Abbott Laboratories and Others v UAP Crop Care (Pty) Ltd and Others

• Jurisdiction: South Africa
• Judge: Cleaver J
• Judgment Date: 10 December 1998
• Counsel: MM Jansen (with her PAL Gamble) for the applicants JW Louw (with JN Cullabine) for the respondents
• Docket Number: 13459/98
• Court: Cape Provincial Division

Cleaver J:

The first applicant is the proprietor, in the Republic of South Africa, of two trade marks that are registered in terms of the provisions of the Trade Marks Act 194 of 1993 ('Act 194 of 1993'). Details of the trade marks are as follows. The trade mark 'Promalin' is registered under registration No 79/3377 F in class 1 in respect of '(a)gricultural chemicals included in this class'. The trade mark 'Abbott' is registered under registration No 1267/39/1 in class 1 in respect of '(c)hemical products used in agriculture, horticulture and forestry, manures (natural and artificial)'.

The first applicant distributes its agricultural chemical products G internationally. The second applicant is a wholly owned subsidiary of the first applicant and is the first applicant's exclusive licensee in South Africa. The second applicant is the only registered user of the trade mark 'Promalin' in South Africa.

The second respondent, being a British producer of agrochemicals, is a competitor of the first applicant. It is the proprietor of the H trade mark 'Perlan' in the United Kingdom and 'Perlan' and its 'Perlan' products are distributed in South Africa by, inter alia, the first and third respondents. The second respondent is the applicant in the Republic of South Africa for registration of the mark 'Perlan' as a trade mark under trade mark application No 97/128 in class 1 in respect of '(c)hemical products I for use in agriculture and horticulture; fertilisers, surfactant chemicals for herbicides; preparations for regulating the growth of plants'. 'Promalin' and 'Perlan' are products which are used in South Africa almost exclusively during October of each year in the apple farming sector for the purposes of improving certain aspects of fruit quality. In October of 1997 the first applicant, contending that the first respondent

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had infringed its trade mark rights in respect of A 'Promalin', applied to this Court for an interdict against the first respondent (and not against the second or third respondents). By agreement between the parties an order was granted against the first respondent on 24 November 1997, the relevant portion of which reads:

'1.1

respondent is restrained from infringing the rights of B first applicant in its trade mark registration No 79/3377 ''Promalin'' in class 1 by using, in relation to the goods in respect of which it is registered, the mark ''Promalin'', in terms of s 34(1)(a) of the Trade Marks Act 194 of 1993;

. . .

1.4

respondent is restrained from comparing, in any way, its C product Perlan to the product Promalin of applicants by use of first applicant's registered trade mark No 79/3377 ''Promalin'';

. . .'.

The events which gave rise to this application are not in dispute. Shortly stated they are the following: D

1.

The second respondent produced an A4 sized colour brochure running to some 20 pages in which the first applicant contends that

(a)

the Perlan product is compared with Promalin product and it is indicated that Perlan is a 'better product' than Promalin; and E

(b)

the trade marks 'Promalin' and 'Abbott' are used without the authority of the first applicant.

2.

Copies of the brochure were handed to the technical manager and two appointed agents of the first respondent at a training session held at the premises of the first respondent. According to the F first respondent the training session was held for the purpose of acquainting agents and employees of the distributors of Perlan 'with the products which they are selling, as well as other products on the market'.

3.

At a second training session held for one of the retail G distributors of another company, Exportos SA (Pty) Ltd, which is the second respondent's agent in South Africa for the Perlan product, four copies of the brochure were handed out to the managing director of the retail distributor and three of the distributor's agents. This session took place at the premises of the distributor.

4.

At a function held at the Stellenbosch Town Lodge by the second H respondent, in respect of which function invitations to attend had been sent out by the first respondent at the request of the second respondent, a lecture to promote the Perlan product was delivered by a representative of the second respondent. On this occasion one copy of the brochure was handed to a certain Mr Hein Punt I of the Agricultural Research Council by a director of the third respondent.

There is no doubt that the Perlan product is directly and blatantly compared to the Promalin product in the brochure, which the second respondent says consists of summaries and the results of trials conducted by four independent researchers and ten trials conducted on behalf of the J

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second respondent and confidential to the second A respondent. The trial comprised analyses of the material used in the Promalin product, the effect of these materials on russetting, fruit size, return bloom, as well as other comparisons. Examples of the comparison between the two products include

'Perlan compared to Promalin - Fruit Weight. B

Perlan tended to give larger fruit than Promalin.

Perlan compared to Promalin - Quality.

The graph below shows the reduction in russet achieved by both Perlan and Promalin.

In trials Perlan has never been outperformed by Promalin.'

I should make it clear that in the brochure the second C respondent in no way attempts to pass its product off as that of the first applicant, nor does it hold out that Perlan is identical to Promalin, as was the case with the first respondent in 1997. The second respondent makes it quite clear that the mark 'Promalin' is the property of the first applicant for at the foot of the first page of the brochure the following appears: D

' ''Promalin'' and ''Provide'' are registered trade marks of Abbott Laboratories Chicago, USA.'

The name Abbott appears in a number of places in the brochure, but there is no formal acknowledgement that Abbott is a registered trade mark of Abbott Laboratories of Chicago. The second respondent E contends that the brochure is a technical training document intended for internal purposes and the use of the second respondent and its agents only, and in support thereof I was referred to the brochure, each page of which at the top and at the foot of each page the legend: 'FAL confidential - For the internal use of FAL and its agents only.' FAL is the abbreviation of the second respondent's name. F

The first applicant's case is that the mere use of the marks 'Promalin' and 'Abbott' in the brochure constitute a trade mark infringement in terms of s 34(1)(a) of the Trade Marks Act 194 of 1993 ('the 1993 Act') and that by representing that the mark 'Perlan' is registered in South Africa the respondents are competing unlawfully with the applicants. The applicants furthermore G contend that the first respondent is guilty of contempt of Court because its involvement in the training sessions and the function in Stellenbosch constitutes a breach of the order of this Court dated 24 November 1997. I shall deal first with this latter contention.

Contempt of Court H

The first respondent's answer to the contention that it is in contempt of Court is a simple one. It is to the effect that it did not compile the brochure and that it was not responsible for handing out the brochure at the sessions. The statement in the founding affidavit I that 'respondents have again compared their Perlan product to the product Promalin of the applicants' and the statement that 'all of the respondents' are infringing the first applicant's rights in the trade mark 'Promalin' do therefore not apply to the first respondent.

From the affidavits filed on behalf of the respondents, it is clear that the brochure was produced by or for the second respondent in the J

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United Kingdom, that the overseas manager of the A second respondent brought about ten copies of the brochure to South Africa and that a total of eight brochures were given out (one to the technical manager and two to appointed agents of the first respondent, four to the managing director and three to appointed agents of the South African distributor and one to Mr Hein Punt who had been contracted by the second respondent to conduct certain trials B on the Perlan product). The remaining copies were taken back to the United Kingdom by the overseas manager. In an affidavit by a Mr Dane, the senior technical advisor of the first respondent, the deponent states that the first respondent was not in any way involved in the publication or the distribution of the brochure. He admits that the first respondent sent out invitations for the session in C Stellenbosch, but says that this was done at the request of the second respondent and that he and the first respondent were not aware of what the nature of the presentation would be. Furthermore, the first respondent did not know that any reference would be made to the brochure or that copies would be given to anyone. D

Ms Jansen, who appeared for the applicants together with Mr Gamble, sought to counter this evidence by asking me to infer on the probabilities that the first respondent must have known that the brochures would be handed out. This, she said, followed because the first session was held at the first respondent's premises and that, even if the first respondent had not known what E was going to happen at that session, it must have known that the brochures would be handed out again at the industry function which was held in Stellenbosch a few days later for Mr Dane attended the training session and must therefore have foreseen that brochures would again be handed out. Mr Louw, who together with Mr Cullabine appeared for the respondents, pointed out that F such a conclusion would amount to nothing more than speculation. There is no...