Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Nicholas J
• Judgment Date: 31 August 1977
• Court: Witwatersrand Local Division

Nicholas, J.:

On 4 August 1977 I made an order dismissing this application with costs on the basis of the employment of two counsel, stating that reasons would be furnished later. These are the reasons.

The applicant is a manufacturer of toiletries, proprietary medicines and household products which it markets throughout C the Republic and South West Africa. In July 1976 it introduced to the market a perfumed deodorant bodyspray for women under the name of "Je T'aime". This spray is packed in an aerosol container which is surmounted by a cap or "closing means", the design for which is the subject of design No. 76/0396, which was registered by the applicant in terms of the Designs Act, 57 of 1967.

An example of the applicant's product was placed before the D Court. It has an overall length of 18 cm and a diameter of 3,5 cm. It is red in colour, and is plain and unembellished except for the name "Je T'aime" in white cursive script running along the length of the container, and words of description and directions in small print. Sprays with other perfumes are E marketed by the applicant in containers of different colours.

The applicant says that this product enjoyed an immediate commercial success. By 30 June 1977 690 312 units had been sold to the retail trade, including all major supermarkets and most leading chemists' businesses. This amounts to some 12 per cent to 15 per cent of this part of the market.

Towards the end of July 1977 it came to the notice of the F applicant that the respondent, which is part of the international Beecham Group, and is a major manufacturer and marketer in South Africa of toiletry goods, was about to launch on the market a perfumed bodyspray under the name of "6th Sense". Like the respondent's deodorant this was to be packed in an aerosol container with a closing means. In the two cases the shape and dimensions of the aerosol container are identical G and, except for minor differences in the height, the shape and dimensions of the respective closing means are the same.

The applicant thereupon brought the present application as a matter of urgency, claiming an order interdicting the respondent from infringing the applicant's registered design, H No. 76/0396, and from marketing the respondent's product in any container so substantially similar to the applicant's container that it would be calculated to lead to the belief in the toiletry trade or among members of the public that such product was the applicant's product. It alleged that:

(a)

the shape or configuration of the respondent's closing means was substantially identical with that disclosed in the drawings of the applicant's registered design;

(b)

this shape or configuration of the closing means was unique in the

Nicholas J

market, and it was this uniqueness which had to a very large extent been responsible for the commercial success of the product and which had distinctively set it apart from the other competing products in the same market;

(c)

A it was a necessary inference from all the circumstances that the respondent had copied the applicant's closing means; and

(d)

because of the identical shape or configuration of the respondent's closing means, there was a very real risk of confusion of the respective products by the general B public, and a very real probability that the public would be deceived into thinking that the respondent's product was the product of the applicant.

The applicant accordingly submitted that if the respondent's product were allowed to enter the market place unhindered there was every likelihood that it would be passed off as the product C of the applicant, in which event the applicant's product would inevitably lose its unique position in the market and the applicant would suffer irreparable loss.

In its answering affidavit the respondent alleged that the applicant's design was not new or original within the meaning of the Designs Act, 57 of 1967, and in this connection it annexed photographs and copies of advertisements and other D documents showing the use of a dome-shaped closing means in a number of well known toiletry and other products which had been marketed in South Africa at least prior to 30 April 1976 (which was the date of registration of the applicant's design No. 76/0396).

The respondent admitted that the container used by it had the same shape and dimensions as that used by the applicant but E said - and this became common cause - that this was the container commonly used in the competing products on the market. The respondent admitted further that the closing means used by it had the same configuration as the applicant's closing means, but denied that it had copied the applicant's article, saying that...