Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd

• Jurisdiction: South Africa
• Judge: Harms JA, Schutz JA, Zulman JA, Cameron JA and Mthiyane JA
• Judgment Date: 18 May 2001
• Citation: 2001 (3) SA 884 (SCA)
• Docket Number: 286/2000
• Hearing Date: 11 May 2001
• Counsel: C F Puckrin SC (with R Michau) for the appellant. P Ginsburg SC (with O Salmon) for the respondent.
• Court: Supreme Court of Appeal

Schutz JA:

[1] 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 G 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 H 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. Perhaps the main reason why the record became unnecessarily inflated was that the applicant (the respondent on appeal - 'National Brands') ran another case in I tandem with its passing-off case, namely one based on unlawful competition. This, despite what was said (if not in so many words) in Payen Components SA Ltd v Bovic CC and Others 1995 (4) SA 441 (A) at 453G - H concerning the illegitimacy of using some general notion of unlawful competition to J

Schutz JA

create an ersatz passing off with requirements (in the alternative) less exacting than those required by A the common law. Some of the restraints that the common law places on the passing-off action (the one relevant to this case is the need to prove the likelihood of deception and confusion) are important in preventing the creation of impermissible monopolies. That is all I have to say on the alternative cause of action, save that it is a pity that the appellant did not ask for a special order for costs. B

[2] The simple principle in passing off is stated by Solomon J in Pasquali Cigarette Co Ltd v Diaconicolas & Capsopolus 1905 TS 472 at 474 to be:

'(N)o man is allowed to pass off his goods as the goods of another person; no manufacturer of goods is allowed to represent to the C public that the goods which he is selling are the goods of a rival manufacturer.'

[3] The more detailed rules have been articulated so frequently and consistently that I need make only the briefest reference to them. 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 D 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 E (from whom I have been quoting) in Crossfield & Son Ltd v Crystallizers 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. F

[4] 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, G Crossfield at 221 and Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 437F - 438A.

[5] National Brands has been selling its 'Tennis' coconut biscuits since 1911. In 1990 it altered the shape of its package so that it measured 240 x 65 x 40 mm with a net content of 200 g. In July 1998 it reverted to the size which it had used before 1990 - 140 x H 60 x 60 mm, the weight being the same, whilst the biscuits were differently packed. Some months before July 1998 the appellant, 'Blue Lion', had commenced selling its 'Tea Lovers' coconut biscuits under their present get-up, also in a size 140 x 60 x 60 mm. A feature of all three sealed packets, that is those of National Brands and of Blue I Lion, is that the background is a lustrous white. Representations of the three packets are appended to this judgment. During argument attention was directed to the top of the packet and not the sides, ends or bottom.

[6] On the left hand top of the Tennis packet is a prominent quadrant of J

Schutz...