REPUBLI C OF SOUTH AFRICA
IN THE HIGH COURT OF SOUTH AFRICA
GAUTENG DIVISION , PRETORIA
Case Number: A3/2024
(1) REPORTABLE: NO
(2) OF INTEREST TO OTHER JU GES: NO
(3) REVISED: YES
26 May 2026
DATE
NATIONAL BRANDS LIMITED Appellant
and
CONTINENTAL BISCUIT MANUFACTURERS (PTY) LTD Respondent
JUDGMENT
Janse van Nieuwenhuizen J (Hassim J and Manamela AJ concurring ):
Introduction
[1 ] This is an appeal against the judgment and order of Mbongwe J (the court a
quo) dismissing the appellant's application for interdictory and ancillary relief based on
sections 34(1 )(a) and 34(1 )(c) of the Trade Marks Act 194 of 1993 ("the Act"), and
passing off under the common law.
[2] The court a quo refused leave to appeal. Leave to appeal to the Full Court was
granted by the Supreme Court of Appeal ("the SCA") in terms of an order issued on
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28 November 2023. The issues for determination, distilled from the papers, the heads
of argument and the oral submissions, are: (a) whether the appellant has established
infringement of its registered trade mark under sections 34(1)(a) and 34(1)(c) of the
Act; (b) whether the respondent’s conduct amounts to passing off; and (c) costs,
including whether the court a quo was justified in awarding punitive costs.
Factual background
[3] The appellant, National Brands Limited, is the proprietor of the following
relevant trademark registration in South Africa:
[4] It is not in dispute that the appellant has made extensive and widespread use
of the well-known PROVITA biscuit shape and appearance in relation to the savoury
biscuit market in South Africa for decades. There was nothing else like it on the market.
That is, until May 2012.
[5] During June 2015, it came to the appellant’s knowledge that the respondent,
Continental Biscuit Manufacturers, had introduced an uncannily similar product into
Trade mark number:
Mark
Specification
Filing date
Endorsement
1966/01938
[~: i, ~-~;_:V·I ~~: ·=] .. - .. .. ... . --. - . . - .. - . . . ..
C lass 30- "bread, biscui ts and bakery p roducts"
1 6 May 1966
"Registration of this trade mark shaf/ give no right to
the exclusive use of a d e vice of a BISCUIT as such
otherwise than as shown in the applicanon"
3
the savoury biscuit market in South Africa, known as SNACTIVE. A side -by-side
comparison of the competing savoury products demonstrates their likeness:
[6] The only difference between the biscuits is the word PROVITA on one and an
ear of wheat on the other.
[7] Insofar as the packaging of the competing biscuits is concerned, the appellant
contends that the parties’ get -ups, as wholes, including colours, arrangement of
matter, and depictions of the biscuits themselves, are similar, to wit:
[8] On 11 May 2016, the appellant, through its attorneys, addressed a letter of
demand to the respondent calling upon it to cease using the current shape and
appearance of its SNACTIVE biscuit, or any other shape and appearance confusingly
PROVITA SNACTIVE
IIIUL Tlt:n A.IM 0 11:$:ll'll,.II CAO HQRIJOMI,ILLAYO\II
4
or deceptively similar to the appellant’s PROVITA biscuit shape and appearance; to
cease all use of its SNACTIVE packaging, or any other packaging confusingly or
deceptively similar to the appellant’s PROVITA packaging; to deliver up to Adams &
Adams, for destruction, all offending SNACTIVE packaging in its possession or under
its control; and to sign the annexed undertaking. The respondent refused, which in
turn led to the application that was heard by the court a quo.
Court a quo
[9] In dismissing the appellant’s application, the court a quo held that the
appellant’s registered trade mark is the word PROVITA, which is embossed on a
device: a rectangular biscuit with rounded edges and docking holes. Having made the
aforesaid finding, the court a quo proceeded as follows “In terms of substantive law,
the applicant does not have the right to the exclusive use of the device .”… a mark is
distinct from the thing marked and therefore the goods themselves could not constitute
a “mark” for purposes of the Act ” (see Weber -Stephen Products Co v Registrar of
Trade Marks [1994] 1 (own emphasis). The applicant therefore, can claim no right to
the exclusive use of the biscuit itself.”
[10] The appellant contends that the court a quo misconstrued the case before it by
approaching the matter as if the appellant sought to secure protection for the three -
dimensional shape of a crispbread. It is said that, properly understood, the statutory
cause of action was founded on infringement of a registered two -dimensional device
mark and the common law cause of action on passing off, grounded in reputation in
the get-up and overall appearance of the product.
[11] In considering the appellant’s contention, it is apposite to have regard to the
approach on appeal. An appeal court is concerned primarily with whether the court a
quo applied the correct legal principles to the facts found or not genuinely in dispute,
quo applied the correct legal principles to the facts found or not genuinely in dispute,
and whether it committed a material misdirection in its evaluation of the evidence or in
1 4 All SA 348 (T)
5
the application of the relevant tests. Where such a misdirection is established, the
appeal court is at large to reconsider the matter and to substitute its own conclusion.
[12] The appellant’s trade mark, as depicted in the registration of the mark, clearly
includes the distinctive shape of the biscuit or device. i.e., the device is included in the
trade mark. In the result, the court a quo’s finding that the registered mark is the word
PROVITA and not the distinctive shape of the biscuit (device) is a misdirection.
Interdictory relief:
Section 34(1)(a)
[13] Section 34(1)(a) of the Trade Marks Act 194 of 1993 pro hibits unauthorised
use, in the course of trade and in relation to the registered goods, of an identical mark
or a mark so nearly resembling the registered mark as to be likely to deceive or cause
confusion. The section is concerned with likelihood, not proof of actual deception. The
comparison is made notionally, through the eyes of the ordinary customer of the
goods, with due allowance for imperfect recollection and without side -by-side over-
analysis. That much accords with the statutory text and the approach reaffirmed in
ICollege (Pty) Ltd v Xpertease Skills Development and Mentoring CC and Another.2
[14] The goods are identical: both parties trade in savoury crispbread biscuits. The
appellant’s product has been sold extensively over many years and, on the papers, its
appearance has become distinctive in the market. The respondent’s product
reproduces a striking combination of features: the rectangular form, rounded corners,
a closely similar perforation layout, and an embossed central motif. The respondent
emphasises that the absence of the word “PROVITA” and the presence of its own
branding on the pac kaging distinguishes the two brands to such an extent that
deception or confusion is ruled out. The differences are relevant, but not decisive. The
enquiry is whether the mark as used so nearly resembles the registered device mark
enquiry is whether the mark as used so nearly resembles the registered device mark
that deception or confusion is likely in ordinary market conditions.
2 [2023] ZASCA 70
6
[15] In answering this question, one must keep steadily in view that the product may
be encountered not only on the shelf, but also out of its packaging. The appellant’s
case that consumers may see and consume the biscuit without its wrapper is neither
fanciful nor irrelevant. If, in such ordinary use, the appearance impressed on the biscuit
is apt to call the appellant’s mark to mind and to denote origin to a substantial number
of consumers, that use is not immunised merely because prominent branding appears
elsewhere on the packaging.
[16] Having undertaken the useful exercise of first hand comparison, it is clear that
the resemblance is sufficiently close to establish infringement under section 34(1)(a).
The similarities are not confined to commonplace or functional features viewed
separately. It is their combination, impressed on identical goods competing head -on
in the same market, that yields the relevant overall im pression. The respondent’s
adoption of that combination is likely to cause material confusion as to trade origin or
association.
Section 34(1)(c)
[17] Section 34(1)(c) protects a mark with a reputation against unauthorised use of
an identical or similar mark where such use would be likely to take unfair advantage
of, or be detrimental to, the distinctive character or repute of the registered mark,
notwithstanding the absence of confusion. The enquiry is therefore discrete. Similarity
alone does not suffice; nor does proof of reputation alone. There must be a likelihood
of the statutorily recognised harm. That is the ratio of Laugh It Off Promotions C C v
South African Breweries International (Finance) BV t/a Sabmark International 3 and it
is consistent with the analysis in Bata Ltd v Face Fashions CC and Another4.
[18] The appellant established, and the respondent effectively accepted, that the
PROVITA mark enjoys a substantial reputation in South Africa. Given the close
PROVITA mark enjoys a substantial reputation in South Africa. Given the close
resemblance already identified, the respondent’s product is plainly capable of bringing
the registered device to mind. In the setting of direct competition in identical goods,
3 1984 (3) SA 623 (A).
4 2001 (1) SA 844 (SCA).
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the respondent’s adoption of a markedly similar appearance is likely to enable it to
benefit from the attraction, recall and marketing force of the appellant’s product and,
correspondingly, to erode the distinctive capacity of the registered mark by blurring the
singular association that the market has formed with it. The requirements of section
34(1)(c) are therefore also met.
Passing-off
[19] The passing-off claim follows a related but distinct path. The law protects the
goodwill of a trader against a misrepresentation likely to lead a substantial number of
consumers to believe that the defendant’s goods are those of the plaintiff or are
connected with them. Reputation, misrepresentation and likely damage are the familiar
elements, as explained in Policansky Bros Ltd v L & H Policansky 5 and restated in
Caterham Car Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd [2]. Here, reputation
is not genuinely in issue. The real question is whether the respondent’s adoption of a
closely similar product appearance and related get -up amounts to a
misrepresentation.
[20] For substantially the reasons already given, it does. The respondent’s use
appropriates the essential visual cues by which the appellant’s product has come to
be recognised. Its own branding may reduce confusion in some retail contexts, but it
does not neu tralise the likelihood of deception where the product is encountered in
ordinary use, including outside its wrapper. Passing off does not require the applicant
to prove that every customer will be deceived, nor does the absence of proved
instances of actual confusion after co -existence necessarily defeat the claim. The
question remains whether a substantial number of ordinary purchasers may be misled.
On this record, that threshold is crossed.
5 1935 AD 89 at 113
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[21] The market survey evidence was debated at length. Survey material may,
depending on methodology and fairness, assist the court, but it is seldom decisive. It
cannot substitute for the court’s own evaluative task. Nor can this matter be decided
by treating the survey as conclusive proof or as wholly irrelevant. Even leaving the
survey evidence to one side, the appellant succeeds on the objective comparison, the
nature of the goods, the market context , and the established reputation of the mark
and get-up. To the extent that disputes of fact arise in motion proceedings, they fall to
be treated in accordance with Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty)
Ltd6. Applied properly, that approach does not alter the outcome here.
Ancillary relief
[22] Having found that the respondent’s product offends the provisions of section
34(1)(a), 34(1)(c) and the common law of passing off, it follows that the appellant is
entitled to an order directing the respondent to remove from packaging, signage, all
printed material, websites and social media platforms in its possession or under its
control, bearing its current SNACTIVE get -up and/or biscuit shape, or any marks so
nearly resembling the appellant’s registered trade mark and get -up and/or any other
trade marks or get -ups which are confusingly or deceptively similar to the aforesaid
registered trade mark and get-up.
Costs
[23] Costs should follow the course, including the cost of two counsel on scale C.
ORDER
The following order is made:
1. The appeal is upheld with costs, including the costs of two counsel on Scale C.
2. The order of the court a quo is set aside and replaced with the following:
6 [2023] ZASCA 70 at paragraph 12-14
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2.1 The respondent is interdicted from::
2.1.1 infringing the appellant’s registered trade mark no. 1966/01938
PROVITA BISCUIT device in class 30 in terms of section 34(1)(a)
and 34(1)(c) of the Trade Marks Act 194 of 1993 , by
manufacturing, marketing or selling its SNACTIVE biscuit, which
embodies the shape and appearance of the applicant’s registered
trade mark and/or any other marks so nearly resembling the
Applicant’s registered trade mark, as to be likely to deceive or
cause confusion or would be likely to take unfair advantage or be
detrimental to the distinctive character or repute of the applicant’s
registered trade mark;
2.1.2 passing-off its goods as being those of the applicant or as being
connected to the applicant, by making use of, advertising and
selling the SNACTIVE biscuit, which embodies the shape and
appearance of the applcant’s PROVITA biscuit, or any confusing
or dec eptively similar marks and/or by using a get -up which is
confusingly or deceptively similar to the get -up used by the
applicant;
2.2 the respondent is to remove from packaging, signage, all printed
material, websites and social media platforms in its possession or under
its control, bearing its current SNACTIVE get-up and/or biscuit shape, or
any marks so nearly resembling the appellan t’s registered trade mark
and get -up and/or any other trade marks or get -ups which are
confusingly or deceptively similar to the aforesaid registered trade mark
and get-up.
2.3 the respondent is ordered to pay the costs of the application, including
the costs of two counsel on scale C.
Date of hearing:
Judgment delivered:
Appearances:
Counsel for the Appe llant:
Attorneys for the Appellant:
Counsel for the Respondent:
Attorneys for the Respondent:
N JANSE VAN NIUWENHUIZEN
JUDGE OF THE HIGH COURT OF SPOUTH AFRICA
GAUTENG DIVISION, PRETORIA
13 October 2025
26 May 2026
CE Puckrin SC and LG Kilmartin
Adams & Adams
O Salmon SC
Norton Rose Fulbright South Africa Inc.
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