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[1999] ZASCA 48
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Premier Trading Company (Pty) Ltd and Another v Sportopia (Pty) Ltd (218/97) [1999] ZASCA 48; 2000 (3) SA 259 (SCA); 1999 BIP 193 (SCA) (1 June 1999)
IN
THE SUPREME COURT OF APPEAL
OF
SOUTH AFRICA
Case No: 218/97
In the
matter between:
PREMIER TRADING COMPANY (PTY) LIMITED First
Appellant
and
GDK
SPORTS (PTY) LIMITED Second Appellant
and
SPORTOPIA
(PTY) LTD Respondent
CORAM
: HEFER, NIENABER, SCHUTZ, PLEWMAN JJA,
FARLAM
AJA.
HEARD
: 20 MAY 1999
DELIVERED
: 1 JUNE 1999
Passing-off
- alleged product confusion - reputation as importer/distributor -
absence of - no likelihood of confusion
JUDGMENT
NIENABER
JA
NIENABER JA
:
[1] This
is a case about passing-off. It commenced as an application by the
first appellant for an interdict in the Durban and
Coast Local
Division in which it sought to restrain the respondent from
"1.1 dealing in any way in roller skates bearing
the trade mark Bladeline or using the brand name Bladeline in
connection
with the sale of roller skates;
1.2 interfering in the applicants' business in its
roller skates bearing the trade mark Bladeline by asserting to the
applicant's
customers that the applicant is disentitled to use its
Bladeline trade mark and threatening legal proceedings against such
customers
and/or the applicant on the grounds that the respondent is
the only party entitled to use the trade mark Bladeline in respect
of roller skates".
The
roller skates concerned are so-called "in-line" roller
skates. In-line roller skates differ from conventional
roller
skates in that the four wheels are not mounted in two matching pairs
at the front and at the rear but in a line along
the chassis of the
boot. This configuration, comparable to ice skates, increases their
[2] user's manoeuvrability and speed.
This
particular product, so it was stated, was developed during about
1989 in Australia by a firm called "Skateworks"
which
registered the trade mark "Bladeline" in that country in
1992. Skateworks was taken over by, and eventually
became a
division of, Australian Power Brands (Proprietary) Limited ("APB").
On 23 September 1993 APB concluded a
distribution agreement with
the respondent. The respondent is a South African company,
incorporated two days before, with its
principal place of business
in Durban. It operates as an importer of consumer goods, including
sports and recreational equipment,
which it supplies to retail
outlets. In terms of the agreement APB licensed the respondent to
market, distribute and sell Skateworks
products in South Africa, in
particular Bladeline in-line skates. Clause 13 of the agreement
granted the respondent the exclusive
right to the use of the trade
mark Bladeline in South Africa, including the right to apply for
its registration as a trade
mark in its own name. The [3]
respondent, having determined that it was open to it to do so, duly
applied for registration
of the trade mark Bladeline in classes 28
and 42 under applications 93/11039 and 93/11040 respectively on 22
November 1993.
Twenty
one days later, on 12 December 1993, the first appellant filed its
application, 93/11832 in class 28 and 93/11833 in class
42, for
registration of the trade mark Bladeline.
Both
applications are still pending.
The
first appellant, a Johannesburg company, is an importer, like the
respondent, of a wide range of consumer durable goods,
including
sports and recreational equipment, such as roller skates, and, like
the respondent, it acts as a supplier to retail
distribution chains
and independent retail stores.
On
8 July 1993 (before the respondent's incorporation) it acquired,
from a notarial bond holder, the assets and goodwill of three
companies, one of which was Jokari (South Africa) (Pty) Ltd
("Jokari"). Prior to the takeover Jokari had [4] been
a
prominent supplier of sporting goods (including roller skates) to
the mass retail market in South Africa, in relation to which
it used
the mark "Jokari".
Included
in the stock Jokari imported were 312 pairs of what was described in
the invoice of the exporter as "Bladeline
Inline Skates: Three
Buckles". The invoice is dated 12 March 1993. The exporter
was a Taiwanese company, Ellen East Company
Limited ("Ellen
East").
How
this all came about is explained by one Schneider, an employee of
the first appellant who was an employee of Jokari at the
time, in an
affidavit in support of the application: He states:
"If my memory serves me correctly, round
October/November 1992, Stephen Stone [Jokari's then managing
director] visited Jokari's
buying agent in Taiwan. When he returned
he told Jokari's sales staff, myself included, of an upgraded
in-line skate called
the "Bladeline" which he hoped to
launch successfully on the South African market from late 1992
onwards ... As far
as I can recall, in late 1992 Stephen Stone had
samples of both the new "BLADELINE" skate as well as its
packaging."
[5] (I
shall refer to the product introduced into South Africa by Jokari as
the Taiwanese skates and to the respondent's product
as the
Australian skates, although the latter, so we were informed from the
bar, was also manufactured in Taiwan.)
The
Taiwanese skates resembled but were not identical to the Australian
skates. The Australian skates have the name Bladeline
prominently
depicted on the side of the heel of the boot as well as continuously
along the rims of the wheels, separated by a
star motif. The
Taiwanese skates display the name Jokari, although in smaller print,
on the side of the boot and the name Bladeline
on the wheels,
likewise (at least initially) interspersed with a star motif. The
Australian skates have a single buckle with
laces and "mag"
wheels whereas the Taiwanese skates have three buckles and solid
wheels.
The
box in which the Taiwanese skates were packaged was an exact
copy of the cardboard box, designed for Skateworks
in
Australia, in which [6] the Skateworks' Bladeline in-line skates
were marketed. The only difference was in the picture
of the boot
on the box which was that of the Taiwanese skates. That the package
was a direct copy admits of no doubt inasmuch
as the technical
specifications displayed on the box related to the Australian and
not to the Taiwanese skates.
Who
the actual manufacturer of the Taiwanese skates was and how it
happened that Ellen East assumed the name Bladeline in Taiwan
are
matters not explained in the papers. What is certain is that it
happened without the consent of APB in Australia.
The
following inferences can, I think, safely be drawn:
i) that the article imported by the first appellant was
manufactured by someone in Taiwan who pirated, but did not exactly
copy,
the Australian design. This could have been either Ellen East
itself or someone who supplied Ellen East with it;
[7] ii) that Ellen East or its supplier appropriated
the trade name Bladeline (for which an application for the
registration
of the trade mark was pending in Taiwan - the
application was made in April and accepted into the register in
August 1993);
iii) that the product was packaged in a box which, but
for one detail, was an exact replica of the Australian package;
iv) that the name Jokari was added to the product, and
therefore to the picture appearing on its package, by or at the
order of
Ellen East acting at the instance of Jokari - either at the
very outset, prior to the first delivery of 312 pairs of skates, or
some time thereafter.
The
first appellant, after the takeover of Jokari, continued to import
quantities of the Taiwanese skates which it advertised,
promoted and
marketed in South Africa. It also took formal assignment of Jokari
as a trade mark on 11 April 1995.
[8] Hoar,
the managing director of the respondent, first noticed the
Taiwanese skates on the shelves of retailers in November
1993, after
the incorporation of the respondent and the conclusion of its
agreement with APB in September of that year. On his
instructions
the respondent's attorneys thereupon wrote to the first appellant
objecting to the first appellant's sales of its
Bladeline in-line
skates and claiming for itself all the rights in and to the trade
mark. The first appellant's attorneys responded
that the first
appellant's use of the mark, which it claimed to be extensive,
predated the respondent's application for registration
of the trade
mark. The respondent's attorneys thereupon complained that the box
in which the first appellant's product was packaged
was not only a
replica of the package used by Skateworks in Australia but displayed
misleading information relating to the product
sold. The first
appellant reacted to this complaint by at first placing a brightly
coloured sticker over the false specifications
with the words
"By Jokari - World of Sport - New Bright Colours"
and, some months thereafter, [9]
by redesigning the package, as
well as the manner in which the word Bladeline appeared on the
wheels, so as not to resemble,
as conspicuously as before, the
Australian get-up.
About
a year later, in December 1994, the respondent launched the
Australian skates in South Africa with the name Bladeline
prominently featured on the outside heel of the boot and on the
"mag" wheels.
This foray into the South African
market by the respondent prompted the present motion proceedings, in
which the first appellant
pressed for the relief set out earlier in
this judgment. Paragraph 1 of the notice of motion was opposed by
the respondent and
refused by Combrink J but paragraph 2 was
conceded by the respondent and granted by the court
a
quo
. In the
result the respondent was ordered to pay a proportion of the
costs. There is no cross appeal.
After judgment was reserved by the
court
a quo
but before it was delivered the second appellant in October 1995
purchased and took over a portion of the [10] assets and
the
business of the first appellant, including the first appellant's
rights in the Jokari trade mark as well as the first appellant's
pending trade mark application in respect of Bladeline. Also
included in the sale was the first appellant's stock on hand or
order for its in-line skates under the Jokari legend. After the
take-over the Bladeline line of business was conducted by the
second
appellant.
The first appellant sought leave to
appeal against the judgment of the court
a
quo
and the second
appellant sought leave both to intervene and to appeal. Both
applications were simultaneously granted. For the
sake of
convenience I shall henceforth refer to Jokari, the first appellant
and the second appellant collectively as "the
appellant".
Passing-off is a wrong consisting
of a false representation made by one trader ("the defendant")
to members of the
purchasing public that the enterprise, goods or
services of a rival trader ("the plaintiff") either
belong to
him (the [11] defendant) or are connected, in the course
of trade, with his own enterprise, goods or services. (I shall
abbreviate,
for the sake of convenience, "enterprise, goods or
services" to the single term "the product" since this
is a case of "product confusion" rather than "business
connection confusion".) The defendant's representation
is a
misrepresentation if it is likely to deceive or confuse a
substantial number of members of the public as to the source or
origin of his product. Passing-off, to be actionable, erodes the
plaintiff's goodwill. Goodwill is the product of a cumulation
of
factors, the most important of which, in the context of passing-off,
is the plaintiff's reputation. Reputation is the opinion
which the
relevant section of the community holds of the plaintiff or his
product. If favourable, it would dispose potential
customers to
patronise the plaintiff or his product and if unfavourable, it would
tend to discourage them from doing so. The
plaintiff's reputation
may be associated with the symbol under which his product is
marketed. The symbol renders the product
distinctive of the
plaintiff or his [12] product. A false representation by the
defendant about the symbol used by the plaintiff
may encourage or
induce potential customers of the plaintiff, believing that they
were patronising him, into patronising the
defendant. (See,
generally,
Capital
Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc
and Others
1977
(2) SA 916
(A);
Adcock-Ingram
Products Ltd v Beecham SA (Pty) Ltd
1977 (4) SA 434
(W);
Brian
Boswell Circus (Pty) and Another v Boswell-Wilkie Circus (Pty) Ltd
1985 (4) SA 466
(A);
Royal
Beech-Nut (Pty) Ltd t/a Manhattan Confectioners v United Tobacco Co
Ltd t/a Willards Foods
[1992] ZASCA 113
;
1992 (4) SA 118
(A);
Reckitt
& Colman SA (Pty) Ltd v S C Johnson & Sons SA (Pty) Ltd
1993 (2) SA 307
(A);
Caterham
Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd and Another
[1998] ZASCA 44
;
1998 (3) SA 938
(A).)
From
the above paraphrase of what is said in the cases there can be
extracted two minimum requirements which a plaintiff must
normally
prove in proceedings for an interdict, based on passing-off
involving the use of a symbol, [13] namely, i) his own
reputation
in relation to the symbol which epitomises his product and ii)
deception, or at the very least confusion, on the part
of a not
insignificant segment of the buying public, caused by the conduct
of the defendant, as to the origin of the product
or a trade
connection with the defendant, and which would likely have had an
influence on their decision to procure it.
These
requirements the appellant in this matter sought to prove. I deal
with each in turn.
In
Caterham
,
supra
,
it was said in par 20:
"The correct question can be distilled from the
judgments on passing-off of this Court mentioned earlier ... In
general
terms, it appears to me to be whether the plaintiff has, in
a practical and business sense, a sufficient reputation amongst a
substantial number of persons who are either clients or potential
clients of his business. As far as the 'location' of reputation
is
concerned, it must subsist where the misrepresentation complained of
causes actual or potential damage to the drawing power
of the
plaintiff's business. Otherwise the misrepresentation would be made
in the air and be without any consequences."
[14] The
misrepresentation alleged and complained of by the appellant is the
marketing by the respondent of in-line skates by
means of a get-up
in which the word-mark Bladeline is a prominent feature, without
distinguishing it from the appellant's product.
The issue can
therefore be particularised as follows: did the appellant, at the
time when and at the place where the respondent
entered the market,
enjoy a reputation in the word-mark Bladeline in respect of in-line
skates?
The
respondent entered the market during the weekend of 16 - 17 December
1994 when its product, with Bladeline as the name of
its make and
"Retro" and "Magic" as the names of two models,
was offered for sale at Sneaker's Store in Durban.
The relevant
time, for present purposes, is therefore December 1994 and the
relevant place the area of jurisdiction of the Durban
and Coast
Local Division.
The evidence adduced by the
appellant in proof of its reputation consisted of nationwide sales
of its product; national advertising
on TV; promotional material
(in the form of press fliers or brochures containing, inter alia,
pictures and [15] prices of
its Jokari in-line skates, as
distributed by Pick
‘
n
Pay, a national chain of retail stores with branches throughout the
country, including Durban and its surrounds); and finally
some
trade evidence to which I shall return in greater detail later. No
direct customer evidence was tendered.
The
evidence so offered, as was pointed out on behalf of the respondent,
is in the broadest of terms. Moreover, the evidence
of Durban
sales of in-line roller skates (19 pairs with a stated value of
R3 609,05 and 144 pairs with a stated value of
R22 896,00)
can hardly be said to be extensive, having regard to a potential
market of 70 000 to 80 000 pairs
in the country as a
whole. Nevertheless there was, scattered throughout the evidence,
just enough material, I believe, to justify
the conclusion that the
appellant's product must have enjoyed some repute in Durban during
December 1994.
But
what repute, in what capacity, and with whom?
The
appellant was not the manufacturer of its product. At best it was
the [16] importer and distributor thereof in South Africa.
Who the
actual manufacturer of the Taiwanese skates was, does not expressly
appear from the papers. The inference, as stated
earlier, is that
it was Ellen East or someone who manufactured the product on behalf
or at the order of Ellen East.
Since
Ellen East undoubtedly copied the Skateworks' artwork in designing
the package, to the extent of falsely duplicating the
Skateworks'
technical specifications on its package, it is, I think, safe to
assume, in the absence of any contrary explanation
from Ellen East
or Stone, that the name Bladeline was also copied from its
Australian source. Such copying, as counsel for the
appellant was
at pains to point out, was not in itself wrongful; it would only
have been wrongful if APB had earlier acquired
a reputation in the
word-mark Bladeline in Taiwan - which has not been established. If
this inference (that the word Bladeline
was copied from the
Australian product by or at the order of Ellen East) is
correct, Bladeline was in effect a manufacturer's
mark.
[17] Some
confirmation for this assumption appears, firstly, from the Ellen
East invoices of March 12 1993, 20 September 1993
and 23 October
1993 where the product is described by Ellen East as "item #
7013 Bladeline Inline skate - 3 Buckles".
And secondly there
is the evidence of Schneider, quoted earlier in this judgment, which
was to the same effect.
If
Bladeline was a feature devised by or at the instance of Ellen East
by which the product was distinguised as that of the
manufacturer,
then the word Jokari must have been affixed to it at the instance of
Jokari in its capacity as importer and distributor
of the product in
South Africa. Whether this happened before or only after the first
consignment of 312 pairs was imported into
South Africa in March
1993, does not appear to me to be a matter of any moment in this
case. It could have happened either
at the outset or later when
Jokari, having tested the market, resolved to import the product in
greater quantities. (Counsel
for the appellant demonstrated during
argument that the nametag Jokari was not [18] integrated into the
boot but was stuck
onto it by what was described elsewhere in the
papers as a "magic sticker". The photograph of the boot
with the sticker
on it was thereupon incorporated as a feature into
the package which in colouring, design and detail was otherwise
copied from
the Australian product.)
In
my opinion the inference can therefore safely be drawn i) that the
word Bladeline, at least initially, functioned as a manufacturer's
mark and ii) that the word Jokari on the boot and on the package
functioned as the mark of an importer and distributor.
Before
dealing with the legal implications of that inference I propose
briefly to dispose of two other issues that were debated
in this
court.
The
first is whether the word Bladeline was a mere generic term,
descriptive of in-line roller skates as such, in contradistinction
to conventional roller skates. I agree with counsel for the
appellant that it has not been shown that Bladeline, as a word which
either is or has become purely descriptive, was indicative only of a
[19] particular type of article. On the facts of this
case
Bladeline was not in that exclusive sense a generic term but
fulfilled its primary function as the mark of its manufacturer.
The
second issue I propose to mention in passing is whether the
reputation of the appellant, if any, adhering to the mark Bladeline,
was tainted and as such had to be disregarded.
In
Caterham
Car Sales, supra,
par 31, it was said, stating the principle:
"... to the extent that a reputation is founded
upon a conscious falsehood, public policy demands that legal
protection should
be withheld. ... Caterham cannot be permitted to
benefit from its own wrong."
In
an affidavit in support of the respondent's case Lynch, the original
owner of the trade mark in Australia who negotiated the
sale thereof
to Skateworks, stated:
"3. The original artwork and design of the box
referred to in proceedings in this application in South Africa was
created
by
[20] Ms. Jo Shintah, an employee of mine at all
relevant times. The artwork for the box was handed to the supplier
in Taiwan
GOOD-MEN ASSOCIATES INC. for printing on or about 1.5.92.
4. I have carried out investigations and have come to
the conclusion that the artwork was blatantly cribbed, without my
permission
or authority, by the printer in Taiwan who printed the
artwork for GOOD-MEN ASSOCIATES INC. and in the process gave it to
ELLEN
EAST COMPANY LIMITED also without my permission or authority."
That Ellen East exploited the
information so passed on to it and that the appellant in turn
capitalised on that exploitation,
may well be so. The Taiwanese
skates, it is true, were not an exact replica of the Australian ones
but the box in which it was
packaged was. When it was pointed out to
the appellant in December 1993 by the respondent's attorneys that
its package contained
false information, a sticker was immediately
placed over the offending specifications on the box and the box
itself was afterwards
completely redesigned in May 1994. The manner
in which the mark Bladeline appeared on the wheels was likewise
altered so as
not [21] to resemble so closely the style of its
Australian counterpart. While all of this may well have constituted
an admission
by conduct that the get-up of the Taiwanese product
contained matter to which the respondent was legitimately entitled
to object,
the objectionable material was promptly and properly
removed. On the facts of this case there is accordingly
insufficient reason
to deny the appellant a reputation on the
strength of the
dictum
in the
Caterham
case quoted above.
To
return to the earlier point, the case must therefore be approached
on the footing that Bladeline represented the mark of the
manufacturer, to which the word Jokari was added at the instance of
the appellant in its capacity as the importer and distributor
of the
product in South Africa.
An importer or distributor of the
goods of a manufacturer who acts as a mere conduit between the
manufacturer and the end user
of the product, will as a rule find it
hard to maintain proceedings for passing-off in his own name. But
this [22] is not
such a case. The appellant
qua
importer/distributor was not simply an inactive link in the chain of
distribution. It caused to be imprinted on the product
its own
imprimatur
or stamp of identity, selection and approval. Cases cited in
argument, such as
Hirsch
v Jonas
(1876) 3
ChD 584
,
Dental
Manufacturing Company Ltd v C De Trey & Company
[1912]
3 KB 76
(CA),
Imperial
Tobacco Company of India Ltd v Bonnon and Others
[1924] AC 755
(PC) and
Rusmarc
(SA) (Pty) Ltd
v
Hemdon Enterprises
(Pty) Ltd
1975 (4) SA 626
(W), are accordingly not directly in point.
But
of course on that approach the appellant's distinguishing symbol is
Jokari, not Bladeline. Any reputation it acquires as
importer/distributor would therefore adhere not to the word
Bladeline but to the word Jokari. The adding of the word Jokari
accordingly does not assist the appellant in establishing a
reputation in the word-mark Bladeline.
This
conclusion, that the appellant, at best for it, acquired a
reputation in the [23] word Jokari rather than Bladeline, is
fortified by the appellant's own trade evidence.
That evidence consisted of an
affidavit from Baker, a houseware buyer at the Pick
‘
n
Pay Hypermarket by the Sea in Durban North; Armstrong, a houseware
buyer at the Pick ‘n Pay Hypermarket in Boksburg;
Taylor, who
describes his position as that of "a merchandiser in
Totalsports (Pty) Limited" of Cape Town and Perrik
the managing
director of Sports ‘n Leisure, a retailer in Durban.
These
affidavits were rightly criticised on behalf of the respondent as
being suspiciously alike. I shall confine myself, for
present
purposes, to the affidavits of Baker and Perrik who are the only
ones commenting on the situation in Durban. Baker
refers to the
"Jokari brand" as one of the market leaders in the field
of mass distributed sports equipment and as
one of the country's
major suppliers of roller skates (as opposed to in-line roller
blades).
[24] In
par 5 of his affidavit he states:
"The JOKARI "In-line" rollerskates were
marketed under three model names, these being JOKARI BLADELINES,
JOKARI
RADICALS and JOKARI PRO LINE ..."
Paragraph
12 reads as follows:
"As a result of the promotional campaigns
conducted by both the Applicant and Pick ‘n Pay for the
JOKARI BLADELINE
"In-LINE" rollerskates they have acquired
a substantial reputation and goodwill in the market place and are
asked for
by name."
This
paragraph must be contrasted with paragraph 14:
"Both JOKARI BLADELINES and JOKARI RADICALS are
asked for by the name BLADELINE or RADICALS respectively and it is
clear
to me that JOKARI BLADELINE is an established brand and has
been established since mid 1993."
Apart
from the contradiction (as to whether customers ask for Jokari
Bladelines or simply for Bladelines), it is plain that in
South
Africa the dominant mark is Jokari and not Bladeline. This is
also apparent from the affidavit of Perrik, who in
paragraph 6
refers to the product which was:
[25] "branded with the Jokari
trade mark
on the body of the boot and the BLADELINE and PRO-LINE
models
were labelled on the wheels of the roller skates" (my
emphasis).
In
paragraph 8 of his affidavit he contrasts the "house mark
JOKARI" and the "model marks BLADELINE and PRO-LINE"
and in paragraph 10 he refers to Jokari as the house mark and to the
other two as "subsidiary trade marks for the two models
of
roller skates." Paragraph 11 reads:
"To my knowledge Jokari is the dominant supplier
of all types of roller skates, and it has held this position since I
commenced
trading in this field. The trade mark JOKARI is
exceptionally well known and I estimate that it supplies up top 60%
of the roller
skate market."
These
affidavits strongly suggest that in South Africa Jokari is regarded
as the name of the make and Bladeline and Pro-Line
as the names of
particular Jokari models.
Notionally
there is nothing unacceptable in the proposition that a model name
may acquire a reputation separate and distinct
from that of the
make, but in [26] my view the conflicting evidence adduced by the
appellant in this case falls short of establishing
such a separate
reputation in Durban. The reputation, if any, is one acquired for
Jokari rather than Bladeline.
To overcome this difficulty in its
case (that the reputation adhered in Jokari rather than in
Bladeline), the appellant in its
replying affidavit sought to
demonstrate that the reputation was not in Jokari or in Bladeline as
such but rather in the juxtaposition
of the two word-marks;
consequently that the exploitation by another party of either of
the two component parts, in this case
Bladeline, would
ipso
jure
infringe on
the conjoined mark.
According
to the appellant the skates were promoted and marketed with the
"general" mark Jokari endorsed on the outside
of the heel
used in conjunction with the "specific" mark Bladeline on
the wheels. Because the specific mark is always
used in conjunction
with the general mark each indicates, so it was submitted, the
"source and provenance of the goods in
the First Appellant".
It is stated thus in [27] the replying affidavit:
" .... the conjunctive use of these two marks
denotes and identifies the actual BLADELINE roller skate as a JOKARI
product,
and as emanating from and being connected in the course of
trade with the proprietor of the Jokari Trade mark."
The
notion of a conjoined or composite mark may be perfectly feasible as
a proposition of law; in this case, as a proposition
of fact, it
fails. The two marks simply did not function in that fashion.
Nowhere, on the boot or on the package, do they
appear in the form
"Jokari-Bladeline". On the boot itself Jokari is affixed
on the heel and Bladeline is printed on
the wheels. Merely as a
matter of physical appearance the two words consequently are not
linked or articulated. On the package,
in its redesigned form,
Bladeline appears on the box, with the letters B, E and E in bright
and the remaining letters in subdued
colours, removed from a
separate insert on which the words "Jokari: World of
Sport" appear in much smaller print.
[28] In
the first appellant's correspondence, likewise, Jokari and Bladeline
are never used in tandem; in fact, in the appellant's
attorney's
first letter of 14 December 1993 only the word Bladeline or
Blade-line is used, and Jokari is not mentioned at all.
So too in
the affidavits of the appellant's witnesses, as stated earlier,
there is no reference to Jokari-Bladeline in composite
form.
Schneider in particular talks only of Bladeline. Baker, as stated
earlier, distinguishes between Jokari Bladeline, Jokari
Radical and
Jokari Pro-Line in the sense that Jokari is the make and the others
are descriptions of various models; as such
Bladeline is simply,
as he put it, "a Jokari product". Perrik also
distinguishes between the house mark, Jokari, and
the model marks,
Bladeline and Radical. Baker's bald assertions that Jokari
Bladeline acquired a substantial reputation and
goodwill in the
market place, that the product is asked for by that name and that
Jokari Bladeline is "an established brand",
must therefore
be open to considerable doubt.
That
assertion has not been confirmed by any other evidence and, contrary
[29] to what one would have expected, the aforementioned
doubt has
not been removed by evidence, in particular, from representative
members of the buying public as to how the product
was in fact
viewed in the market place. Reputation, after all, is the
collective opinion held by a particular section of the
community
about something or somebody. The relevant opinion, for present
purposes, is that of customers or potential customers
of in-line
skates. Evidence, in this case, of the reputation Bladeline
enjoyed in the market-place with customers and potential
customers
is conspicuously lacking.
In
my opinion the evidence tendered on behalf of the appellant
accordingly falls short of proving the requisite reputation for
either Bladeline or Jokari-Bladeline (as opposed to Jokari) in
Durban during December 1994.
That
conclusion effectively disposes of the appeal. If the appellant
failed to prove the requisite reputation there could
have been no
misrepresentation and hence no passing-off.
Consequently
it is not speaking necessary to say anything about the further
aspect mentioned earlier, namely, whether the get-up
of the product
introduced into the South African market by the respondent, which
included the word-mark Bladeline, was and would
be confusingly
similar (in the eyes of a substantial number of ordinary members of
that segment of the public disposed to purchase
this kind of
article) to the get-up of the product previously introduced into the
country by the appellant. I propose, nevertheless,
in one
paragraph, to do so all the same.
In
respect of the appellant's article the word Jokari is that of the
make and Bladeline that of the model; in respect of the
respondent's article Bladeline is the make and Retro or Magic is the
model. The common factor is the word Bladeline. In the
one case it
fulfils a secondary or subsidiary function and in the other a
primary or dominant one. The retailers to whom
the respective
products are supplied would themselves of course not be
confused. But that, I accept for [31] present
purposes, is not
the test. The enquiry must be directed at the potential end
customers. Judging by the promotional material
adduced by the
appellant in support of its case, the end customers would most
likely be teenagers or their parents. Teenagers,
when it comes to
this sort of product, are notoriously discerning and discriminating
purchasers and their parents, if uninformed,
would, one imagines,
take advice from shop assistants who themselves would be alive to
the differences between the two products.
Having regard to its
price range this is not the type of product which would inspire
buying on impulse. Finally, and purely
as a matter of appearance,
the differences in get-up between the two products after the
redesign of the appellant's package in
May 1994, so far outweigh the
similarity of the one common feature, the word Bladeline, that the
realistic likelihood of deception
in my opinion is slim.
The
appellants have accordingly also not established the further
requirement for the interdict which they sought.
[32] For
the above reasons the appeal should in my view be dismissed.
The
following order is made: the appeal is dismissed with costs, such
costs to be paid jointly and severally by the first and
second
appellants, and to include the costs occasioned by the employment of
two counsel.
.............................
P
M NIENABER
JUDGE OF APPEAL
Concur
:
Hefer JA
Schutz JA
Plewman JA
Farlam AJA