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[2011] ZAWCHC 35
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Sea Harvest Corporation (Pty) Ltd vs Irvin & Johnson Ltd and Another (2966/2010) [2011] ZAWCHC 35; 2011 BIP 386 (WCC) (17 March 2011)
IN
THE HIGH COURT OF SOUTH AFRICA
(WESTERN
CAPE HIGH COURT, CAPE TOWN)
Case
No 2966/10
In
the matter between:
SEA
HARVEST CORPORATION
(PTY)
LIMITED
…........................................................................................
Applicant
and
IRVIN
& JOHNSON LIMITED
….....................................................
First
Respondent
JUNO
FINANCE COMPANY LIMITED
….................................
Second
Respondent
Court:
CLOETE,
AJ
Heard:
4
March 2011
Delivered:
17
March 2011
ADV.
FOR APPLICANT:
Adv
D R Harms
INSTRUCTED
BY:
Cliffe
Dekker Hofmeyr Inc (Eben van Wyk)
ADV.
FOR RESPONDENT:
Adv
C M Eloff, SC
INSTRUCTED
BY:
Adams
& Adams (Suzaan Laing)
IN
THE HIGH COURT OF SOUTH AFRICA
(WESTERN
CAPE HIGH COURT, CAPE TOWN)
Case
No: 2966/2010
In
the matter between:
SEA
HARVEST CORPORATION
(PTY) LIMITED
…....................................................................
Applicant
and
IRVIN & JOHNSON
LIMITED
…...........................
First
Respondent
JUNO
FINANCE COMPANY LIMITED
…...
Second
Respondent
Court:
CLOETE,
AJ
Heard:
4
March 2011
Delivered:
17
March 2011
JUDGMENT
CLOETE
AJ:
INTRODUCTION
[1]
This is an urgent application in which the applicant claims that the
first respondent is unlawfully passing-off one of its range
of
products as being that of the applicant's.
[2]
The applicant and first respondent are both Cape Town based companies
which compete in the frozen and added-value (i.e. prepared
fish)
industry. The second respondent is a Mauritian company which owns a
number of registered trade marks in South Africa which
it licences to
the first respondent.
[3]
The applicant seeks an order that the first respondent be interdicted
and restrained from (a) unlawfully competing with the
applicant by
passing-off its
Oven
Crunch
product
as being that of, or associated with, the applicant's
Oven
Crisp
product;
or (b) using any get-up which is confusingly or deceptively similar
to the applicant's
Oven
Crisp
get-up;
and (c) costs. Both respondents oppose the application.
THE
FACTS
[4]
The material facts which are common cause or which are not seriously
disputed by the respondents are the following.
[5]
The applicant and first respondent have been direct competitors in
the fish industry for at least the past 20 years. Both produce
a
variety of fish products which are separated into different product
ranges, each with its own style of packaging to distinguish
one range
from the other.
[6]
The packagings of the competing products have historically always
been distinguishable from each other through differences in
font,
weight, colour and the like. Products falling into a specific range
of one competitor are generally packaged in a similar
fashion so as
to allow a consumer to classify the product by sight, not only as
part of a specific range, but also to distinguish
the products from
that of the competitor.
[7]
The second respondent is the applicant for registration of trademark
number 2010/25859-60 l&J OVEN CRUNCH in classes 29
and 30. These
trademark applications were filed in November 2010 and are still
pending. The applicant will oppose these trademark
applications if
and when accepted by the registrar of trade marks.
[8]
The applicant is, according to AC Nielsen figures, the market leader
in the South African frozen fish market with an approximately
46%
market share in this category. First respondent has an approximately
44% market share in the same category.
[9]
The applicant's
Oven
Crisp
product
range has always competed with the first respondent's
Light
& Crispy
product
range in the coated segment of the frozen fish ("added-value"
fish) market in South Africa.
[10]
The applicant's
Oven
Crisp
and
the first respondent's
Light
& Crispy
product
ranges have been competing head to head for approximately 20 years in
South Africa.
[11]
The applicant has used the mark
Oven
Crisp
continuously
for approximately 20 years in relation to its crumbed fish fillet
product in South Africa. The applicant uses the name
as a trade mark;
although the respondents contend that the trade mark that the
applicant has used (and still uses) is the mark
SEA
HARVEST
OVEN
CRISP. (My emphasis.)
[12]
The sales figures of
Oven
Crisp
products
in South Africa are significant. Approximately 950 000kg (950 tons)
of
Oven
Crisp
products
(equating to 2 375 000 boxes of the product) to the value of at least
R51 million are sold annually in South Africa.
[13]
The total direct advertising, marketing and promotion costs in
respect of the
Oven
Crisp
mark
and get-up in South Africa are also significant
[14]
The first respondent's
Oven
Crunch
product
was launched in direct competition to the applicant's
Oven
Crisp
product
during the second week of February 2011 (although there is a minor
dispute about the exact date). The applicant directed
a "cease
and desist'
1
letter
to the first respondent (through its attorneys) as soon as it became
aware of the launching of the first respondent's new
product. The
first respondent refused to comply with the applicant's demands,
resulting in the present application.
ISSUES
TO DETERMINED
[15]
The first issue which I am called upon to determine is whether the
get-up of the first respondent's
Oven
Crunch
product
is such that there is a reasonable likelihood that members of the
public may be confused into believing that this product
of the first
respondent is, or is connected with, the
Oven
Crisp
product
of the applicant.
[16]
The second issue relates to the second leg of the relief sought by
the applicant, namely whether it is entitled to an interdict
against
the first respondent from using any get-up which is confusingly or
deceptively similar to the applicants
Oven
Crisp
get-up
and trademark. The respondents argue that this portion of the relief
sought by the applicant is not determinative of any
question or issue
and is likely, were it to be granted in those terms, to result in
further litigation between the parties. The
respondents submit that a
prohibitory interdict must be in a form that is reasonably precise,
so that a respondent can know what
it is prohibited from doing under
threat of criminal sanction. An order which is vague would in turn
result in a criminal prohibition
which is vague and indeterminate
and, moreover, would lead to further conflict with regard to its
interpretation.
THE
LEGAL POSITION
[17]
During the course of argument the parties were
ad
idem
that
the interdictory relief sought by the applicant is final in nature.
The applicant argued that the
Pfascon-Evans
rule
(Plascon-Evans
Paints Limited v Van Riebeeck Paints (Pty) Limited
1984
(3) 620 (AD) at 634E-635C) does not apply as there are no material
disputes of fact on the papers before me. The applicant
submits that
the only "disputes of fact" relate to the respondents'
insistence that first respondent is not unlawfully
passing-off the
applicant's
Oven
Crisp
product.
[18]
The respondents on the other hand argue that the
Plascon-Evans
rule
must apply, namely that where there is a dispute as to the facts
(which the respondents submit is indeed the case in the instant
matter) a final interdict should only be granted in motion
proceedings if the facts as stated by the respondents together with
the admitted facts in the applicant's affidavits justify such an
order: see
BHT
Water Treatment (Pty) Limited v Leslie and Another
1993
(1) SA 47
(W) at 55A-D.
[19]
In my view, the applicant is correct. The disputes of fact really do
only relate to whether or not the first respondent is
passing-off the
applicant's product. As will be seen from what follows hereunder,
this is an issue which the
court
is
called upon to decide, and not one to be determined by reference to
the respondents' version (together with the facts admitted
by the
applicant) as set out in the respondents' papers.
[20]
Passing-off interdicts protect the goodwill or reputation of a
trader's business, merchandise or services against a false
representation by a competitor that the business, merchandise or
services of the competitor are that of. or associated with, the
applicant. They also provide protection against deception as to trade
source or trade connection. In
Premier
Trading Co (Pty) Ltd and Another v Sporttopia (Pty) Ltd
2000
(3) SA 259
(SCA) at 266H-I the court put it thus:
Passing-off
is a wrong consisting of a false representation made by one trader
(the defendant) to members of the purchasing public
that the
enterpnse, goods or services of a rival trader (the plaintiff) either
belong to him (the defendant) or are connected,
in the course of
trade, with his own enterprise, goods or services. (I shall
abbreviate, for the sake of convenient '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.'
[21]
Accordingly, the test whether a false representation amounts to
passing-off is whether there is a reasonable likelihood that
substantial members of the public may be confused into believing that
the business or product of one trader is, or is connected
with, that
of another.
[22]
The representation must be both false and unauthorised The typical
case of passing-off is when the competitor uses, adopts
or imitates
the trade name or get-up of the others business, goods or services.
The trade name, trade mark, get-up or service mark
must be known in
the market and the applicant's goods, business or services must have
acquired a public reputation or have become
distinctive from other
similar goods, businesses or services. As stated by the court in
Die
Bergkelder v Delheim Wines (Pty) Ltd
1980
(3) SA 1171
(CPD) at 1179H-1180A:
in
passing-off matters based on the use of a given get-up as in the
present case, it is essential for the success of such a claim
to show
that the disputed get-up has become by user distinctive of applicants
goods, so that the use in relation to any goods of
the kind dealt
with by applicant of that get-up will be understood by the trade and
public as meaning that the goods are applicant's
goods.'
[23]
Whether in any particular case there has or has not been passing- off
is in substance a question of fact, and therefore each
case must be
decided on its own particular facts In every case the court will
enquire whether the competitor has sufficiently distinguished
his
goods by the get-up of such goods, so that an ordinary reasonably
observant purchaser can see that there is sufficient distinction
between the goods of the rival traders: see
Policansky
Bros. Limited v L&H Policansky
1934
(AD) 89 at 104.
[24]
Whilst each case must be decided on its own facts
"there
are undoubtedly cases where the manner and scale of use of the symbol
in question can in itself be sufficient to warrant
the conclusion
that it must have become recognised by a substantial section of the
relevant public as distinctive of the plaintiffs
goods, services or
business. That conclusion has been drawn from such evidence in a
number of cases":
see
Cambridge
Plan AG and Another v Moore and Others
1987
(4) SA 821
(D & CLD) at 837D.
[25]
The competitor's get-up or trade name must be calculated or likely to
deceive or confuse the ordinary customer and thus cause
confusion and
damage to the goodwill of the other's business by. for example,
diverting customers from the latter's business or
product to that of
the former However, an applicant need not show that the respondent
intended to deceive. In
Reckitt
& Colman SA (Pty) LtdvSC Johnson & Son SA (Pty) Ltd
1993
(2) SA 307
(AD) at 315 C, the court in dealing with what is meant by
"calculated
to deceive'
1
stated
that this means
"that
there was a reasonable likelihood that members of the public would be
so deceived by the representation".
[26]
Proof of a common field of activity is a factor which the court may
take into account when considering whether the respondent's
conduct
is likely to lead to confusion between the parties' goods or
businesses. However, it is not an overriding factor since
whether
there is a reasonable likelihood of confusion arising is a question
of fact which will have to be determined in the light
of the
circumstances of each case.
"If
the evidence establishes that there is a reasonable likelihood of
such confusion arising even if the parties concerned
cannot be said
to be carrying on their activities in a common field, it is difficult
to see how the absence of such a common field
can nevertheless
constitute a ground for denying relief to an aggrieved party:'
See
Capital
Estate and General Agencies (Pty) Ltd v Holiday Inns Inc and Others
1977
(2) SA916 (AD) at 929E.
[27]
As to whether there is a reasonable likelihood that members of the
public may be confused into believing that the business
or product of
one trader is, or is connected with, that of another, the court in
Blue
Lion Manufacturing (Pty) Ltd v National Brands Ltd
2001
(3) SA 884
(SCA) at 887D-G set out the principles succinctly as
follows:
'When
one is concerned with alleged passing-off by imitation of get-up, as
is the case in the matter before us, one postulates neither
the very
careful nor the very careless buyer, but an average purchaser, who
has a general idea in his mind's eye of what he means
to get but not
an exact and accurate representation of it. Nor will he necessarily
have the advantage of seeing the two products
side by side. Nor will
he be alerted to single out fine points of distinction or definition.
Nor even, as pointed out by Greenberg
J (from whom I have been
quoting) in
Crossfield
& Son Ltd v Crystallizer Ltd
1925
WLD 216
at 220. will he have had the benefit of counsel's opinion
before going out to buy. Nor will he necessarily be able to read
simple
words, as there are distressingly many people in South Africa
who are illiterate.
However,
the law of passing off is not designed to grant monopolies in
successful get-ups. A certain measure of copying is permissible.
But
the moment a party copies he is in danger and he escapes liability
only if he makes it 'perfectly clear' to the public that
the articles
which he is selling are not the other manufacturer's, but his own
articles, so that there is no probability of any
ordinary purchaser
being deceived:
Pasquali
at
479.
Crossflied
at
221 and
Adcock-fngram
Products Ltd v Beecham SA (Pty) Ltd
1977
(4) SA 434
(W) at 437F-438A.'
[28]
In considering whether there is an imitation of a distinctive get-up,
7f
should
be remembered that the likelihood of confusion or deception is a
matter for the Court and that the judgment of the Court
must not be
surrendered to any witness";
see
the
Reckitt
& Coleman
case
at 315D. The court must
"notionally
transport (itself) to the marketplace ... and consider whether the
average customer is likely to be deceived or
confused.
":
see the
Plascon-Evans
Paints Ltd
case
at 642E.
[29]
Thus, as stated by the court in the
Blue
Lion Manufacturing (Pty) Ltd
case
at 886G-I:
'A
record of 720 pages and heads of argument totalling 57 pages have
been placed before us in order to allow us to decide whether
the
wrapping of its coconut biscuits used by one manufacturer passes
itself off as the wrapping of another manufacturer of similar
biscuits. I acknowledge, of course, that an applicant in a
passing-off case must prove his reputation and that that may require
a considerable body of evidence that it behoves him to prove
instances of actual deception or confusion if such evidence may be
found (one instance was raised in this case), and that the applicant
sought to prove fraudulent intent, as it was entitled to do
But
for the rest the case was essentially one of first impression of the
two wrappers
'
(My emphasis.)
[30]
The doctrine of imperfect recollection is also relevant to a
determination of passing-off. This doctrine refers to the rule
that
when a registrar of trademarks or a court compares trade marks to
decide whether there exists a likelihood of confusion or
deception,
it must not only consider the marks when placed side by side but must
also consider the position of a person who may
at one time see or
hear one of the marks and later, possibly with an imperfect
recollection of that mark, come across the other
mark: see
Law
of South Africa -
Volume
29 - Second Edition Volume - Trade marks - para 127 and the
authorities referred to therein.
[31]
In
Re:
Rykstra Ltd's Application
(1943)
60 RPC 97
108 line 39 the court stated the following:
'It
is the person who only knows the one word, and has perhaps an
imperfect recollection of it, who is likely to be deceived or
confused. Little assistance therefore is to be gained from a
meticulous comparison of the two words, letter by letter and syllable
by syllable pronounced with the clarity to be expected from a teacher
of elocution The court must be careful to make allowance
for
imperfect recollection and the effect of careless pronunciation and
speech on the part not only of the person seeking to buy
under the
trade description but also of the shop assistant ministering to the
person's wants/ (As quoted in Webster
South
African Law of Trade Marks
at
7.7. referring to the case of
De
Cordova v Vick Chemical Co
1951
68 RPC 103
at 106.)
[32]
The test is described by the learned author in
South
African Law of Trade Marks
as
whether it is likely that a person who has seen or knows one of the
marks, will, by reason of the general impression made upon
his mind,
think, when he sees the other, that they are or may be the same. (It
should be noted however that this doctrine was dispensed
with in
relation to design law - which is not applicable in the instant
matter - in
Clipsal
Australia (Pty) Ltd v Trust Electrical Wholesalers
2009
(3) SA 292
(SCA).
[33]
It should also be noted that the effect of imperfect recollection
must also be taken into account when comparing trade marks:
see
Adidas
Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd
1976
(1) SA 530
(T) at536B.
[34]
The doctrine of imperfect recollection is embodied in the
Plascon-Evans
Paints v Van Riebeeck Paints Ltd
case
at 640 G - 641 E as follows:
'In
the infringement action the onus is on the plaintiff to show the
probability or likelihood of deception or confusion. It is
not
incumbent upon the plaintiff to show that every person interested or
concerned {usually as customer) in the class of goods
for which his
trade mark has been registered would probably be deceived or
confused. It is sufficient if the probabilities establish
that a
substantial number of such persons will be deceived or confused. The
concept of deception or confusion is not limited to
inducing in the
minds of interested persons the erroneous belief or impression that
the goods in relation to which the defendant's
mark is used are the
goods of the proprietor of the registered mark ; ie the plaintiff, or
that there is a material connection
between the defendant's goods and
the proprietor of the registered mark : it is enough for the
plaintiff to show that a substantial
number of persons will probably
be confused as to the origin of the goods or the existence or
non-existence of such connection.
The determination of these
questions involves essentially a comparison between the mark used by
the defendant and the registered
mark and, having regard to the
similarities and differences in the two marks , an assessment of the
impact which the defendant's
mark 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
consideration must be given to the manner in which the marks are
likely to be employed as. for example, the use of the
name marks in
conjunction with a generic description of the goods
.'
(My emphasis.)
EVALUATION
[35]
At the outset it should be mentioned that the applicant was
criticized by the respondents for not placing any direct evidence
before me that members of the public have actually been confused or
deceived, since (so it was argued) this would have carried
far more
weight for the applicant. No doubt this would have been optimal for
the applicant; however the fact of the matter is that
the applicant
approached court on an urgent basis in order to attempt to prevent
the very harm which such direct evidence would
have confirmed. In the
circumstances I do not think that the absence of such direct evidence
should count against the applicant.
[36]
In my view, the respondents have not placed any real dispute of fact
before this court to show that the manner and scale of
use of the
applicant's mark and get-up of its
Oven
Crisp
product
has not become recognised by a substantial section of the public as
being distinctively that of the applicant's, and the
applicant's
version must be accepted. As stated by the court in
South
Peninsula Municipality v Evans and Others
2001
(1) SA 271
(C) at 283G-H:
'...South
African Courts have recognised that, in motion proceedings, disputes
of fact cannot necessarily be accepted at face value
and that, in
each case, the Court should closely scrutinise the alleged issues of
fact in order to decide whether there is indeed
a dispute of fact
that cannot satisfactorily be determined without the aid of oral
evidence ... Thus, while the Court should be
circumspect in its
approach,
"(i)f,
on the papers before the Court, the probabilities overwhelmingly
favour a
specific
factual finding, the Court should take a robust approach and make
that
finding'".
[37]
It is also clear that the first respondent's
Oven
Crunch
product
has not been authorised by the applicant. This much is common cause.
So too is the fact that both applicant and first respondent
are
direct competitors in the same (frozen and "added-value"
fish) industry, and have been direct competitors for at
least the
past 20 years.
[38]
There is thus only one dispute on the papers that this court,
transporting itself into the marketplace as the notional consumer,
needs to decide, and that is whether the mark and get-up of the first
respondent's
Oven
Crunch
product
amounts to a passing-off (or. simply put, a false representation) of
the applicant's
Oven
Crisp
mark
and get-up.
[39]
In order to place this issue in its proper perspective, it is helpful
to have regard to the product ranges of the applicant
and first
respondent which have historically competed head to head in the
marketplace. For ease of reference, photographs of these
are
reproduced hereunder (although the reproduced photographs are
reflected in black and white print, they are reproduced in colour
in
the electronic version of this judgment);
confusing
members of the public into believing that a product of the one is, or
is connected with, that of the other.
[41]
The parties are in agreement that the amount of time which a
consumers eye will spend on specific packaging elements is measured
in a matter of seconds. Respondents' counsel argued that whilst this
is so, "a matter of seconds" is a relative concept
and
cannot be defined as being a specific number of seconds However he
conceded that it is nonetheless a matter of
seconds
and
not minutes. In short therefore, a consumer will spend a very short
period of time looking at
specific
packaging
elements, which of course makes sense.
[42]
In my view this must be even more so when considering the purchase of
an average, generally available commodity such as packaged
frozen or
added-value fish. Further, one must have regard to the doctrine of
imperfect recollection in assessing the memory of
the average
consumer purchasing an average, generally available commodity.
[43]
Bearing these factors in mind it is necessary to compare the get-ups
of the applicant's Oven
Chsp
and
the first respondent's
Oven
Cmnch
products,
photographs of which are also reproduced for ease of reference
hereunder:
[44]
Having regard to these two get-ups, my view is best expressed in the
words of the court in the
Blue
Lion Manufacturing (Pty) Ltd
case
at 889D-E. namely that
"when
one has regard to the whole get-up. including the colours, the
arrangements of matter and the letters, there is an immediate
and
striking similarity between the rival packaging."
[45]
Respondents' counsel (understandably) sought to persuade me that the
distinctly different logos of the applicant and first
respondent is
the first difference that a consumer will recognise. That may be so
for high end products, but for frozen or add-value
fish, a generally
available, run of the mill commodity? I do not think so And what
concerns me greatly is the difficulty which
I myself had in
remembering which product was that of which competitor. Both have
dark blue boxes of similar size. Both have yellowish
writing with a
similar font at the top of each box. Both are called
Oven
"something"
and whether the three pieces of similarly shaped fish appear on the
left or right hand side of the box. and
one has a piece of parsley
displayed whilst the other has two lemon wedges displayed, to my mind
really does not matter
[46]
I can easily imagine a conversation between two average consumers
along the following lines. A tells B about the tasty frozen
fish her
family had for dinner the evening before. B asks A what type it was.
A tells B that she cannot remember exactly, but it
was crumbed, came
in a dark blue box with yellow writing at the top and was either
Oven
Crisp
or
Oven
Crunch. B.
on
her next trip to the supermarket, will simply not be able to
distinguish which packaged fish had been purchased by A, irrespective
of whether the boxes are displayed side by side or separately. To my
mind, this is a far cry from a comparison of any of the other
competing product ranges of the applicant and first respondent, as a
glance for a matter of seconds at those products will show.
[47]
In my view there is no doubt that the first respondent's get-up and
mark of its
Oven
Crunch
product
is deceptively similar to that of the applicant's
Oven
Crisp
product,
and there is thus a reasonable likelihood that members of the public
may be confused into thinking that the
Oven
Crunch
product
of the first respondent is that of the applicant's This will clearly
impact negatively on the applicant's goodwill, if not
its reputation.
[48]
Accordingly, the applicant must succeed in the main relief.
THE
SECONDARY RELIEF SOUGHT BY THE APPLICANT
[49]
The second issue which I am called upon to decide is whether the
scope of the relief sought by the applicant is appropriate,
namely
whether, in addition to being interdicted and restrained from
unlawfully competing with the applicant by passing-off its
Oven
Crunch
product
as being that of, or associated with, the applicant, the first
respondent should further be interdicted and restrained from
using
any get-up which is confusingly or deceptively similar to the
applicant's
Oven
Crisp
get-up
and trademark (it should be mentioned that it was not disputed by the
respondents in argument that an applicant is entitled
to rely on a
common law trade mark in matters of this nature).
[50]
Firstly, a perusal of the various decided cases indicates that the
secondary relief sought by the applicant is common practice.
Indeed,
in the case of
Weber-Stephen
Products Co v Alrite Engineering (Pty) Ltd and Others
[1992] ZASCA 2
;
1992
(2) SA 489
(AD) at 493B-D the appellate division (as it then was) in
referring to the proceedings on appeal to the full court, stated the
following:
'On
23 March 1989 the Full Court dismissed the appeal. I shall henceforth
refer to its judgment simply as the judgment of the Full
Court. The
Full Court did slightly amend the order granted by Van Zyl J. but
this was done only for the sake of clarity. Nothing
turns on this
amendment. The order, as amended, reads as follows:
J
The
respondent, its servants and agents, are interdicted from passing off
as a "Weber One Touch Barbecue Grill", by sale,
distribution or any other means.
its
kettle type barbecue grill known as the "Mirage" or any
other grill
which
embodies a get-up confusingly or deceptively similar to
the
"Weber One Touch Barbecue Grill" without clearly
distinguishing it from the "Weber One Touch Barbecue Grill"
of the applicant."' (My emphasis.)
[51]
Secondly, and as is apparent from the papers before me, the
respondents themselves had no difficulty as recently as 1 February
2011 in demanding precisely the same scope of relief from the
applicant in respect of an unrelated passing-off dispute. The demand
by the respondents (through their attorneys) reads as follows;
'14.
Our clients have instructed us to demand, as we hereby do, that you
immediate
ly
14.1
Cease all and any use of the mark FISH BAKES and your Sea Harvest
FISH BAKES label
(Annexure
"B").
or
labels or marks confusingly or deceptively similar
to
our clients' l&J FISH BAKES label
(Annexure
"A"),
and
confirm this to us in writing;
14.2.
Undertake, in writing, never to use the get-up as set out in
Annexure
"B"
in
relation to any of your products, and. in addition,
undertake
never to use a label in relation to any of your products which is
confusingly similar
to
our clients' l&J FISH BAKES label, as set out in
Annexure
"A";'
(My
emphasis.)
[52]
Accordingly, I do not believe that the scope of the relief sought by
the applicant is inappropriate, and it thus succeeds in
this relief
as well.
COSTS
[53]
As the applicant has been successful in the relief sought by it, it
follows that the respondents should bear the costs of this
application.
[54]
In
the result, I make the following order:
(1)
The first respondent is interdicted and restrained from unlawfully
competing with the applicant by passing-off its
Oven
Crunch
product
as being that of, or associated with, the applicant or using any
get-up which is confusingly or deceptively similar to the
applicant's
Oven
Crisp
get-up
and trade mark;
(2)
The first and second respondents shall effect payment of the
applicant's costs on a scale as between party and party, jointly
and
severally, the one paying, the other to be absolved.
J I CLOETE