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[2013] ZAWCHC 191
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Jordan Winery (Pty) Ltd and Another v Pritchard (11031/12) [2013] ZAWCHC 191; 2013 BIP 476 (WCC) (19 December 2013)
IN THE HIGH COURT OF SOUTH AFRICA
(WESTERN CAPE DIVISION, CAPE TOWN)
REPORTABLE
CASE NO: 11031/12
In the matter between:
JORDAN WINERY (PTY)
LTD
.........................................................................
First
Applicant
THE GARY JORDAN
TRUST
........................................................................
Second
Applicant
Represented by the following trustees
for the time being,
GARY JORDAN N.O.
KATHRYN JORDAN N.O.
GRAHAM KEITH BROWN N.O.
and
SEYMOUR AURET
PRITCHARD
.........................................................................
Respondent
JUDGMENT: THURSDAY 19 DECEMBER
2013
GAMBLE, J:
INTRODUCTION
[1] The female name
Sophia
is
derived from the Greek word for wisdom and along with its European
counterpart
Sofia
has often been used to represent the
personification of that human attribute. It is also said to be the
name given to an early martyr
in Christendom whose daughters were
named Faith, Hope and Charity
[1]
.
In this application
Sophia
is the name which two prominent
winemakers from the Stellenbosch district have bestowed upon their
most revered of blended red
wines.
[2] The First Applicant, Jordan Winery
(Pty) Ltd (“Jordan”) owns a family wine farm near
Stellenbosch and has since
2003 produced and marketed what it claims
to be a Bordeaux style red wine under the name
Sophia
. I say
“
claims
” because, as I understand it, a classic
Bordeaux blend usually comprises a predominance of cabernet sauvignon
and merlot
grapes with which is blended, in smaller quantities,
cabernet franc, petit verdot and malbec
[2]
.
It is said (in the same source) that the premium Bordeaux blends from
some of the most famous vineyards in that region of France
contain a
high percentage of cabernet sauvignon (70%) and equal amounts of
merlot (15%) and cabernet franc (15% grapes). Jordan’s
Sophia
has, over the years, consisted of mainly cabernet sauvignon and
merlot grapes with what it terms an occasional “
touch
”
of cabernet franc. Be that all as it may, the Applicant’s red
wine is regarded as a premium priced wine and currently
sells at
about R350.00 per bottle.
[3] The Respondent, Mr. Seymour
Pritchard, is the sole proprietor of a nearby family vineyard called
“
Clos Malverne
”, and which in 2010 marketed a red
blend of cabernet sauvignon and merlot grapes, also under the name
Sophia
.
[4] Jordan’s beneficial owner, Mr.
Gary Jordan, claimed that the marketing and sale by Clos Malverne of
its Sophia infringed
upon the unregistered trade mark of Jordan’s
Sophia and asked Pritchard to cease doing so. Pritchard took umbrage
at this
demand which he considered unreasonable and insulting,
pointing out that in 2010 Clos Malverne had celebrated 25 years in
the wine
industry. In honour of his wife, Sophia, an active
participant in Clos Malverne’s success over the years, he
decided in 2008
to produce a special red blend to honour her
contribution to the success of their vineyards. At a special
celebratory gourmet dinner
in August 2010, Clos Malverne’s
Sophia was released on a “
limited basis
” to the
public. It sold at around R250.00 per bottle and was exclusively
available at Clos Malverne’s cellar.
[5] Given Pritchard’s refusal to
furnish Jordan with the requisite undertaking in relation to the use
of the name Sophia,
an application was launched in June 2012 to
interdict Clos Malverne from passing off its Sophia as that of
Jordan. The request
for an interdict was accompanied by the usual
prayers for the destruction of labels, marketing material and the
like.
[6] At the hearing of the matter in May
and June 2013, Jordan was represented by
Adv. A.R. Sholto-Douglas
SC
and Clos Malverne by
Advs. A.J. Nelson SC
and
J.L.
van Dorsten
. The Court is indebted to counsel for their
comprehensive heads of argument and written notes, as well as their
thorough arguments
in Court.
THE GENESIS OF JORDAN’S SOPHIA
[7] Like the Clos Malverne wine, (to
which I shall revert later) Jordan’s Sophia has an interesting
history. It first emerged
in 2002 as part of Jordan’s
contribution to the annual auction of the Cape Winemakers Guild (“the
CWG”).
[8] The CWG is an exclusive association
of some of the Western Cape’s most successful winemakers (as
opposed to wineries),
who gather every year in the spring to
celebrate their individual successes in the cellar over the past
year. To that end, each
winemaker produces a special release of wine
(whether red, white or sparkling) which is offered for sale
exclusively via public
auction under the auspices of the CWG. That
auction is customarily preceded by various tastings of the wines on
offer.
[9] According to the CWG website, to
which counsel referred, the annual auction is intended to “
showcase
the finest and most exclusive wines produced by its talented members,
produced in small volumes for this auction.
” And, as the
CWG’s manager, Ms. Katherine Jonker observed in her affidavit
filed herein:
“
2.1 The
CWG prides itself on encouraging innovation, and the sharing of
knowledge as well as raising the standards of wine produced
in South
Africa. Amongst its aims
therefore, are the exposure of the
wines produced by its members. It is for this reason that the CWG
auction has never been a
closed auction, but has rather always been
open to the public. In fact, prior to the
auction itself,
approximately six public tastings or “showcases”
are hosted each year, in Cape Town and Johannesburg.
2.2 These events give potential bidders an opportunity to taste
the wines they may be interesting in buying, but are also attended
by
wine-drinking members of the public that need not register as bidders
beforehand. By way of example, the 2011 tastings
were attended
by 2140…people whereas, there were approximately
200…registered bidders for the 2011 auction. The showcases
are
accordingly an event of interest to wine drinkers generally.
2.3 The bidders at the auction itself include members of the
public, in addition to trade buyers, who purchase wines for
restaurants
and on-sell them to the public through liquor outlets and
wine boutiques. Amongst the trade buyers are large liquor retail
outlets,
including Macro, Checkers and Spar/Tops. The wines sold
through the auction are accordingly available to the public
year-round
through these secondary sources.”
[10] Each CWG winemaker’s
offering is bottled with a distinctive label bearing only the logo of
the CWG (an antique key to
the lock of some notional historic cellar)
and all labels are the same colour with similar typescript thereon.
The label is intended
to revere the winemaker rather than the winery
and so the former’s name will appear on the label in
conjunction with that
of the winery. I have attached colour copies of
the front label of Jordan’s 2007 vintage of their Sophia to
illustrate the
latest layout of the CWG label.
[11] It will be observed that there is
a measure of simplicity in the label and that a consumer interested
in it would have to
read the information on the label to ascertain
which winery’s product was on offer. Furthermore, the current
get-up of the
label is to afford the winemaker prominence on the
label. On the bottle containing the 2007 vintage the words “
Gary
Jordan
” appear prominent and in large typeset above the
word “W
inemaker
” in the middle of the label.
Below that is the description of the wine with the vintage (2007) in
smaller print, the
name of the winery (“
Jordan
”)
in larger print and the name of the wine itself (“
Sophia
”)
in smaller print again.
[12] The key logo appears vertically
positioned on the left of the label while the three words “
Cape
”,
“
Winemakers
” and “
Guild
” are
positioned at the top of the label, one above the other, in the
largest typeset visible on the label.
[13] The evidence establishes that
Jordan has played a prominent role with the CWG over the years and
was at one time its chairperson.
He and his wife, Ms. Kathryn Jordan,
have lived on their family estate since 1993, having been trained in
the art of winemaking
in California. Jordan says that he first
entered the CWG auction in 2003 and, save for 2010 and 2011, has
sold annually of the
order of about 150 cases containing 6 bottles of
their Sophia.
[3]
The wine is said to have acquired a measure of
reputation and popularity at these auctions and, importantly, it is
sold by Jordan
Winery exclusively through the CWG auction.
[14] Accordingly, a keen wine buyer who
has not bought on auction would only be able to access Jordan’s
Sophia through one
of the specialist wine shops that may have bought
a case or two on the auction or at one of the restaurants which has
done likewise
and offered it for consumption on its wine list. In
either case, the wine is accessed by the consumer through a fairly
exclusive
point of sale. As the back label of the Jordan Sophia (a
copy whereof is also attached to this judgment) demonstrates, there
is
some detail about the cultivars which make up the wine, the
history of the name and the websites of both the CWG and Jordan
Winery
are furnished. I would stress, at the risk of repetition, that
Jordan’s Sophia is closely associated with the CWG and its
auction.
[15] The founding affidavit in this
matter is replete with a multitude of magazine articles and on-line
reports extolling the virtues
of Jordan’s Sophia. It has
regularly been credited with 4½ stars by Platter’s South
African Wine Guide, a general
publication available in book stores
which is regarded by many as the definitive wine guide in the
country. According to Platter’s
rating system, this would mean
that the wine is to be regarded as of “
outstanding
”
quality.
[16] Jordan’s claim that its
Sophia has acquired extensive goodwill and reputation in the market
place is not directly challenged
by Pritchard. This is because the
answering affidavit, to which I will refer more fully below, is drawn
in general, narrative terms
and does not purport to answer each of
Jordan’s allegations
seriatim
. What Pritchard does
attempt to show in the answering affidavit is that there is no magic
in the use of the name “
Sophia
” and, in
particular, that Jordan’s Sophia has not acquired a reputation
in the absence of its association with the
name of the winery,
i.e. “
Sophia
” or “
The Sophia
”
as opposed to “
Jordan Sophia
”.
THE EMERGENCE OF CLOS MALVERNE’S
SOPHIA
[17] I have already given a short
introduction to the production of Pritchard’s wine and now turn
to the answering affidavit
in some more detail. It commences with the
following bold statement:
“
6. I do not intend to burden the papers by dealing on a
line by line basis with each and every allegation made by the
applicants
as most of this comprises puffing to bolster a case that
is without merit. To the extent that I do not specifically deny any
allegations
in the founding affidavit that are at variance with the
facts to deposed to in this answering affidavit, such allegations are
accordingly
denied.”
[18] Pritchard then goes on to give
some historical detail about his family estate (bought in 1969)
which has produced wine
since 1986. He too proclaims the
virtues of his wines and says that the estate has established “
an
enviable reputation”
as a producer of “
wines of
exceptional quality, acknowledged by many accolades.”
[19] After stressing the immense effort
which his wife has put into the development of their estate,
Pritchard goes on to describe
why, and how, he released the Clos
Malverne Sophia:
“
18. In 2010, Clos Malverne celebrated its 25
th
wine-making anniversary. In order to acknowledge and honour my
wife’s massive contribution over the years, my winemaker
and I
decided, in 2008, to make a limited release blend of cabernet
sauvignon and merlot wine to be named “Clos Malverne
Sophia”
as a tribute to her.
19. This wine had to be both barrel and bottle matured and
produced in 2008 already in order to be ready for release in 2010 to
coincide with the (
sic
) what I believe to be a not
insignificant feat, namely our survival and success for a quarter of
a century in the winemaking business.
20…
21. The label of the “Clos Malverne Sophia” had all of
the above mentioned distinguishing features that are to be found
on
all of our other premium quality “Clos Malverne” wines
and which have become distinguishing features of our products.
22. The “Sophia Clos Malverne” wine was released at a
gourmet function attended by approximately one hundred guests
and
four of our previous winemakers. As a surprise we released the “Clos
Malverne Sophia” towards the end of the evening.
23. My wife who was blissfully unaware of the fact that we had
been nurturing this wine for more than two years in her honour, was
completely taken aback by the gesture. When I read the words on the
back label, which were composed by myself as well as our current
and
previous winemakers, she became quite emotional.”
[20] In regard to Jordan’s Sophia,
Pritchard is brief in the founding affidavit:
“
20. At the time I did not even give a thought to Jordan
Sophia. Thinking back, I cannot even remember if I had heard about it
at
that time.”
and in
relation to the dinner and after, he says:
“
24. It bears emphasis that not a single one of the
approximately 100 attendees, most of whom are food and wine lovers,
even mentioned
the fact that the name “Sophia” also
appears also (
sic
) on one of the Jordan wines.
25. Since then, not a single person has ever even mentioned such
an association to me and the first and only occasion upon which
this
happened was when Jordan called me to complain about our use of the
name “Sophia”,”.
[21] It is apparent from the papers that
Pritchard did not set out to copy Jordan’s Sophia. His claim to
blissful ignorance
thereof is supported in part by Mr. Jeremy Walker,
currently the proprietor of the Grangehurst Winery – a small
producer
of top class red wines also in the Stellenbosch district.
Walker was previously employed by Pritchard as his winemaker before
he
went off on his own. He is also an active member of the CWG and is
a good friend of the Jordans.
[22] During the course of this
litigation Jordan was in email correspondence with Walker regarding
Pritchard’s use of the
name “Sophia”. Walker, in
light of his friendship with Jordan and Pritchard, ultimately
directed correspondence to
both in an email of 23 August 2012:
“
Hi Gary
and Seymour,
I am really sorry
that a dispute has arisen between the two of you over the name
“Sophia” for your respective wines.
As I have stated to
both of you, I consider both of you and your families to be good
friends of mine and I do not want to become
involved in a case that
could jeopardize my friendship with either party.
An account of my
experience of the actual event – the releasing of the Clos
Malverne Sophia – is as follows:
I attended the 25
th
anniversary of Clos Malverne. Towards the end of the evening Seymour
revealed a wine that had been made as a tribute to his wife,
Sophia.
The wine was labelled as Clos Malverne Sophia and was a complete
surprise to all the people (excluding the winemaker and
perhaps one
or two others involved in the wine). From Sophia’s reaction to
this announcement and the revealing of the wine,
it appeared as if
this was the first thing that she knew of Seymour’s plan to
bottle a wine in her honour.
At some stage later
that evening, I asked Seymour if he knew that there was a Jordan
Sophia bottled and labelled for the CWG auction.
I do not recall the
exact wording of my question to Seymour, but he seemed surprised and
did not seem to be aware of this other
wine.
I hope that the two
of you are able to resolve this dispute amicably. I believe that
there is an opportunity to resolve this issue
without going the legal
route. As I have stated to both of you, I am prepared to be the
messenger/go-between if need be but I do
not want to be involved in
any other way if this can be avoided.
Good luck guys –
please try and sort this out!”
[23] Evidently, Walker was requested to
confirm this correspondence under oath but was reluctant to depose to
an affidavit, and
so become embroiled in the litigation between his
friends. However, during argument both parties accepted the accuracy
of the allegations
contained in the email which, in any event,
Pritchard had dealt with in a further affidavit filed in these
proceedings.
[24] Finally, by way of background,
Pritchard said that Clos Malverne’s Sophia was a so-called
“
limited release
” wine and that originally only
600 bottles (100 cases) had been produced. In the papers filed
initially he said that there
were about 500 bottles left for sale
because, as he put it, the wine was “
a slow mover
”.He
stressed that sales of their Sophia only took place from the cellar
on Clos Malverne. The wine was unavailable at any
other outlet,
whether a restaurant or wine shop or the like. In a further affidavit
filed on 22 May 2013, Pritchard said that there
were “
no
bottles of Clos Malverne Sophia available for sale to the public left
and neither are there any in the making”.
THE RELIEF SOUGHT BY JORDAN
[25] Jordan seeks a final interdict
restraining the passing off of its product by Clos Malverne through
use of the trade mark “
Sophia
”. That trade mark is
unregistered and said to be defined in
section 2(1)
of the
Trade
Marks Act No. 194 of 1993
as follows:
“
trade
mark
, other than a certification trade mark or a
collective trade mark, means a mark used or proposed to be used by a
person in relation
to goods or services for the purpose of
distinguishing the goods or services in relation to which the mark is
used or proposed
to be used from the same kind of goods or services
connected in the course of trade with any other person.”
[26] Passing off is a delict that has at
its core a misrepresentation by one trader that its goods are those
of another trader,
or are associated in the course of trade with that
other trader’s goods. In
Williams
[4]
Corbett CJ explained the approach as follows:
”
Passing-off
is a species of wrongful competition in trade or business. In its
classic form it usually consists in A [Clos Malverne]
representing,
either expressly or impliedly (but almost invariably by the latter
means), that the goods or services marketed by
him emanate in the
course of business from B [Jordan] or that there is an association
between such goods or services and the business
conducted by B
[Jordan]. Such conduct is treated by the law as being wrongful
because it results, or is calculated to result, in
the improper
filching of another’s trade and/or in an improper infringement
of his goodwill and/or in causing injury to that
other’s trade
reputation. Such a representation may be made impliedly by A [Clos
Malverne] adopting a trade name or a get-up
or mark for his goods
which so resembles B’s [Jordan’s] name or get-up or mark
as to lead the public to be confused
or to be deceived into thinking
that A’s [Clos Malverne’s] goods were services emanate
from B [Jordan] or that there
is the association between them
referred to above. Thus, in order to succeed in a passing-off action
based upon an implied representation
it is generally incumbent upon
the plaintiff to establish,
inter alia
: firstly,
that the name, get-up or mark used by him has become distinctive of
his goods or services, in the sense that the public
associate the
name, get-up or mark with the goods or services marketed by him (this
is often referred to as the acquisition of
reputation); and
secondly, that
the name, get-up or mark used by the defendant is such or is so used
as to cause the public to be confused or deceived
in the manner
described above. These principles are trite and require no citation
of authority.”
[27] Jordan bears the onus of
establishing the reputation (in the sense in which that word was used
by Corbett CJ) of its Sophia.
In
Caterham
[5]
Harms JA described the test as follows:
“
[21] The nature of the reputation that a plaintiff has to
establish was well stated by Lord Oliver in a judgment referred to at
the outset of this judgment, namely
Reckitt & Colman
Products Ltd v Borden Inc and Others
[1990] UKHL 12
;
[1990] RPC 341
(HL)
([1990]
1 All ER 873)
at 406 (RPC) and 880 g-h (All ER):
‘First, he must establish a goodwill or reputation attached to
the goods or services which he supplies in the mind of the
purchasing
public by association with the identifying ‘get-up’
(whether it consists simply of a brand name or a trade
description,
or the individual features of labelling or packaging) under which his
particular goods or services are offered to
the public, such that the
get-up is recognized by the public as ‘distinctive specifically
of the plaintiff’s goods
or services’
(My emphasis.) See also Lord Jauncey at 417 (RPC). The
words emphasized are pertinent and echo those of Nicholas J that
‘the
plaintiff must prove that the feature of his product on which he
relies has acquired a meaning or significance, so that
it indicates a
single source for goods on which that feature is used.’
(
Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd
1977 (4) SA 434
(W) at 437A-B). Put differently, reputation is
dependent upon distinctiveness (cf
Van Heerden and
Neethling
at 169)”.
THE ALLEGED REPUTATION OF JORDAN’S SOPHIA
[28] I agree with counsel for Jordan
that the third leg of the so-called “
classical trinity
”
referred to by Harms JA in
Caterham
can be readily disposed
of. Our courts have accepted that proof of confusion resulting from a
misrepresentation has as its ordinary
consequence sufficient risk of
damage to entitle the injured party to an action for passing off.
[6]
The focus of the enquiry in this case turns firstly on
the so-called reputation and, secondly, on misrepresentation, in the
form
of deception or confusion.
[29]
Mr. Sholto-Douglas SC
was
quick to point out at the beginning of his argument that this case
was not a “
get-up
” matter, and for obvious
reasons. I have described above the label of Jordan’s Sophia.
Copies of the Clos Malverne
Sophia front and back labels are also
attached to this judgment.
[30] For the record it is a russet
coloured label with the name
Clos Malverne
displayed
prominently at the top. Beneath that appears the word “
Stellenbosch
”
and a drawing of a stately residence. Then follows the word “
Sophia
”
in a different typeface and then the words “
Limited Release
”
with the vintage year “
2008
” beneath that. At the
bottom of the label are the words “
Basket Pressed
”.There
is also a separate circular gold sticker on the bottle with the words
“
Limited Release
”. The back label is also entirely
different to Jordan’s Sophia – it is a long, rectangular,
black label with
gold lettering giving extensive detail of the
purpose of the limited release in honour of Ms. Sophia Pritchard.
[31] In regard to reputation (or
goodwill), it is said that an applicant for interdictory relief must
establish the existence of
the requisite reputation such that its
mark, sign or get-up has become distinctive in the minds of a
substantial number of members
of the general public. This requires
Jordan to establish:
“…
That
his name [Sophia] has become distinctive, that is, that in the eyes
of the public it has acquired a significance or meaning
as indicating
a particular origin of the goods…in respect of which the
feature is used. This is called reputation”
[7]
.
[32] Like the situation in
Bress
Designs
, where the competing manufacturers of lounge furniture
marketed products which had tags attached to them that clearly
identified
the source of the products, in this case it was suggested
by
Mr. Nelson SC
that the Applicant’s prized Bordeaux
blend was always referred to in the context of the winery which had
made it – always
“
Jordan Sophia
” and not
just “
Sophia
” or “
The Sophia
”.
It was said by Pritchard that in adopting the name of his wife to
market the 2008 Limited Release, Clos Malverne had not
adopted a
description which was sufficiently unique to Jordan to entitle the
latter to protection under a passing off application.
[33] In making this point, Pritchard
accepted unequivocally that Jordan Sophia had a reputation associated
with the Jordan Winery
when he made the following snide remark in the
answering affidavit:
“
At best
for the Applicants, the composite name ‘Jordan Sophia’ is
linked to a very exclusive wine known only to an elitist
and
discerning group of wine buyers and purchasers.”
The irony in this remark is that by
proclaiming his complete ignorance of Jordan’s Sophia,
Pritchard effectively distanced
himself from the designated class of
wine consumers.
[34] As Pritchard then accepts, there
does not seem to be any debate that Jordan’s Sophia has,
amongst persons knowledgeable
in wine and the like become known as a
red wine of superior quality. This is undoubtedly the case amongst
members of the CWG and
patrons to its annual auction where the wine
has been well received and has achieved good prices year after year.
The argument,
though, is what the extent of that reputation is.
[35] Counsel for Clos Malverne pointed
out that this required the Court to consider the market in which the
particular wine (as
distinct from the general collection of Jordan
wines) was sold. As I understand it (and as the affidavit of Jonker
confirms) Jordan’s
Sophia is sold first on auction by the CWG.
From there, limited quantities find their way to specialist wine
stores, the shelves
in larger wine stores reserved for the
presentation of selected auction wines (including the CWG), or onto
the wine list of a restaurant
whose proprietor has bought it at
either the CWG auction or at a liquor wholesaler or retailer which
has acquired stock from the
CWG auction. By way of example, it was
said by Jordan that the owner of a popular Johannesburg up-market
steakhouse known as “
The Butcher Shop and Grill
”,
Mr. Allan Pick, bought copious quantities of his Sophia on the CWG
auction every year, and, with the by now customary 300%
mark-up which
restaurants seem to apply to wine, marketed it for around R1050.00 on
his wine list.
[36] As Prof. Neethling
[8]
points out, determination of the requisite size of the group of
persons which has become familiar with a contested product will
vary
from case to case, and it is not necessarily limiting of a reputation
that it is only known to relatively few people. What
is important in
this regard with respect to Jordan’s Sophia is that while the
wine is aimed at an exclusive market, that
market, by virtue of the
tentacles of the internet to which I shall refer below, has limitless
boundaries – both local and
abroad. So, potential purchasers of
Jordan’s Sophia may read about it on any number of websites or
blogs and will be able
to order such wine for delivery to the very
furthest corners of the globe.
[37] At the end of the day, there can be
little doubt then that Jordan’s Sophia is likely to be sought
after by a class of
wine consumers – mostly fine diners and
wine cognoscenti (or pretenders to that status) – who are
likely to be attracted
by its reputation as a CWG auction wine, and
who have a wallet to match their expensive taste. But this limitation
of class does
not, in my view, mean that the members thereof are
exempt from confusion by virtue of their knowledge of the wine
market.
[38] In furtherance of his argument,
Pritchard contends in the answering affidavit that the name “
Sophia
”
has not yet acquired a so-called “
secondary meaning”
entitling Jordan to protection at common law:
”
39.2 The name “Sophia” has not obtained a
secondary meaning in the sense that it has become distinctive of
either the
First Applicant or of its wine;
39.3 The wine in question has by no means come to be universally
known in the market by this name.”
[39] As the papers and the many, many
annexures thereto in this case demonstrate, the wine market in our
country (no doubt following
international market trends) has moved
away from the description
simpliciter
of the winery followed
by the cultivar (e.g. Jordan Cabernet Sauvignon; Clos Malverne
Pinotage) to the use of descriptive names
(properly called “
fancy
names
”) which in some cases have become the customary name
by which that particular cultivar or blend is known in the market
place.
The example which immediately springs to mind (and which
featured in the debates with counsel) is “
Rubicon
”
– a well- known red blend from the Meerlust Estate near
Stellenbosch. There can be no argument that a wine such as
that has
acquired a distinctive reputation such that if the general wine buyer
or drinker were to be asked whether he/she had tasted
“
the
2004 Rubicon
”, it is probable that there would be no doubt
in that person’s mind that reference was being made to
Meerlust’s
flagship red blend.
[40] Further, were one to visit one of
the well-known liquor outlets mentioned in the papers such as Makro,
Spar or Ultra Liquors,
one may encounter red blends with labels
bearing descriptive names such as “
Chocolate Block
”,
The Pepper Pot
”, “
Millenium
”,
“
Tortoise Hill
”,
Quinary
” and “
First
Lady
”, either with or without the name of the winery
featuring prominently on the label, and which are uniquely
descriptive of
the particular winery’s products.
[9]
And as the papers herein show, for red wine buyers with considerably
deeper pockets, there are names such as “
Gravel Hill
”
and “
The Stork
” from the Hartenberg Estate,
“
Rodanos
” from Neil Ellis Wines, “
Perspective
”
from De Trafford Wines and “
Paul Sauer
” from the
Kanonkop Estate.
[41] The argument put forward by
Mr.
Nelson SC
was that in respect of these sorts of names, unless the
particular wine was known generally in the market place by such name
without
reference to the name of the winery, such as “
Jordan
Prospector Syrrah”
or “
Clos Malverne Auret
”
(incidentally a tribute to the maiden name of Pritchard’s
mother), it has not acquired a so-called secondary meaning
which was
deserving of protection under the law relating to passing off.
[42]
Mr. Sholto-Douglas SC
argued
that the concept of a “
secondary meaning”
is
inapposite in the adoption of a common name in a trade mark (or in
this case essentially a so-called “
fancy”
name
serving as a secondary trade mark). In one of the earlier leading
cases on the point (
Sea Harvest
[10]
),
an attempt was made by one fish processor to stop an opponent from
using the term “
prime cut
” in relation to its
frozen fish products.
Aaron AJ
refused to grant an interdict
and held as follows at 360B:
“
A long
line of decisions in passing-off and trade mark cases has established
that where descriptive words,
as opposed to invented or
fancy words,
are used in a trade name or trade mark, the
Court will not easily find that such words have become distinctive of
the business
or products of the person using them, and will not give
what amounts to a monopoly in such words to one trader at the expense
of
others.” (Emphasis added)
This
dictum
was approved of by
Heher JA in the
Lotto
case
[11]
.
I appreciate that there must be a measure of caution assessing such
“
invented or fancy
” names because one does not
know which of those wine labels to which counsel referred, or which
are to be observed on liquor
supermarket shelves, enjoy statutory
trade mark protection or not.
[43] Prof. Neethling
[12]
is of the view that:
“
..I[t]
does not make sense to require actual proof of reputation if the
plaintiff uses a ‘fancy name’ as trade name
or trade
mark, the reason being that the connection of such a name or mark
with an undertaking, goods or services can only serve
to
individualise them.This point of view is by necessary implication
indeed apparent from a decision of the Appellate Division,
Truck
and Car Co Ltd v Kar-N-Truck Auctions
,
[1954 (4) SA 552
(A) at 557] where Greenberg JA simply accepted in an
obiter
dictum
that an ‘invented or fancy’ name is in
itself already distinctive. Reputation was therefore not set as an
additional
requirement for individualization in these cases.”
The learned author goes on to point out
[13]
that where a person has invented a name under which to sell his/her
goods and, importantly, the name is in no way descriptive
of the
product (e.g. “
Cape Red Blend”
), that person has
exercised a measure of imagination in finding a name, and is
therefore entitled to appropriate it with the necessary
degree of
exclusivity. And, says the author, where a rival starts to use
an identical “
fancy”
name, the ineluctable
inference is one of passing off
[14]
.
In that situation the likelihood of confusion in the market place is
enhanced:
“
The idea
underlying all this would appear to be that where a person invents a
name under which to sell his goods or carry on his
business and this
name is in no way descriptive of, or has no direct relation to the
nature of his goods or business, then he has
exercised his ingenuity
or imagination in finding that name and can appropriate it to
himself. If another uses that name it is
regarded as almost
impossible to believe that in the wide circle of imagination or
ingenuity he hit on that name by accident and
without intention to
deceive.”
[44] On appeal in that matter
[15]
Greenberg JA dealt with the consequences of competing with the use of
a “
fancy name
” as follows:
“
..(T)he
question is whether the use by the respondents of the name
‘Kar-N-Truk Auctions’ is likely so to deceive the
public.
The answer to this question does not solely depend on whether the
appellant’s is an invented or ‘fancy’
name, on the
one hand, or whether it is merely descriptive of its class of
business, nor on the extent to which the appellant’s
name has
become associated in the mind of the public with the business it
carries on. These are factors no doubt of great importance,
in
deciding whether there is the likelihood of deception; if the
appellant’s name is an invented or ‘fancy’ name.
The public is more likely to confuse with it a name of somewhat
similar sound or appearance than if its name is merely descriptive
and the extent of association by the public of the appellant’s
name with its business may also have an important bearing
on the
question of the likelihood of deception. But these factors should not
be considered without reference to the nature and
circumstances of
the respondent’s conduct…. Thus Trader A [Jordan] who
could claim neither that his trade name [Sophia]
was distinctive
because it was invented or ‘fancy’ nor that there was
association by the public of his name with his
business might have a
well-founded claim for protection against Trader B [Clos Malverne]
whose conduct was of such a nature as
to create a likelihood that
members of the public would be deceived into thinking that B’s
business [Clos Malverne’s
Sophia] was the business of A
[Jordan’s Sophia], and that this might cause damage to A
[Jordan].”
[45] The choice of such an “
invented
or fancy name
” in relation to a particular type of wine may
be based on an occurrence or event or person associated with the
particular
winery, as the choice of “
Sophia
” by
both Jordan and Clos Malverne demonstrates. And, in deciding to give
a particular cultivar (or blend of cultivars) a
name other than its
ordinary descriptive meaning (e.g. “
merlot
”,
“c
hardonnay
” or “
shiraz/pinotage blend
”),
the winemaker (or more correctly, probably the marketing adviser) has
sought out a name which it is hoped will lead to
prominence and
distinction in the wine market. It is precisely that attempt at
distinction through the use of an “
an invented or fancy
name
” which in my view leads to that name acquiring a
reputation as a secondary trade mark which is worthy of protection.
[46] Two further examples will suffice.
Mr. Sholto-Douglas SC
referred to “
The Stork
”,
an expensive shiraz from Hartenberg Estate. The estate’s
website reveals that the wine was named after a previous
owner of the
farm who was given this name during the Second World War by his air
force colleagues because of his spindly, stork-like
legs. The name of
the wine seeks to pay homage to one of the estate’s
forefathers. Finally, I need go no further on this
point than to
refer to Clos Malverne’s pinotage creatively called “
Le
Café
” after the coffee flavor with which the wine
apparently presents on the palate.
[47] What the papers before me
demonstrate unequivocally is that the Applicant’s wine has been
referred to either as “
Jordan Sophia
” or “
Sophia
”
or “
The Sophia”
, the latter references being less
frequent than the former. In my view, whether used conjunctively or
disjunctively in relation
to Jordan, the papers show that in any
event since 2003 the name Sophia has acquired a reputation as a
premium Bordeaux type blend
wine from the Stellenbosch area which
distinguishes it from similar blends of other wine producers. That
reputation has been recognized
repeatedly at CWG auctions over the
years, by numerous wine writers and by those who are prepared to
spend a significant amount
of money to place that bottle of wine on
the shelf at their liquor stores or to list it on their restaurant
menus.
[48] It cannot be fair that a wine maker
who has carefully thought out such a “
fancy name
”
to describe a particular wine, a name which is not otherwise
distinctive of the wine, should have to put up with another
winemaker
who fortuitously latches onto the same name and puts that name to
beneficial marketing use. That is the very essence
of filching to
which Corbett CJ referred in
Williams
. I am therefore
satisfied that “
Sophia
” in regard to both Jordan
and Clos Malverne has been used as a secondary trade mark, has not
acquired a secondary meaning
as contended for by
Mr. Nelson SC
and
that the necessary reputation has been established by Jordan.
CONFUSISON AND/OR DECEPTION
[49] I move on then to the last leg of
the enquiry: has Jordan shown that there has been confusion or
deception in the market place,
or is there likely to be any in the
future should Clos Malverne decide to market more of its Sophia?
[50] That issue calls for a
determination by the Court on an assessment of all the relevant
factors before it. In regard to deception
it is said that:
“
The Judge
must consider the evidence adduced and use his own common sense and
his own opinion as to the likelihood of deception
…
ultimately, the question is one for the Court not for the witnesses.
It follows that if the Judge’s own opinion
is that the case is
marginal, one where he cannot be sure whether there is a likelihood
of deception, the case will fail in the
absence of enough evidence of
the likelihood of deception.”
[16]
[51] Quite obviously there can be no
visual confusion on the part of a buyer as to whose wine is whose,
since the two labels are
as distinct as a chardonnay and a merlot.
Rather, argued
Mr. Sholto-Douglas SC
, the room for confusion
lay in the use on the label of the same “
fancy
”
name which was descriptive of the wine itself, in circumstances where
both wineries produced a so-called Bordeaux blend
of cabernet
sauvignon and merlot from estates located near Stellenbosch. The
essence of the case on this point is whether the secondary
trade
mark, Sophia, was likely to result in deception or confusion in the
market place, with particular focus on the possibility
of aural
confusion.
[52] As I have attempted to show above,
the wine industry has developed a practice which recognizes primary
and secondary trade
marks. In the case of Rubicon, for example,
this is the secondary mark in relation to Meerlust. In the case
of the
Applicant, Jordan is the primary mark and Sophia is the
secondary mark, and in respect of Pritchard’s wines, Clos
Malverne
is the primary mark and Sophia (or Auret or Le Café)
the secondary mark. As the plethora of documents that make up this
application demonstrate, the tendency to use such primary and
secondary marks has led to wine commentators, customers and other
interested parties referring to wines by both their primary and
secondary trade marks conjointly, as well as simply by their
secondary
marks. Hence, for example, “
Meerlust Rubicon
”
or just “
Rubicon
”, “
Raka Quinary
”
or just “
Quinary
” and ”
Kanonkop Paul
Sauer
” or simply “
the Paul Sauer”.
[53] Manifestly, no wine purchaser or
gastronome wishing to compliment a gourmet meal will be misled by the
get-up, bottling or
style of the two competing Sophia wines. The type
of alleged confusion in regard to “
Johannisberger
”
with which Didcott J had to deal in
Union Wine
[17]
,
does not enter the debate here.
[54] Rather, the question of prospective
confusion falls more into the category of trade names considered by
the same Judge in his
judgment
a quo
in the
Boswell-Wilkie
case
[18]
at 738H:
“
They
confirm the belief I would have held even had I never learnt of them,
my belief that the Boswell element in the Boswell-Wilkie
name is
the
one which tends to catch the eye or ear and to lodge itself in the
mind…”
(Emphasis added)
And at 739F-740A:
“
The situation is thus one lending itself readily to
confusion between the two circuses, if the names of such look and
sound alike.
They certainly do, in my estimation at any rate.
Neither name, to be sure, is Boswell’s Circus, plainly and
simply. Yet
that is what the Boswell-Wilkie Circus gets called
colloquially, as one has seen already. The same is bound to happen to
Brian
Boswell’s Circus, it is safe to suppose, on some
occasions at least, on quite a number in all probability. And the
only Boswell’s
Circus of which many people have ever heard is
the one that is now the Boswell-Wilkie Circus, a factor broadening
the margin of
error. True, the advertising material of each circus
reflects its full name, for the information of those who take notice
of suchlike.
But the one’s advertisements will rarely be
displayed or published simultaneously with the other’s when
comparisons
are both natural and easy. The difference between the
names is, in any event, a detail scarcely striking the average person
with
the force their similarity generates. That Boswell’s
Circus has come to town is what the public is likely to think when
all
is said and done. What it is likely to say, what it is likely to
hear, whichever of the two has actually arrived.
No doubt the really careful observer will not be misled. He seldom
is in such cases. Few of them would succeed were his perceptions
of
the test. They are not, however, what count.. The reason is the
average person’s lack of them. The point was made in
Henry
Hemmings Ltd v George Hemmings Ltd
(1951) 68 RPC 47
, a
dispute between two building contractors with those names. An
injunction was granted against the one company at the instance
of the
other, restraining it from doing business under its name. Roxburgh J
decried its choice of such, complaining (at 50):
‘[T]his
was bound to lead to widespread deception and confusion…It
must do so. It is all very well to say that
careful people
noticed the difference between George and Henry, but who is careful
in these days? It is a matter of common
knowledge that the
standard of care adopted by the public is not high enough to enable
the average member of the public to distinguish
between Henry
Hemmings Ltd and George Hemmings Ltd, if they are carrying on the
same business in the same locality.’
It would be
tedious to go through the many additional cases in which the
resemblance between business names has been considered
with an eye to
passing off. Each turned in the end on its own facts.”
[55] For that reason the long list of
cases so painstakingly referred to by
Mr. Nelson SC
in an
attempt to seek comparative assistance does not help. The approach to
be adopted in cases such as these was set out by Didcott
J in his
masterful collection and analysis of English and South African
authorities on the point of the entitlement to use one’s
own
name in describing one’s business and the likelihood of
deception or confusion arising therefrom. At 737D Didcott J
postulated the following:
“
The
question posed by the present proceedings, or the initial and
fundamental one at any rate, is therefore this. Is the respondents’
use of the Boswell name likely, in all the circumstances of the
matter, to lead the public into believing that their circus is
the
applicant’s circus or some circus connected with the
applicant’s circus? If it is, it amounts to a
representation
that such is the case and, since it is not, to a
misrepresentation. The class whose belief counts consists of “the
ordinary
run of persons”, as Lord Langdale MR describes them in
Croft v Day
[1843] EngR 1231
;
(1843) 49 ER 994
(at 996).”
[56] The reasoning applied by Didcott J
is compelling. And so each case must, therefore, be determined on its
own facts, to be
evaluated however against one simple legal
principle: “
a defendant may not falsely represent that his
business is the business of the plaintiff”
[19]
.
While the use of one’s family name is not in issue in the
instant case, Jordan and Clos Malverne each having its own
distinctive
primary trade mark as such, it is the description of the
respective blends of wine in each individually labelled bottle as
“
Sophia
”, and the marketing thereof, that must be
considered to determine whether deception or confusion may
arise in the market
place.
[57] As unlikely as it may sound, that
is, that an established Stellenbosch winemaker of a quarter of a
century ‘s standing
who farms just a couple of kilometers away
from another prominent winemaker has never before heard of Jordan
Sophia, the parties
accepted Walker’s assertion in his email to
them jointly that Pritchard “
did not seem to be aware of
”
the other Sophia when he paid tribute to his wife in 2010. I would
observe in passing that the allegation by Walker is not
unequivocal,
(“
seem
”), nor is Pritchard’s intended put
down in the answering affidavit to which reference has been made in
para 20 above.
(“
cannot remember if I had heard about it
”)
[58] It is conceivable, I would think,
that Pritchard, as a winemaker who has not been invited to join the
CWG, does not busy himself
with the affairs of that group of
winemakers. If that is so, his alleged ignorance of the CWG-labelled
Jordan Sophia is understandable.
Just as likely, however, is the fact
that he may have heard of Jordan’s Sophia but did not consider
that his wine “
falsely represented
” that of Jordan
because of the fact that it was distinguished by his ordinary cellar
label (his primary trade mark) and produced
in a small quantity as a
celebratory limited release.
[59] Be that all as it may, counsel for
Jordan accepted that Pritchard did not set out to pass off Jordan’s
wine when he
bottled and labelled limited his release. But in the law
relating to passing off proof of intention in the form of deception
is
not a
sine qua non
to interdictory relief: it is sufficient
if the applicant has established the likelihood of deception
[20]
.
[60] I revert again to Didcott J again
in the
Boswell-Wilkie
case at 761F-762D:
“
To
distinguish confusion from deception, it goes without saying, is to
postulate two separate ideas.What these are, and how they
differ, are
questions basic to the distinction’s evaluation.
The words have
colloquial connotations which do not match, exactly at any rate.
In the first place, according to these, deception
is usually
deliberate, whereas confusion can be accidental and often is. This
particular difference in nuance is not audible in
the
patois
of passing off, however, since its vocabulary encompasses
unintentional deception. Then there is a second difference, lying not
so much in the states of mind the words attribute to the persons who
are to blame as in the results they suggest. A man is deceived
when
he is led to believe that which is false. He is confused, by
comparison, when he does not know what to believe, just as he
is when
he thinks he does but mistakes one thing for another. It may be
accepted that the prospect of confusion in this sense of
bewilderment
will not suffice to support a complaint of passing off, that nothing
less will do than the likelihood of outright
deception. The cause of
action calls for proof that people will probably be misled, after
all, and such is not the case as long
as they seem likely to remain
in doubt and conscious of it. The notional significance of this
second difference nevertheless strikes
me as greater than its
practical importance. I shall explain why I say that. Passing off
does not depend on a result actually achieved,
on a consequence
accordingly measurable.
It rests on what appears likely to
happen.
Once that is the enquiry, once the Court must gaze
into its crystal ball, I cannot realistically imagine it seeing a
public unable
to tell two businesses apart, a public uncertain
whether they are one and the same business or not, yet catching sight
of nobody
with the positive though mistaken impression that they are.
The quandary of many about what to believe is usually
accompanied or followed by a false belief on the part of some.
In the context of passing off, one thus notices,
the words
tend to be employed synonymously, interchangeably
. Any
number of examples can be found in the various judgments from which I
have quoted and, for that matter, in this judgment of
mine too, rare
situations may arise perhaps, in which the one thing does not lead to
the other. Whether a given case provides an
instance of such is
always, however, a question of fact. It is part and parcel of the
investigation into the larger issue whether
the representation
concerned is likely indeed to mislead the public, or enough of them
to count. The question may present itself,
what is more, in passing
off matters of any kind. There is no reason to view it as a problem
peculiar to the use of one/s (
sic
) own name, or
to seek a solution appropriate to that sort of case alone.”
(Emphasis added)
[61] In summing up the fruits of his
labour, Didcott J concluded at 765H-766A:
“
I find the
law which governs this case to be plain and straightforward. The
following, it seems to me, is the position. You may
not call your
business [wine] by any name which is likely to mislead the ordinary
run of persons into the belief that it is or
has connections with the
business [wine] of somebody else. Such is the rule. It is subject to
no qualification.”
[62] There is no allegation in the
papers before me (and, might I regretfully add, papers which evince a
level of unnecessary animosity
on both sides) of any confusion that
has arisen in the past regarding either of the party’s
Sophia’s. And given
that Clos Malverne’s “
Limited
Release”
stocks have been entirely depleted, there is no
likelihood of such confusion arising as things presently stand.
[63] What bothers Jordan, however, is
the fact that Pritchard applied to register a trade mark in respect
of Sophia after this matter
was brought to his attention and has
offered no undertakings whatsoever in relation the future release of
Clos Malvern Sophia,
for example, by suggesting that he will limit
the sale thereof to his cellar where the room for confusion would be
attenuated accordingly,
or even limiting the release thereof to a
family celebration similar to that which occurred in 2010.
Importantly, Pritchard was
not prepared to give an undertaking that
in future no further production of Clos Malverne’s Sophia would
take place.
His assertion is that there are any number of
future celebratory events that may warrant the use by Clos Malverne
of Ms Pritchard’s
first name. Perhaps to celebrate future
decades of success in the wine trade, or some family anniversary or
other family event
such as the birth of a granddaughter or the like?
The prospects seem limitless.
[64] Jordan therefore became suspicious
of Pritchard’s refusal to give an undertaking regarding future
use by Clos Malverne
of the name “
Sophia
” and
asked the Court to assume that there was indeed such a prospect and
one which warranted the grant of interdictory relief.
And, the fact
that Pritchard applied to register a trademark in respect of Clos
Malverne’s Sophia, some four months after
he received the
letter of demand from Jordan’s attorneys, only added force to
that suspicion.
[65] Further, it is suggested that
Pritchard, having now been fully informed as to the reputation of
Jordan’s Sophia, will
seek in future, once he has full trade
mark protection, to ride on the back of Jordan’s success.
Finally, one cannot lose
sight of the fact that Walker, himself a CWG
member, was sufficiently concerned about possible confusion in the
market place that
his immediate retort to Pritchard at the 25
th
anniversary celebration was to enquire whether Pritchard had not
heard of Jordan’s Sophia.
[66] It is indeed regrettable that the
essence and etymology of the name in question has not prevailed in
this matter and that
the zealous defenders of their respective labels
were not able to conclude a mutually beneficial arrangement regarding
the future
use of the allegedly offending name by exhibiting some
faith and charity. But in the result, the Court must determine what
is to
be done in regard to the potential for future deception or
confusion.
[21]
[67] The Court is required to adopt a
common sense approach to the assessment of the potential for
confusion in the future.In the
approach suggested by Colman J in the
Oude Meester
case
[22]
,
the Court must notionally transport itself from the court room to the
particular market place and stand in the shoes or sit in
the chairs
of those who might be expected to make use of the goods offered by
the two trade rivals. In so doing the Court will
have regard to the
idiosyncracies that may or may not be associated with such consumers.
[68] The wine industry is an extensive
and pervasive one and its marketing and advertising arms reach much
further in 2013 than
they did in 1989 when the
Union Wine
case
supra
was decided. South Africa is now part of the
international trading community and online wine sales from around the
globe, spurred
on and informed by a multitude of websites, blogs and
journal articles, are a part of everyday life. So too is the use of
computer
generated search engines where a single word is inserted and
the internet is explored for reference thereto, often with extensive
results.
[69] That is just what both parties to
these proceedings demonstrated
ad nauseam
in the papers: how
many Sophia’s, Sofia’s and Sophie’s popped up
around the globe in response to such searches.
It is therefore not
difficult to speculate that a wine buyer who remembers the name
“
Sophia
” or “
Sofia
” (having
been alerted thereto previously by reference to either the CWG or
Jordan) is thereby directed to Clos Malverne or,
vice-versa, for that
matter.
[70] Weekend newspaper supplements and
lifestyle or culinary magazines often have wine columns or suggested
pairings with recipes,
which recommend preferred wine tastings. Once
again, the coincidence of names that sound alike can potentially lead
to confusion
in the wine buyer’s mind: which winery was it now
that produced that red blend called Sophia that I read about in the
Sunday
Times wine column? Or, as debated with counsel during
argument, Cape Town radio listeners who tune into their local
classical music
station may hear a brief wine talk in the car on
their way home. Were either of Jordan’s or Clos Malverne’s
Sophia
be the topic of the day’s discussion, and the driver
later wish to follow up on the announcement, the likelihood for
confusion
could easily occur. And, one thinks finally of casual
conversation across the dinner table where persons interested in wine
exchange
views about that which they enjoyed most with reference to,
for example “
Sophia
”. A person thereafter wanting
to try something that was held out as being a wine of quality could
similarly be confused as
to whether the winery was Jordan or Clos
Malverne.
[71] These examples are certainly not
exhaustive, but serve to illustrate the array of circumstances under
which a potential wine
buyer in a liquor outlet or purchasing online,
or a patron at a restaurant, may be confused as to whose product is
being bought
or ordered.
[72] I am therefore satisfied that the
Applicant has shown the basis for potential confusion in the market
place sufficient so
as to warrant the risk of the diversion of its
buyer to the Respondent. That risk, and the resultant potential
loss of custom
is, in my view, sufficient to sustain a claim for an
interdict.
APPROPRIATE REMEDY
[73] As I have already observed,
Pritchard has furnished no undertaking as to his future use of the
name Sophia.Had he, for instance,
offered to inform Jordan
sufficiently in advance of Clos Malverne’s intention to release
further quantities of a new vintage
of Sophia into the market place,
Jordan would have been hard-pressed to move for a final interdict. He
has not done so and has
left future bottling of his adored red as a
distinct possibility. This, coupled with the assertiveness with which
he has sought
to justify his choice of secondary trade mark, and his
pursuit of statutory trade mark protection, render a final interdict
the
most appropriate remedy in the circumstances.
COSTS
[74] Both parties raised the stakes in
this application by asking for punitive costs order against each
other. Jordan fired the
first salvo in this part of the skirmish in
his replying affidavit by deprecating the abusive and aggressive tone
of the answering
papers. This complaint was not without substance
given that Pritchard had sought to categorize certain of the
deponents to the
supporting affidavits in the founding papers
(including innocent third parties) as biased and dishonest.In
addition, the manner
in which he took umbrage at Jordan’s
complaint was overly sensitive.
[75]In further papers filed after the
replying affidavit, Pritchard retaliated and sought to expose Jordan
as a liar and a cheat
in respect of what was referred to as the
“
Castle email
”. This he said warranted a punitive
costs order against Jordan and the matter was taken so seriously by
Respondent that
Mr. Nelson SC
spent all of a day arguing this
point alone, all the while proclaiming his professed regret that he
was required to go so far in
executing his client’s mandate. I
shall deal with the point but briefly.
[76] After the answering papers had
taken the point that Jordan had failed to establish that his Sophia
had a reputation of its
own and could not stand alone without
incorporation of the winery’s name, Jordan produced an email
originating from a certain
Professor Castle in Melbourne, Australia.
This document was presented to the Court as an unsolicited enquiry to
Jonker of the CWG
about the availability of “
the Sophia
”
and other prestigious South African wines (including Kanonkop) and a
casual reference to Clos Malverne.
[77] The Respondent’s junior
counsel is evidently very adept with his computer and through a
variety of searches (or what
is commonly called “
trawling
”
of the internet), he and his wife established that Jordan and Castle
were old friends who had in their younger days been
to a heavy metal
rock concert in Barcelona. He also found mention of Castle’s
name in the Jordan Winery’s so-called
“
Harvesting
Diary
”, in which daily progress is recorded for interested
online readers of harvesting and pressing activity during the summer
months in Stellenbosch. Pritchard triumphantly proclaimed that the
email was all a diabolical plot to augment a weak case on the
part of
his nemesis.
[78] Jordan offered an explanation which
was less than convincing and the email had the appearance of a tacky
attempt to bolster
a point which was really of no particular moment
in the greater context of the case. However, in my view, the
matter was
not capable of proper determination without the deponents
to the affidavits being properly interrogated under
cross-examination.
Since this did not occur, I am reluctant to
decide the question of credibility on the papers alone because, as
Shongwe JA cautioned
in
Buffalo Freight
[23]
“
[20] A court must always be cautious about deciding
probabilities in the face of conflicts of fact in affidavits.
Affidavits
are settled by legal advisers with varying degrees of
experience, skill and diligence and a litigant should not pay the
price for
an adviser’s shortcomings. Judgment on the
credibility of the deponent, absent direct and obvious
contradictions, should
be left open.”
[79] Given the way in which the Castle
email was raised by Pritchard and the force and duration of the
argument in regard to it,
I was encouraged by
Mr. Sholto-Douglas
SC
in reply to indeed make the costs order ultimately sought by
the Applicant. In the result, however, I consider
Buffalo Freight
to be the preferred approach.
ORDER OF COURT
[80] In the circumstances an order is
made:
(1) Interdicting and restraining the Respondent from passing off his
wine as being that of the Applicants, or as being associated
with or
endorsed by the Applicants, by making use of any name or mark
consisting of or incorporating the trademark
SOPHIA
, or any
name or mark confusingly or deceptively similar thereto;
(2) Directing the Respondent to pay the costs of this application,
such costs to include the costs of senior counsel.
P.A.L. GAMBLE
GAMBLE, J: ORDER: 20 DECEMBER 2013
In the circumstances an order is
made:
1. Interdicting and restraining the
Respondent from passing off his wine as being that of the
Applicants, or as being associated
with or endorsed by the
Applicants, by making use of any name or mark consisting of or
incorporating the trade mark
SOPHIA
, or any name or mark
confusingly or deceptively similar thereto;
Directing the Respondent to pay the
costs of this application, such costs to include the costs of senior
counsel.
_______________
L. VAN BILJON
[1]
Wikipedia
,
Online Encyclopaedia
s.v.
“Sophia”
[2]
Wikipedia
,
Online Encyclopaedia
s.v
.”Bordeaux
wine”.
[3]
No wine was put on auction in 2010 and in 2011
only 80 cases were submitted.
[4]
Williams t/a Jennifer Williams and Associates
v Life Line Southern Transvaal
[1996] ZASCA 46
;
1996
(3) SA 408
(A) at 418D-H
[5]
Caterham Car Sales and Coachwork Ltd v Birkin
Cars (Pty) Ltd
[1998] ZASCA 44
;
1998 (3) SA 938
SCA at
950E
[6]
Volkskas Bpk v Barclays Bank, (D, C and O)
1952 (3) SA 343
(A) at 347;
Capital
Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc
and Others
1977 (2) SA 916
(A) at
931D-932D.
[7]
Bress Designs (Pty) Ltd v G.Y. Lounge Suite
Manufacturers (Pty) Ltd and Another
1991
(2) SA 455
(W) at 471D.
[8]
Van Heerden-Neethling,
Unlawful
Competition
(2
nd
ed) pp174-5
[9]
The estates in question are respectively
Boekenhoutskloof, Edgebaston, La Motte, Glen Carlou, Raka and
Warwick. I should hasten
to add that the random selection which I
have cited has no particular collective prominence other than
judicial affordability.
[10]
Sea Harvest Corporation (Pty) Ltd v Irvin and
Johnson Ltd
1985 (2) SA 355
(C)
[11]
On-line Lottery Services (Pty) Ltd v National
Lotteries Board
[2009] 4 All SA 470
(SCA) at 480b-c
[12]
Op cit 168
[13]
Op cit 168 fn 171 and 172
[14]
Truck and Car Co Ltd v Hirschmann
1954 (2) SA 117
(E) at 121A-B
[15]
1954 (4) SA 552
(A) at 557D-H
[16]
Neutrogena Corporation and Another v Golden
Ltd and Another
[1996] RPC 473
at 482
[17]
Union Wine Ltd v E.Snell and Co. Ltd
1990 (2) SA 180 (D)
[18]
Boswell-Wilkie Circus (Pty) Ltd v Brian
Boswell Circus (Pty) Ltd and Another
1984
(1) SA 734
(N), confirmed on appeal in
Brian
Boswell Circus (Pty) Ltd and Another v Boswell-Wilkie Circus (Pty)
Ltd
1985 (4) SA 466
(A)
[19]
Durban Gift Shop (Pty) Ltd v The Gift Box
(Pty) Ltd
1952 (4) SA 493
(N) at 496F
[20]
Durban Gift Shop
case
supra
at
496H-497A.
[21]
Adcock-Ingram Products Ltd v Beecham SA (Pty)
Ltd
1977 (4) SA 434 (W).
[22]
Oude Meester Groep Bpk and Another v S.A.
Breweries Ltd
1973 (4) SA 145
(T) at
161C-E. See also
John Craig (Pty)
Ltd v Dupa Clothing Industries (Pty) Ltd
1977 (3) SA 144
(T) at 153G;
Arsenal
Football Club P.L.C. v Reed
[2001] RPC
922
at 931
[23]
Buffalo Freight Systems (Pty) Ltd v Crestleigh
Trading (Pty) Ltd and Another
2011 (1)
SA 8
(SCA) at 14D