Corex Spa v Rieses Food Imports (Pty) Ltd
| Jurisdiction | South Africa |
| Judge | Irish AJ |
| Judgment Date | 24 December 2009 |
| Citation | 2010 JDR 0254 (WCC) |
| Docket Number | 12528/07 |
| Court | Western Cape High Court, Cape Town |
Irish AJ:
This is an application in which the applicant seeks the following principal relief:
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That the respondent be interdicted from passing off canned vegetable and legume products as being those of the applicant or as being connected in the course of trade with the applicant by manufacturing, marketing, selling or offering for sale canned vegetable or legume products packaged using a label and/or a trademark which so closely resembles:
the labels used by the applicant in respect of its CLASSICO and MARINA ranges of products as depicted in annexures "SP7" — "SP11" and "SP21" — "SP25" of the founding affidavit of Maria Moscato; and/or
the get-up of the applicant's MARINA range of products as depicted in annexures "SP21"-"SP25" to the founding affidavit of Maria Moscato; and/or
the trade mark MARINA,
as is like to deceive or cause confusion.
That the respondent be interdicted from infringing the copyright in:
the photographs, copies of which are depicted in annexures "SP12", "SP13", "SP15", "SP16" and "SP17" to the founding affidavit ... and incorporated into the label designs for the CLASSICO and MARINA ranges of products depicted in annexures "SP7" — "SP11 " and "SP21" - "SP25" to the founding affidavit ... ; and/or
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the labels, copies of which are depicted in annexures "SP7" – "SP11 " and "SP21" – "SP25" to the founding affidavit ..., by making any unauthorised copy or adaptation thereof.
The respondent opposes this relief and seeks in a counter-application what amounts to the mirror image of this relief in respect of its own products, alleging in its turn that the applicant is involved in actionable passing off and copyright infringement. I deal with the relief sought in the counter-application more fully hereinafter.
The contractual relationship:
The applicant is Corex SpA, a company incorporated in Italy with registered office and principal place of business in Battiplagia, in the Province of Salerno.
The applicant claims to conduct business "in the production and export" of a whole range of canned fungibles. These are alleged to carry the applicant's trademarks Campagna, Terra di Liguria, Valle del Sole, Classico and Marina, the last two being particularly applied to canned tomatoes and legumes. These allegations are disputed.
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The respondent is Rieses Food Imports (Pty) Limited, a South African company with principal place of business in Centurion Business Park, Milnerton in the Western Cape, where it conducts business as an importer, distributor and wholesaler of foodstuffs from various suppliers in various parts of the world. It is represented in these proceedings by a director, Isy (Isaac) Franco. The business of the respondent was originally started in 1992 as a partnership ("RFI") of which the deponent was the manager. This business was sold to the respondent as a going concern, with all assets and liabilities, with effect 1 March 2005. When I refer to the "respondent" herein, accordingly, I include where appropriate its predecessor.
The respondent alleges that the applicant is a supplier (rather than manufacturer) of foodstuffs, which goods are packed for the applicant by various factories. In reply, the applicant's representative states that it engages in what is known as "toll packing", which is supplying a cannery with raw product, and contracting with the cannery to can and pack the products to the customer's specification, using cans and labels supplied for the purpose by the customer.
It is accordingly common cause that the applicant sources raw materials which it causes to be canned and labelled by various factories to its requirements, for customers in many different parts of the world.
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The applicant's founding affidavit is attested to by Maria Moscato, who states that she is the applicant's managing director. The application is supported by a confirmatory affidavit from Gianni Rainone, who identifies himself as an artistic director at Grafica Artisfica Meridionale, of Roccapiemonte, Italy, in respect of averments in the founding affidavit concerning himself, and by a further confirmatory affidavit by the applicant's attorney or record, Mr Gordon Rushton.
Moscato claims that the facts deposed to are within her personal knowledge "unless the contrary appears from the context hereof or is specifically so stated". This allegation attains a heightened significance, since the respondent attacks significant elements of the content of the founding affidavit as constituting hearsay evidence.
She states that she has been actively involved in the applicant's export sales office for the last 15 years and initially stated that she has been directly responsible for the applicant's export staff who, together with her, have had direct commercial contact with the respondent and its predecessor, RFI. This statement having been challenged in the answering affidavit by Franco, the deponent corrected this in reply to an averment that the export staff who did have direct contact with RFI and the respondent and who managed the account, reported to her. However, she reiterated that all decisions regarding the account would have had to be approved by her and that it was indeed she
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who signed a certain written agreement entered into between the applicant and RFI, represented by Franco, during 2003.
The agreement in question is annexure "SP20" to the founding affidavit. It is on applicant's letterhead and is dated "Battipaglia, 08 August, 2003". It reads as follows:
"We CO.R.EX S.p.A …. hereby declare that MARINA is a brand of CO.R.EX S.p.A property and that, for marketing reasons, we authorize RFI (Rieses Food Imports) to distribute MARINA whole peeled tomatoes 440gr with following bar code ... ; MARINA whole peeled tomatoes 800gr with following bar code ....; MARINA Butter beans 400gr with following bar code ….; MARINA Chick peas 400gr with following bar code ....: MARINA Red Kidney beans 400gr with following bar code ….: on the South African market.
CO.R.EX. S.p.A will have the right to recede from this agreement with immediate notice reserving all rights as the only owner of MARINA brand."
It bears signatures above the typed names "CO.R.EX SpA (Maria Moscato)" and "R.F.I. Isy Franco" respectively.
Moscato, however, alleges that the applicant had sold product in South Africa under its MARINA trademark prior to the aforesaid agreement and, indeed, "since at least 1994". This, was allegedly in terms of an oral agreement
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concluded between applicant and RFI, represented by one Alessandro Pisani (the applicant's then managing director) and Franco respectively, in terms whereof RFI was appointed as a "distributor for certain of the applicant's products".
This allegation, characterised as "hearsay", is partly denied by the respondent's deponent, Franco. He says that he met Pisani in 1994 at a trade show in Paris, when it was agreed that the respondent would buy Italian canned tomatoes and legumes from the applicant and that the applicant would, in turn, not sell these products to any other South African importer under the name MARINA. The respondent further denies the averment of the applicant that RFI was "appointed as a distributor" for any of the applicant's products. Franco avers that RFI — and subsequently the respondent — bought product from the applicant in Italy, which it distributed and sold in South Africa acting as a principal for its own account and not as a representative or agent.
In particular, Franco states that the applicant exercised no control whatsoever over the trading activities in South Africa, including activities relating to the importation, sale, distribution and marketing of goods bearing the MARINA mark.
In her replying affidavit, Moscato effectively abandons reliance on her version of the oral agreement, commenting that she understands "that it is by no
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means incorrect to categorise that relationship as one of principal and agent." She goes on to argue that, on the respondent's "own version" the relationship was "at least one of a supplier of goods to an importer and distributor" and she elsewhere acknowledges that RFI purchased the applicant's goods as the sole distributor in South Africa of such goods".
This being an application for final interdictory relief and the rule laid down in Stellenbosch Farmers Winery Ltd v Stellenvale Winery (Pty) Ltd 1957 (4) SA 234 (CPD) at 235 being of application, the respondent's version would in any event be that which would be accepted for the purpose of testing whether relief could be granted, quite apart from any consideration of the extent to which the applicant has conceded at least elements of the respondent's version of the agreement in reply. It is accordingly unnecessary to decide whether or not a case has been made out for the reception of those aspects of Moscato's evidence that constitute hearsay, in accordance with the provisions of section 3(1)(c) of the 1988 Law of Evidence Amendment Act.
It is worth pointing out that, in correspondence between the parties prior to the launching of these proceedings, these issues were extensively canvassed so that the extent of the factual dispute between the parties was already clearly delineated. The applicant's election to proceed by motion was therefore made with full appreciation of the evidential implications of such choice.
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The passing off claims:
From 1994 until 2002, accordingly, canned goods under the Marina label were sold in South Africa in terms of the aforesaid oral agreement. During 2002, the Marina labels were...
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