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1995
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[1995] ZASCA 26
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Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc (423/93) [1995] ZASCA 26; 1995 (2) SA 903 (AD); [1995] 2 All SA 339 (A) (27 March 1995)
Case No
:
423/93
IN THE SUPREME COURT OF SOUTH AFRICA
(
APPELLATE DIVISION
)
In the matter between:
SMITHKLINE BEECHAM CONSUMER BRANDS (PTY) LTD
(formerly known as BEECHAM SOUTH AFRICA (PTY) LTD
) ...
Appellant
AND
UNILEVER PLC
Respondent
Coram
: CORBETT CJ, JOUBERT, STEYN, EKSTEEN JJA et OLIVIER AJA
Heard
: 17 February 1995
Delivered
: 27 March 1995
JUDGMENT EKSTEEN
, JA :
It appears from the papers before us that the appellant company has been
selling striped toothpaste in South Africa since 1974. Originally
the stripes
were in a combination of blue and white, but since 1984 it has also sold a
three-coloured toothpaste in blue, red and
white, and, since 1986, also in
green, red and white. In 1988 the sales of appellant's striped toothpaste in
South Africa amounted
to some R25 149 000 and comprised 22.2% of the total South
African market for toothpaste. Over the years the appellant advertised
its
striped toothpaste range extensively at considerable expense.
..... / 2
2
The appellant applied to the Registrar of Trade Marks for the
registration of seven different trade marks. All the applications were
in class
3 in respect of toothpaste and dentifrices included in that class.
These applications were opposed by the respondent. The respondent, it
appears, is also a seller of toothpaste, and is the proprietor
of a trade mark
registered on 7 May 1973 for a striped toothpaste in class 3 in respect of
dentifrices. The respondent objected to
the registration of the applicant's
proposed trade marks on the basis that they offended against the provisions of
section 17(1)
of the Trade Marks Act No 62 of 1963 ("the Act") in that
..... / 3
3
they so resembled respondent's registered trade mark that they
would be likely to deceive or cause confusion.
The matter came before the
Assistant Registrar of Trade Marks in terms of section 29 of the Act, and on 27
April 1992 he refused all
seven applications with costs. The appellant thereupon
appealed to the Full Bench of the Transvaal Provincial Division, in terms
of
section 30 in respect of six of the applications. The seventh application was
expressly abandoned at the appeal. This appeal was
unsuccessful and the
appellant now appeals to this Court in terms of section 63 of the Act.
In the light of the form the proceedings have taken there are presently six
separate appeals
..... / 4
4 before us, i e one in respect of each of the six
trade marks that the appellant seeks to register. The principles applicable in
each case are however identical. This prompted both the Assistant Registrar and
the Court a quo to deal with all six applications
in one compendious judgment. I
shall also deal with all the present appeals in this one judgment.
The respondent's trade mark is as follows:
72/2327. in Class 3: Dentfrices. in (the name of Unilever Limited, i British
company of Port Sunlight. Address England. Address for
service: Messs Spoor
& Fisher. Masada.
Buildings. Paul Kruger Street. Pretoria.
Registration of this trade mark (shall not confer exclusive rights to the use
of the brush and tube device.
The essential and distinctive feature: of the mark are the red strings in
white tooth paste as depicted in the representaion affixed
to the application
form. Associated with No. 70X167.
Section 24 (1) (b) application. Filed 24 May 1972.
As can be seen it depicts a piece of white toothpaste
with two red stripes in it, being squeezed from a tube
into the bristles of a toothbrush. All this is dis-
.... / 5
5
played against a dark background. Immediately below
the representation the following disclaimer appears,
viz
"Registration of this mark shall not confer exclusive rights to the use of
the brush and tube device"
and then it goes on to say
"The essential and distinctive features of the mark are the red stripes in
white tooth paste as depicted in the representation affixed
to the application
form" - i e the representation reproduced above.
The six trade marks which the appellant now
seeks to have registered are numbered 82/7640, 82/8530,
82/8767, 82/8768, 82/8769 and 83/5167 and are the
following:
.... / 6
SEE ORIGINAL JUDGMENT PAGE
SEE ORIGINAL JUDGEMENT PAGE
7
As can be seen three of these marks de-pict pieces of
toothpaste on a toothbrush, and the other three merely, what the Assistant
Registrar
and the Judge a
quo
refer to as a "slug" of toothpaste -an
inelegant and repellent description which tends to conjure up an unpalatable
association with
the slimy gasteropod which is the bane of many a gardener's
life. For lack of a better word I shall simply refer to it as a "piece"
of
toothpaste. In each instance the mark is displayed against a white background.
In the first five the appellant limits its rights
to the colours as depicted in
each of the respective representations. The only exception is 83/5167 where
there does not appear to
be any such limitation.
.... / 8
8
In the course of his argument before us, however,
Mr
Puckrin
who appeared on behalf of the appellants,
tendered a limitation in respect of that trade mark
too, to the colours depicted in the representation
together with a disclaimer of the brush.
The respondent's objection to appellant's
application for the registration of these trade marks
was based on the provisions of section 17(1) of the Act.
The relevant provisions of that section read as follows:
"17(1) .... no trade marks shall be registered if it so resembles a trade
mark belonging to a different proprietor and already on
the register that the
use of both such trade marks in relation to goods or services in respect of
which they are sought to be registered,
and registered, would be likely to
deceive or cause confusion."
..... / 9
9
The touchstone is therefore whether there is such
a degree of similarity between the respond-ent's trade mark and those of the
appellant
as to give rise to the likelihood of consumer deception or con-fusion.
The ultimate function of a trade mark is, after all, to be
a source of
identification. It is defined in section 2 of the Act as
"a mark used or proposed to be used in re-lation to goods .... for the
purposes of
(a)
indicating a connection in
the course of trade between the goods .... and some person ....
and
(b)
distinguishing the goods .... in
re-lation to which the mark is used or proposed to be used, from the same kind
of goods .... connected
in the course of trade with any other
person."
The onus of proving that there is no
likelihood of consumer deception or confusion must
...../ 10
10
rest on the appellant who is seeking such registration. I
agree with the conclusion arrived at by Harms J in
The Upjohn Company v Merck
and Another
1987 (3) SA 221
(T) at p 224 that the word "unlikely" in section
17(1) must refer to a reasonable possibility, in contradistinction to a
reasonable
possibility.
How a court should approach an issue such as the one confronting us has been
considered in a vast array of judgments. The salient
guidelines have been
conveniently summarised by the present Chief Justice in
Plascon-Evans Paints
Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A) where at p 641 he
remarks that the comparison must have regard to "the similarities and
differences in the two
...... / 11
11
marks, an assessment of the impact which the defendant's marks would make
upon the average type of customer who would be likely to
purchase the kind of
goods to which the marks are applied. The notional customer must be conceived of
as a person of average intelligence,
having proper eyesight and buying with
ordinary caution. The comparison must be made with reference to the sense, sound
and appearance
of the marks. The marks must be viewed as they would be
encountered in the market place and against the background of relevant
surrounding
circumstances. The marks must not only be considered side by side,
but also separately. It must be
borne in mind that the ordinary purchaser may encounter goods, bearing the
defendant's mark, with an imperfect recollection of the
registered mark and due
allowance must be made for this. If each of the marks contains a main or
dominant feature or idea the likely
impact made by this on the mind of the
customer must be taken into account. As it has been put, marks are remembered
rather by general
impressions or by some significant or striking feature than by
a photographic recollection of the whole. And finally
....... / 12
12
consideration must be given to the manner in which the marks
are likely to be employed as, for example, the use of name marks in conjunction
with a generic description of the goods."
The case I have just referred to was one of infringement of a registered
trade mark under section 44 of the Act, but the principles
to be applied in
comparing the competing marks, are equally applicable to the issue before us.
Naturally all the criteria referred
to might not necessarily find application to
the facts of the present case, but they are nevertheless instructive as to the
general
ambit of the enquiry. (See too
American Chewing Products Corporation
v American Chicle Company
1948 (2) SA 736
(A);
Laboratoire Lachartre SA v
Armour-Dial Incorporated
....... / 13
13
1976 (2) SA 744
(T).)
An important feature in the present case
is the colour combination in the
various marks. In
the registration of respondent's mark it is
expressly
stated that
"the essential and distinctive features of the mark are the red stripes in
white tooth paste."
These features - viz the red stripes in white toothpaste - are what
respondent explicitly relies on to make its mark distinctive;
i e to distinguish
its toothpaste from the toothpaste of another not connected with it in the
course of trade (see section 12 of
the Act). Section 40 of the Act provides that
-
...... / 14
14
"40(1) A trade mark may be limited in whole or
in part to a particular colour or colours, and in case of any application for
the registration of a trade mark the fact that the trade
mark is so limited
shall be taken into consideration by any tribunal in deciding whether it is
distinctive or not. (2) In and so
far as a trade mark is registered without
limitation of colour, it shall be deemed to be registered for all colours."
Here the respondent did not seek to register his mark for all colours but
chose to limit it, for the purposes of distinguishing it
from other marks, to
the red stripes in white toothpaste. Mr
Ginsburg
who appeared on behalf
of the respondent, conceded in argument, as indeed he was bound to do, that the
words I am considering, amounted
to a limitation as to the particular colours as
envisaged by section 40. This,
...... / 15
15
to my mind, seems to be an important consideration in the present case.
Respondent must be seen not to have sought, nor to have obtained,
a monopoly on
the use of any striped toothpaste in a trade mark, but only to the use of red
stripes in white toothpaste. Due regard
must be had to this in considering the
degree of similarity between respondent's mark and each of the appellant's
marks.
Another feature to be borne in mind when comparing the marks is the
disclaimer registered against respondent's mark viz that such
registration does
not confer exclusive rights to the brush and tube device depicted in its mark.
The reason for this disclaimer seems
to have been that the toothbrush and
....... / 16
16
the tube are common to the trade in toothpaste, or otherwise that they are of
a non-distinctive character (cf section 18 of the Act).
In the present case it
was common cause that these are common to the trade and it was not disputed that
they, in themselves, are
of a non-distinctive character. Mr
Ginsburg
,
however, submitted that despite the disclaimer, the court was nevertheless to
have regard to the whole mark, including the disclaimed
matter, in its
comparison of the various marks. This would mean that those marks of the
appellant which depict a piece of toothpaste
on the bristles of a toothbrush
must be compared with respondent's mark which also depicts a piece of toothpaste
on the bristles
of a toothbrush. For purposes
....... / 17
17
of comparison, therefore, the disclaimers would carry very
little if any weight. He relied for this submission on the decision of
this
Court in
Registrar of Trade Marks v American Cigarette Co
1966 (2) SA 563
(A). This case concerned the refusal by the Registrar of Trade Marks of an
application to register a trade mark in respect of cigarettes.
The mark the
applicant sought to register consisted of
"a man, dressed in the elaborate uniform of an officer in a more leisurely
age standing upon a substantial pedestal, on the front
panel of which appear the
words 'Lafayette of Yorktown Fame 1737-1834'." (p 569 G-H)
The Registrar refused to register this mark because
of its resemblance to another mark already on the
register in respect of similar goods. This mark
....... / 18
18
consisted of
"a male figure, holding a pistol and wearing a cocked hat and a frock coat,
standing, with trousers thrust into high top-boots, above
bold printing reading
'20 cigarettes'. Above the man's hat, appears, in even bolder printing, the word
'Lafayette'." (p 569H-570A)
Both the word "Lafayette" and the numeral "20" were
disclaimed.
In the course of his judgment in this
Court, Ogilvie Thompson JA remarked at p 572 E-F that
"The circumstance that the proprietor of mark 61/0743"
(i e the mark which was already on the register)
"has, by reason of the disclaimer, no exclusive right to the word 'Lafayette'
does not necessarily preclude the possibility of confusion
or deception
occurring among members of the smoking public in the event of
....... / 19
19
applicant's cigarettes and tobaccos being marketed under its proposed
mark."
He summarized this view succintly in the aphorism that
"A disclaimer does not go out into the market with the goods for sale"
i e that since the consumer public would be unaware of the terms of the
registered disclaimer confusion would not necessarily be excluded
merely by such
disclaimer.
After contrasting the facts of the case he was considering with those in
Re Loftus' Trade Mark
11 RPC 29
, the learned Judge went on to say - (at p
574 G-H)
"In the present case, unlike Loftus' case, the relevant disclaimed word -
'Lafayette' - is not one of mere commendation but, on the
contrary, is the
somewhat striking - and, I venture to think, in this country, relatively
..... / 20
20
unfamiliar - name of an historical figure. In relation to such
circumstances, I concur in the view advanced in Chowles and Webster,
'South
African Law of Trade Marks', p 61 that -
'the presence of a word or words, which although disclaimed, are less well
known and are less currently used, may result in confusion'.
In short, regard
must, in my judgment, be had, not merely to the existence of a disclaimer, but
also to the nature of what is disclaimed."
This seems to me to have been the basis upon which the Court in that case
came to the con-clusion that, in comparing the marks as
a whole - i e having
regard to the device together with the dis-claimed feature, there was such a
similarity as to be reasonably
likely to cause confusion. Although, therefore,
the word "Lafayette" was expressly disclaimed it was nevertheless such a
dominant
feature of both marks,
..... / 21
21
and was, in this country at any rate, so striking and unusual, that if used
in both marks deception and confusion would be likely
to ensue. Where a
disclaimed feature is so dominant or so striking as it was in that case, it may
well have the effect of overriding
any differences which might be apparent in
the devices themselves. The ultimate test is, after all, as I have already
indicated,
whether on a comparison of the two marks it can properly be said that
there is a reasonable likelihood of confusion if both are to
be used together in
a normal and fair manner, in the ordinary course of business. Where the
disclaimed features are common to the
trade, or are of such a commonplace and
non-distinctive character as the
..... / 22
22
brush and tube device in the present case, then full effect
should be given to the disclaimer. Although one would still have regard
to the
marks as a whole, the disclaimed features will, in such event, be of less
account than if they had been more dominant or striking.
In
Loftus
' case
(
supra
) the two marks appertaining to whisky differed
toto caelo
except for the words "Unco guid" which were common to both, and which had been
disclaimed by the registered proprietor. These words
are clearly commendatory in
character, and, as such, unlikely to confuse. This, no doubt, prompted North J
to remark (at p 33 of
the report) that
"I must say, looking at these marks myself, I come to the conclusion that
there is not any such resemblance as to be calculated to
...... / 23
23
deceive. I do not see how the use in one of what
is admitted by both to be common property, and not exclusively belonging to
either,
can in itself be sufficient to make the mark containing the words
disclaimed by the first calculated to deceive when used by the
second."
In the final result, therefore, this Court must have regard to the degree of
similarity or dissimilarity between the appellant's marks
and that of the
respondent. Bearing in mind the principles I have ennuciated above, we must seek
to envisage the circumstances in
which confusion is or is not likely to
arise.
In considering these marks the Assistant Registrar came to the conclusion
that
"Visually, these marks are almost identical. Even when subjected to close
scrutiny, the marks disclose hardly any points of difference."
..... / 24
24
This view was fully subscribed to by the Full Bench in its
judgment. To my mind, however, this view is, to say the least of it, grossly
overstated. When one has regard to them there are obvious and significant
differences.
In the first place, as I have pointed out, respondent has no monopoly of all
forms of striped toothpaste but is subject to a limitation
as to colour, viz red
stripes in white toothpaste. Due regard must be given to this limitation.
Appellant's trade mark 82/7640 depicts
a piece of toothpaste, without any brush
or tube device, consisting of blue and white stripes. Respondent's marks depicts
what is
clearly a piece of white toothpaste with two narrow stripes
..... / 25
25
running horizontally along its whole length up to where it emerges from the
mouth of the tube. Appellant's mark on the other hand
has no such narrow
stripes. The so-called "stripes" appear to be of equal width, so that it cannot
really be said to be piece of
white toothpaste with a blue stripe in it, or a
piece of blue toothpaste with a white stripe in it. Indeed, if stripes they be,
they
bear no resemblance to the form of the stripes appearing on respondent's
mark. The background of appellant's mark, too, is white
in contradistinction to
respondent's dark background. Comparing these two marks as a whole there are
sig-nificant differences, and
if one furthermore has regard to the respondent's
limitation as to colours,
.... / 26
26
the differences are simply accentuated.
Much the same considerations apply
in respect of the comparison between appellant's marks 82/8768 and 82/8769, on
the one hand, and
respondent's mark on the other. Both these marks of the
appellant consist of rather stylized representations of a piece of toothpaste
with, in one case, green, white and red stripes, and in the other blue, white
and red stripes. Again the stripes appear to be of
more or less the same width,
so that one cannot describe the piece of toothpaste as being of any one of these
colours. In fact the
"stripes" may perhaps be more accurately described as
coloured "layers" of equal thickness laid one upon the other. Again the
background
is white
...... / 27
27
and the brush and tube device is absent. So even comparing the marks as a
whole, significant differences are apparent, and respondent's
limitation as to
colour merely serves to underline these differences.
Appellant's marks 82/8530, 82/8767 and 83/5167 all depict a piece of
toothpaste on the bristles of a toothbrush against a white background.
There is,
however, no representation of a tube in any of them. The piece of toothpaste is,
in each case, highly stylized. In the
first of these marks, the piece of
toothpaste has equally wide stripes or layers coloured red, white and blue, in
the second mark
red, white and green and in the third white and blue. In this
latter mark the white section is considerably broader than the
...... / 28
28
blue portion. It appears to be a piece of white toothpaste
with a topmost section of blue. One could not, by any stretch of imagination,
describe it as a piece of white toothpaste with blue stripes. In the first place
there are no stripes in the piece, such as are depicted
in respondent's mark,
but merely a blue layer on top of the piece of white toothpaste. The device of
the brush is common to both
appellant's and respondent's marks in these
instances, although the actual representations differ in certain insignificant
respects.
In the light of respondent's disclaimer of the commonplace and
non-distinctive representation of a brush - an object common to the
trade in
toothpaste - not much can be made of this
...... / 29
29
similarity. None of the pieces of toothpaste - except that depicted in
83/5167 - can be said to be white, and none of them have the
type of red stripes
appearing in the respondent's mark.
There are, therefore, in my view, very
real differences between respondent's mark and each of appellant's marks, and
they can hardly
be described as '(almost identical". The question then is
whether they are so different as to obviate the probability of confusion
or
deception in the mind of a consumer of average intelligence buying with ordinary
caution, and who may have but an imperfect recollection
of respondent's mark.
Comparing the marks as a whole, with due regard to the limitations as to colour
and
...... / 30
30
the disclaimer, the impression left on me is that the differences are so
significant that it is unlikely that the consumer I have
postulated would be
confused as to the origin of the goods. The narrow red stripes in an otherwise
ordinary white piece of toothpaste
as depicted in respondent's mark against a
dark background is such a distinctive feature, and one which is not present in
any of
the appellant's marks, that I do not think that there is any reasonable
likelihood that the ordinary consumer, of average intelligence,
having proper
eyesight, and buying with ordinary caution, would be confused as to the origin
of the toothpaste he or she is buying,
nor be deceived into thinking that there
may be some connection between the two.
..... / 31
31
The stripes, if they may be so called, in appellant's mark
differ so significantly, not only in colour, but also in form, that there
seems
to me to be scant room for confusion. It is perhaps worthy of mention that
despite the fact that the appellant has been marketing
its striped toothpaste
since 1974 there does not appear to have been any confusion during all these
years, between its toothpaste
and that of the respondent. The respondent does
not, in its papers, suggest that any such confusion has ever arisen.
In all the circumstances, therefore, I am of the view that the Assistant
Registrar of Trade Marks was wrong in the conclusion to which
he came. He ought
to have accepted each of the appellant's proposed trade marks
...... / 32
32
for registration, with the one qualification, as tendered by
Mr
Puckrin
in argument before us that mark 83/5167 should be limited to
the colours white and blue as depicted, and that there be a disclaimer
as to the
device of the toothbrush.
In the result therefore it is ordered that
(1)
the six appeals are allowed
with costs, such costs to include the costs of two
counsel;
(2)
the order made by the Court a
quo
is set aside and for it the following order is substituted viz
-
the order of the Assistant Registrar in respect of
the six appeals before the Court
..... / )33
33
is set aside and replaced by an order granting the application with costs
against the opponent in each case, with the qualification,
however, that the
mark 83/5167 in the sixth appeal be limited to the colours white and blue as
depicted in the application, and with
a disclaimer of the exclusive right to use
the toothbrush device.
JPG EKSTEEN, JA
CORBETT, CJ )
JOUBERT, JA )
concur
STEYN, JA )
OLIVIER, AJA )