Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd

• Jurisdiction: South Africa
• Citation: 2001 (3) SA 884 (SCA)

Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd
2001 (3) SA 884 (SCA)

2001 (3) SA p884

Citation	2001 (3) SA 884 (SCA)
Case No	286/2000
Court	Supreme Court of Appeal
Judge	Harms JA, Schutz JA, Zulman JA, Cameron JA and Mthiyane JA
Heard	May 11, 2001
Judgment	May 18, 2001
Counsel	C F Puckrin SC (with R Michau) for the appellant.; P Ginsburg SC (with O Salmon) for the respondent.

Flynote : Sleutelwoorde B

Trade and competition — Trade — Passing-off — Get-up of goods — Parties producing coconut biscuits under names of 'Tennis' and 'Tea Lovers' respectively — Packaging of 'Tea Lovers' alleged to have been changed to pass off 'Tennis' biscuits' packaging — Having regard to whole get-up, including colours, arrangements of matter and letters, there C was immediate and striking similarity between rival packagings — That being so if one compared them side by side — Same could be said if they were displayed in quantity on supermarket shelf — Facts that participant in market chose to imitate competitor's get-up and then sought to maintain its imitation, suggested that it believed and had confirmation of its belief that imitation conferred on it some advantage that D original get-up would not — Inference properly drawn that makers of 'Tea Lovers' had such belief — Basis for drawing inference strengthened by explanation or lack of explanation for manner in which it changed wrapping of its biscuits from that formerly in use to one in issue — Attempt not to distinguish but rather to confuse two products demonstrated. E

Delict — Passing off. See Trade and competition — Trade — Passing off.

Headnote : Kopnota

The respondent had been selling coconut biscuits under the name of Tennis biscuits for a number of years. In 1990 it had altered the shape of it packaging, but reverted to the previous size in July 1998. The packaging, although in different sizes, was similar in appearance. Before July 1998 the appellant had changed its Tea Lovers biscuits' packaging to one which the respondent alleged was an impermissible F copy of theirs. The similarities were a lustrous white background, a baker logo on the top left corner, a scatter of biscuits (using the same colour) on the right side and similar lettering in both of the two marks used on the packaging. The respondent had applied for and obtained an interdict in a Provincial Division restraining the appellant from using the packaging it was using. The respondent G had, inter alia, used the evidence of one customer who had been confused by the similarities in packaging and had further sought to prove that the appellant had acted fraudulently. Although the appellant had been requested by the respondent to reveal its instructions to its design agency, its so-called job bag, the appellant had declined to do so, as it was irrelevant. In an appeal, H

Held, that when one had regard to the whole get-up, including the colours, the arrangements of matter and the letters, there was an immediate and striking similarity between the rival packagings, whether one looked at the longer or the shorter of the respondent's packs when making the comparison. That was so if one compared them side by side. The same could be said if they were displayed in quantity on a supermarket shelf. (Paragraph [8] at 889D - E.) I

Held, further, that, even if the respondent's witness was alone, she had fallen into a trap into which many a careful person might have fallen. (Paragraph [9] at 890B - C.)

Held, further, that the facts that a participant in a market chose to imitate its competitor's get-up and then sought to maintain its imitation suggested J

2001 (3) SA p885

that it believed and had had confirmation of its belief that imitation conferred on it some advantage that an A original get-up would not. The inference should properly have been drawn that the appellant had such a belief and also knew that the job bag would have revealed that it was sailing as close to the wind as it thought it could. The basis for drawing this inference was strengthened by the appellant's explanation or lack of explanation for the manner in which it changed the wrapping of its biscuits, in 1998, from that B formerly in use to the one in issue in this case. (Paragraphs [14] and [15] at 891A/B - C/D.)

Held, further, that it had been demonstrated that there had been an attempt not to distinguish the appellant's mark from the respondent's but rather to confuse the two. (Paragraph [19] at 892C/D - E.)

Held, accordingly, that the likelihood of deception and confusion had been established. (Paragraph [20] at 892G.) C

Cases Considered

Annotations

Reported cases

Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W): dictum at 437F - 438A applied D

Crossfield & Son Ltd v Crystallizers Ltd 1925 WLD 216: applied

Harrods Ltd v Harrodian School Ltd [1996] RPC 697 (CA): dictum at 706 applied

National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA): referred to

Pasquali Cigarette Co Ltd v Diaconicolas & Capsopolus 1905 TS 472: applied E

Payen Components SA Ltd v Bovic CC and Others 1995 (4) SA 441 (A): referred to

Policansky Bros Ltd v L & H Policansky 1935 AD 89: dictum at 98 applied.

Case Information

Appeal from a decision in Transvaal Provincial Division (South- wood J). The facts appear from the reasons for judgment. F

C F Puckrin SC (with R Michau) for the appellant.

P Ginsburg SC (with O Salmon) for the respondent.

In addition to those cited in the judgments of the Court, counsel for the parties referred to the following authorities: G

Adidas Sportschuhfabriken Adi Dassler v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530 (T) at 538G - 539A

Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano Ltd and Others 1981 (2) SA 173 (T) at 188H - 189A

Bress Designs (Pty) Ltd v G Y Lounge Suite Manufacturing (Pty) Ltd 1991 (2) SA 455 (W) H

Cadbury-Schweppes (Pty) Ltd v The Pub Squash Co Ltd [1981] RPC 429 (PC)

Capital Estate & General Agencies (Pty) Ltd v Holiday Inns Inc 1977 (2) SA 916 (A) at 929C

Caterham Car Sales & Coachworks Ltd v Birkins Cars (Pty) Ltd and Another 1998 (3) SA 938 (A) at 950G - H I

Distilleerderij Voorheen Simon Rinjbende & Zonen v Rolfes, Nebel & Co 1913 WLD 3 at 9

Elgin Fireclays Ltd v Webb 1947 (4) SA 744 (A) at 749 - 50

H P Bulmer Ltd and Showerings Ltd v J Bollinger SA and Champagne Lanson Pere et fils [1978] RPC 79 (CA) at 93 J

2001 (3) SA p886

Jennifer Williams & Associates and Another v Life Line Southern Transvaal 1996 (3) SA 408 (A) at 418D A

John Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd 1977 (3) SA 144 (T) at 156B, 157H - 158A

Munster Estates (Pty) Ltd v Killarney Hills (Pty) Ltd 1979 (1) SA 621 (A) at 624C - G B

Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 641C - D

Premier Hangers CC v Polyoak (Pty) Ltd 1997 (1) SA 416 (A)

Reckitt & Colman Products Ltd v Borden Inc and Others [1990] RPC 341 (HL) at 402 (25 - 50) C

Reckitt & Colman SA (Pty) Ltd v SC Johnson & Son (Pty) Ltd 1993 (2) SA 307 (A) at 318A - B

Schultz v Butt 1986 (3) SA 667 (A) at 678F - 679E, 683C - D

Slazenger & Sons v Feltham & Co (1889) 6 RPC 531 at 538

Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501 (CA) at 533 (44) D

Taylor & Horne (Pty) Ltd v Dentall (Pty) Ltd 1991 (1) SA 412 (A)

The Financial Times Ltd v Evening Standard Co Ltd [1991] FSR 7

Union Wine Ltd v E Snell & Co Ltd 1990 (2) SA 189 (C)

Webster-Stephen Products Co v Alrite Engeneering (Pty) Ltd and Others 1992 (2) SA 489 (A) at 504H - 506D E

Halsbury's Laws of England 3rd ed vol 38 at 597

Wadlow Law of Passing Off 2nd ed at 197

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