss essentially reintroduced the very packaging it was ordered to
withdraw, twice, under the guise of compliance. It submit ted that the suspension of the
breach order would allow Bliss to perpetuate its failure to com ply with the Manoim J order
and further undermine the authority of this court. This argument rested on four pillars: that
suspension would (i) allow Bliss to perpetuate its disobedience of court o rders; (ii) would
result in a loss of efficacy of the strict timeline imposed for compliance; (iii) would allow
Bliss to continue its four -year campaign to evade accountability for its breaches of the
ARB Code and continue to mislead the public and ; (iv) would result in a loss of efficacy
of the Manoim J order and Colgate’s rights to enforcement.
[25] Bliss on the other hand submit ted that no truly exceptional circumstances ha d been
illustrated. It contend ed that Colgate’s founding affidavit ha d two fatal flaws: first, it fail ed
to allege any conduct which would fall wit hin the scope of the breach order . Second; it
failed to allege that despite the withdrawal of its 2019 Protex packaging from the
marketplace, it retain ed a goodwill in that packaging which would justify any finding that
exceptional circumstances or irrepar able harm were illustrated .
[26] These arguments are flawed. The substance of the enforcement order was to give
effect to the February 2024 order which remains extant and was not the subject matter of
any appeal. The goodwill of Colgate in the 2019 packaging w as established in the
proceedings before the ARB and was dealt with in the review proceedings. The finding of
the FAC that Bliss exploited the advertising goodwill of Colgate’s Protex packaging
architecture, in contravention of clause 8 of the Code stands. Similarly, the finding that
Bliss imitated the Protex packaging architecture, in contravention of clause 9 of the ARB
code, stands . These finding were never challenged. There is also no basis to conclude
on the papers that Colgate has not retained any goo dwill in its Protex packaging and its
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architecture , which endures beyond any changes thereto . It is not open to Bliss to mount
what is effectively a collateral challenge to those findings in the present proceedings.
[27] Insofar as the order further refers to the ‘latest offending packaging’ which Bliss
commenced using in the marketplace during October 2024 , the court a quo considered
that packaging , comparing it to its previous iterations , and found it was lacking as it was
‘too close to the margin line’ and remained confusingly similar. It cannot be concluded on
the papers that such conclusion was wrong. It was not disputed that Bliss still marketed
its products and has not been excluded from the market place. Bliss’ stance was that it
was entitled to do so. The existence of exceptional circumstances is not solely reliant on
whether Bliss is presently in factual breach by selling to ARB members , as Bliss appears
to suggest .
[28] Bliss’ contention that the court a quo erred in conside ring the three requirements
holistically, does not bear scrutiny if the judgment of the court a quo is read in totality and
in context. A court of appeal must not scrutini se the language of a judgment as if it were
a statute.14 It cannot be concluded that the court a quo failed to apply the relevant test
correctly or deviate d from the relevant principles.
[29] Bliss’ submission that the s 18(3) application constitutes an oddity, given that
Colgate has cross appealed, loses its force if considered in context. In the appeal, Colgate
wishes only to extend the ambit of the order to include non ARB members , an issue
expressly excluded from the enforcement order . It does not seek to disturb the order
granted in its favour.
[30] Bliss placed r eliance on the fact that the very issue of breach of the Manoim J order
and whether Bliss had done enough to distance its May 2024 and Octobe r 2024
packaging w ere issue s that the S upreme Court of Appeal (‘SCA’) must determine. It was
14 General Council of the Bar of South Africa v Geech and Others, Pillay and Others v Pretoria Society
and Another, Bezuidenhout v Pretoria Society of Advocates 2013 (2) SA 52 (SCA) paras 62 and 172.
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argued that t he conseque nce was that if Bliss were to be successful in the SCA and a
proper comparison requires a comparison with the 2019 Protex packaging, Bliss would
not have been in b reach and everything underpinning Colgate’s exceptionality f ell apart
as there would be no basis for the enforcement order.
[31] These submissions disregard that what Bliss has secured is a suspension of
paragraph 3 of the Manoim J order, w hich judgment is extant , thus thwarting any attempt
by Colgate to enforce its rights. That points to the existence of exceptional circumstances,
specifically when considered with the history of the litigation already referred to.
[32] It was undisputed that to assess exceptional circumstances, a court will also have
regard, as best as it is able in the given case, to the applicant’s prospects of success in
the pending or prospective appeal ’.15 Bliss argued that, as leave to appeal had been
granted in its favour , that was the end of the debate and an argument surrounding
prospects of success was no longer open to Colgate . I do not agree. The principle applies
both to a pending application for leave to appeal and an appeal. The principle was stated
thus in Justice Alliance16, approved in UFS:
‘The less sanguine a court seized of an application in terms of s18(3) is about the prospects
of the judgment at first instance being upheld on appeal, the less inclined it will be to grant the
exceptional remedy of execution of that judgment pending the appeal. The same quite
obviously applies in respect of a court dealing with an appeal against an order granted in
terms of s 18(3) ’.
[33] Considering the architecture of s 18(1), which refers to the operation and execution
of a decision that is the ‘subject of an application for leave to appeal or appeal ’, It is th us
one of the jurisdictional facts which must be present before an enforcement order may be
sought.17 It envisages a situation where enforcement may be sought also in proceedings
15 UFS supra, paras 14 and 15; referring wit h approval to The Minister of Social Development Western
Cape & others v Justice Alliance of South Africa & another [2016] ZAWCHA 34.
16 Ibid.
17 Ntlemeza v Helen Suzman Foundation and Another 2017 (5) SA 402 (SCA) para 26 -31.
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which are the subject matter of an appeal, put differently, where leave to app eal has been
granted. That fact that leave to appeal has been granted is thus not destructive of an
application to enforce, nor does is weigh against the granting of relief. It is a neutral fact
and a consideration of the prospects of success on appeal sho uld still be considered, if
the facts permit it. In the present instance, the record of the proceedings which culminated
in the December 2024 order is available and it is thus possible to gauge the prospects of
success of appeal, as the court a quo did.
[34] Seen in this context, Bliss’ argument that the entire substratum of Colgate’s case
of exceptionality, rests on a basis which would fall away if the appeal is successful, does
not avail it as it equates the existence of the granting of leave to appeal, with a reasonable
prospect of success on appeal.
[35] The basis on which Bliss obtained leave to appeal the breach order, was a
compelling reason, rather than good prospects of success. The court a quo held that
Colgate’s prospects of success on appeal were good and, by necessary inference, that
those of Bliss were not. The court a quo was well placed to consider the issue, given that
he granted both the Manoim J order and the breach order. In the present instance the
appeal record is available and it cannot be concluded that the court a quo’s stance or
basis of evaluation of the prospects of success on appeal were incorrect .
[36] The very test proposed by Bliss was rejected in each of the fora in which the issue
was de termined , including the proceedings before Ngoepe JP, Manoim J and Vally J .
Moreover, in considering clause 3.218 and clause 3.619 of the ARB Code and the relevant
legal principles which require Bliss to depart significantly from the offending packaging
rather than to present blurring versions thereof , it cannot be concluded that Colgate’s
18 It provides: “In assessing an advertisement’s conformity to the terms of this Code, the primary test applied
will be that of the probable impact of the advertisement as a whole upon those who are likely to see or hear
it. Due regard will be paid to each part of its contents, visual and aural, and to the nature of the medium
through which it is conveyed .’
19 It provides: ‘When objections in respect of advertisements that were amended resulting from an ARB
ruling are received, both the original and amended version will be taken into con sideration’.
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prospects of success are so poor as to preclude a finding of a sufficient degree of
exceptionality to justify an order under s 18. Rather, the facts support the conclusion
reached by the court a quo that Colgate’s prospects of success on appeal are strong.
[37] Bliss‘ contention that the infringement of rights contended for by Colgate was not
of itself exceptional circumstances without proof of any adverse consequences , does not
bear scrutiny. The court a quo’s finding that the history ‘shows that Bliss was, despite
constant failure, undeterred from pursuing its goal, first of keeping the infringing
packaging in the market, and when that avenue was closed by the Manoim J order, op ting
to introduce variants that closely resembled the infringing packaging. Its strategy has paid
off for it thus far’20, is supported by the facts. Colgate’s complaint that Bliss has benefitted
from exploiting its rival’s goodwill undeterred from adverse findings against it for a
considerable period whilst remaining in and expanding its advertisement footprint in the
market, and thus continu ing the ‘ windfall ’ which it has received, evidences the adverse
consequences suffered by it .
[38] Considering the facts , there are thus exceptional circumstances present which
justify the deviation from the norm21 and the court a quo cannot be faulted in its
conclusion. The factual background to the litigation as set out in some detail , illustrates
this as well as existence of the Manoim J order . In the words of the court a quo : ‘The
lengthy history viewed holistically takes the matter beyond the ordinary to the
exceptional ’.22
[39] Although the factual matrix is somewhat different , there are some analogies to be
drawn between th e present facts and the decision of the Full Court in Matinyarare and
Another v Innscor Africa and Another ,23 bearing in mind that e ach case is to be decided
on its own facts.24 There, the appellant defied orders which had been granted against him
20 S 18(3) judgment para 25 .
21 Ntlemeza paras 36 .
22 Para 26.
23 Matinyarare and Another v Innscor Africa and Another [2024] ZAGPJHC 945.
24 Ibid, paras 34 to 35 and the authorities cited therein.
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without ta king any of the orders on appeal . Bliss in the present instance, did not appeal
the Manoim J order, which must be obeyed. As held in Matinyarare , a party must expect
to suffer harm of a kind that is ordinarily assoc iated with the appellate process taking its
course, without interim redress. But harm that is out of the ordinary requires intervention.
Where a party runs the real risk of irreparable damage to its good name and reputation,
built up over many years, this constitutes an exceptional circumstance in addition to
representing irreparable harm.25 The same applies in the present instance in relation to
Colgate’s goodwill .
[40] I am persuaded that Colgate has established that it would suffer irreparable harm
if relief is not granted and that it has done so with reference to an actual predicament
rather than a theoretical one . Colgate is deprived of the right to enforce the Manoim J
order and the ARB rulings which underpin it, which order remains extant. Colgate’s two
successful attem pts to enforce that order, have both been taken on appeal, resulting in
the order which was not appealed, being suspended . Any future endeavour by Colgate
to enforce the order is likely to suffer the same fate. It is well established that u nless
orders mad e by courts are capable of being enforced by those in whose favour the orders
were made, the constitutional right of access to courts will be rendered an illusion.26
[41] Bliss contend ed that it is not currently marketing any version of its offending
packaging with ARB members. It was undisputed that Bliss marketed those products via
Makro. Although the court a quo found that it was not able to definitively determine that
Makro (Masstores (Pty) Ltd t/a Makro) was an indirect member of the ARB, by virtue of
its m embership of the Marketing Association of South Africa (‘ MASA ’), and thus that Bliss
breached the Manoim J order, that is not a determinative issue . If the relevant affidavits
are read in context, including the parties’ affidavits in the proceedings before Vally J,
incorporated therein by reference, Makro’s membership of MASA and hence of the ARB
was accepted by the parties. More importantly, Bliss’ failure to give any undertaking not
25 Ibid, para 38.
26 Secretary of the Judicial Comm ission of Inquiry into Allegations of State Capture, Corruption and Fraud
in the Public Sector including Organs of State v Zuma and Others [2021] ZACC 18, paras 59 -60.
Page 17
to market the offending packaging with ARB members pending the conclusion of the
appeal processes, lends credence to Colgate’s stated apprehension of ongoing and
irreparable harm and bolsters Colgate’s case of exceptionality.
[42] Colgate , in my view , established that, if relief were not granted, Bliss would get a
windfall. The high water mark of its defences were that an incorrect test was applied by
both Vally J and Manoim J and that Colgate had not established the necessary goodwill .
It never disputed that Bliss has benefited from the current position or th at it has received
a win dfall by being able to market the impugned packaging until the appeal against
Manoim J’s December judgment is decided. I agree with the proposition that if Bliss is
retaining or increasing its market share on the basis of packaging that is based on
Colgate’s goodwill, it will have improved its position in the marketplace illegitimately at
Colgate’s expense , as held by the court a quo .27 The refusal by Bliss to provide any
undertaking that pending the finalisation of the appeals, it would not market an y of its
offending packaging with ARB members, is significant. Given the history of the matter,
there is a cogent basis for Colgate’s reasonable apprehension of ongoing and irreparable
harm, were the enforcement order not granted.
[43] Bliss’ submission that Colgate c an recover damages in a passing off action, and
thus has a suitable alternative remedy does not bear scrutiny. Not only are such damages
notoriously difficult to prove, but as pointed out by the court a quo, it would mean that
such relief would ha ve to be based on a different cause of action, not the present
contravention of the ARB Code. An award for damages is in any event a poor substitute
for diminished goodwill.28
[44] Colgate’s case is that Bliss’ offending packaging and latest offending packaging
continue to imitate and infringe the goodwill in Colgate’s Protex packaging, resulting in
ongoing irreparable commercial harm. It has been deprived of its rights to enforce the
ARB’s rulings against Bliss for some four years. The b reach order imposes stri ct timelines
27 Section 18(3) judgment para 34.
28 Tullen Industries Ltd v A de Souza Costa (Pty) Ltd 1976 (4) SA 218 (T) at 219H -220B.
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of 15 wor king days , which will expire long before exhaustion of the appeal . Each of the
forums which dealt with the matter found that Bliss must be accountable . Its response
was to reintroduce on two occasions, similar iterations of the very packaging it was
ordered to withdraw . It benefitted in the process, doubl ing down on its advertising ,
exponentially increas ing its revenue and market share with the offending packaging and
its variations, after it was f ound in breach of the C ode. The May 2024 and October 2024
iterations are so close that only careful scrutiny would detect any difference and are not
visually distant in any manner detectable to ordina ry shopper who does not engage in
detailed scrutiny exercise . The effect of the last off ending package is that Bliss will be
permitted to cast the shadow backwards . The factual similarities between the various
offending packages are self - evident as held by both Vally J and Manoim J and the tests
applied fall within the mainstream of the appl icable decisions, as held by the court a quo .
Bliss consciously elected to stay as close as possible to the margin line and did not elect
to stay well away from it . Considering the facts and the visual similarities between Bliss’
various packaging iteratio ns, Colgate’s case is compelling.
[45] The court a quo was correct to find that Colgate has illustrated irreparable harm
and that the present scenario is aligned to th at in Tyte.29 Here too , if the court does not
grant relief to Colgate, Bliss would get a windfall by being able to market the impugned
packaging until the appeal is decided without Colgate having an effective remedy at its
disposal. It must be borne in mind that both the Manoim J order and the breach order set
specific and narrow timelines for compliance, which have long passed. To argue, as Bliss
does, that it is open to Colgate to institute further breach proceedings, rings hollow ,
considering the passage of time and the histor y of the litigation between the parties . To
criticise Colgate for not providing a detailed substantiation of the financial harm at issue,
does not pass muster, considering the type of financial harm at stake.
[46] On the issue of an absence of irreparable harm to Bliss, t he court a quo held:30
29 Section 18(3) judgment para 32.
30 Section 18(3) judgment para 36, 38 and 39.
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‘[36] In contrast Bliss has not made out a case for irreparable harm to itself. In relation to this
as was observed in Tyte the respondent in an 18(3 ) application whilst not facing an onus at
least has an evidential burde n. But Bliss has not made out any case here of how it will be
prejudiced in the market going forward . …
[38] Nor should there be any sympathy for Bliss. It has had ample time to change its
packaging. Given that it has tweaked its packaging twice since the Manoim J order was issued
in February 2024, the logistics and expense of changing packaging has clearly not pro ved
insuperable. The fact that it has chosen to make changes so close to the margin line is the
reason why it has been found in contempt by Vally J, and in breach by me, in my December
order. This is an outcome it could have avoided. There is no reason why Colgate must be
further prejudiced as a result of Bliss’ decision to take the most minimal steps to comply .
Bliss has not been excluded from the market. Only insofar as its packaging contravenes the
ARB Co de. Moreover, the order which I granted in December contains a carve out permitting
it to market even the impugned October packaging, in non -member outlets ’.
[47] It is clear that the court a quo performed a balancing exercise of the irreparable
harm to be suffered by Colgate and the absence thereof to Bliss and determined the issue
in favour of Colgate, albeit that Bliss did not present evidence in rebuttal of Colgate’s
contentions . The court a quo clearly took the position of Bliss into account. As held in
Tyte, the enquiries as to irreparable harm to Colgate and the absence thereof to Bliss are
two sides to the same coin, both enquiries to be informed by the same facts and
circumstances and hardly mu tually exclusive.31 In coming to its conclusion, the court a
quo took account of all the facts and circumstances and its conclusion cannot be faulted.
[48] It cannot be ignored that Bliss had two opportunities to amend its packaging and
did so, shortly after the Manoim J order and the Vally J order. In the process it elect ed
exactly changes it wanted to effect to the offending packaging . For Bliss to simply adopt
the position that Colgate had not made out a case because it contends that Bliss does
31 Para 17.
Page 20
not have any loss worthy of legal protection ,32 disregards the entire basis of Colgate ’s
case and does not bear scrutiny . Colgate contend s that Bliss has no entitlement to the
protection of any financial or reputational benefits improperly garnered from i ts continued
breaches of the ARB Code, the FAC ruling and the Manoim J order. It further contends
that any harm occasioned to Bliss is not as a result of the breach order, but in
consequence of the Manoim J order and the FAC ruling and that the beach order merely
seeks to enforce the pre -existing legal obligations. Were Bliss to have contented
otherwise , it should have produced facts in discharge of its evidentiary burden on the
issue. It chose not to , despite any such facts being peculiarly within its know ledge .
[49] In these circumstances, Bliss’ submission that Colgate failed to allege that
enforcing the judgment would not cause Bliss harm and hence has not discharged its
onus , does not bear scrutiny .
[50] In conclusion, the court a quo’s finding that the requirem ents of s 18(3) have been
met, cannot be faulted. For the reasons provided, I agree with those conclusions. It follows
that the appeal must fail.
[51] There is no reason to deviate from the normal principle that costs follow the result.
Considering the complexities involved , the employment of two counsel was warranted.
Colgate sought a punitive costs order on the scale as between attorney and client. I am
not persuaded that such a costs order is warranted in the present circumstances.
[52] In the result, the following order is granted:
The appeal is dismissed with costs, such costs to include the costs consequent upon
the employment of two counsel, one being senior counsel , on scale C.
32 City of Tshwane Metrop olitan Municipality v Afriforum and Another 2016 (6) SA 279 (CC) para 56 .
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_____________________________________
EF DIPPENAAR
JUDGE OF THE HIGH COURT
JOHANNESBURG
HEARING
DATE OF HEARING : 18 FEBRUARY 2025
DATE OF JUDGMENT : 28 FEBRUARY 2025
APPEARANCES
APPELLANT’S COUNSEL : Adv. C D A Loxton SC
Adv. I Learmonth
APPELLANT’S ATTORNEYS : Eversheds Sutherland SA Inc.
Ms S Pluke
FIRST AND SECOND
RESPONDENTS ’ COUNSEL : Adv G Marcus SC
Adv R Michau SC
Adv L Harilal
Adv Chris McConnachie
FIRST AND SECOND
RESPONDENTS ’ ATTORNEYS : Kisch Africa Inc
Mr A Papadopoulos/ Ms T Pretorius
THIRD RESPONDENTS ’ ATTORNEYS : Willem De Klerk Attorneys
Mr W De Klerk
No appearance.