Hollywood Curl (Pty) Ltd and Another v Twins Products (Pty) Ltd (1)

• Jurisdiction: South Africa

Hollywood Curl (Pty) Ltd and Another v Twins Products (Pty) Ltd (1)
1989 (1) SA 236 (A)

1989 (1) SA p236

Citation	1989 (1) SA 236 (A)
Court	Appellate Division
Judge	Corbett JA, Smalberger JA, Milne JA, Kumleben AJA, Nicholas AJA
Heard	August 22, 1988
Judgment	September 30, 1988

Flynote : Sleutelwoorde E

Trade and trade mark — Trade — Passing off — Respondent manufacturing and marketing range of cosmetic/toiletry products aimed at Black F market since 1950's — Products marketed under several marks, registered and unregistered, all of which incorporating word 'Hollywood' — Appellant in 1981 introducing into South Africa hair products aimed at Black market under mark 'Hollywood Curl' — Respondent seeking interdicts restraining appellant from passing off its goods and business as that of G respondent — Court holding that, in order to succeed, respondent had to establish that the name, mark or get-up adopted for its goods had by user become distinctive of its goods, ie had become associated with its goods in minds of purchasing public, irrespective of whether its actual H identity as producer of goods known to public or not — Evidence indicating that respondent had used name 'Hollywood', either by itself or in conjunction with other words, in its product get-up for many years — That word 'Hollywood' most prominent feature of its product get-up, I promotional and advertising material — That get-up of its various products was similar, and different products in range advertised and displayed together — Its products were marketed on large scale and were among top-selling range in field — Black market very brand conscious and customers asked for respondent's products by 'Hollywood' name — Court concluding that ordinary purchasers would associate products sold under various 'Hollywood' marks with single producer — Respondent J had accordingly established a reputation

1989 (1) SA p237

A in name 'Hollywood' — As to likelihood of confusion, Court holding that respondent's past use of word 'Hollywood' in combination with other words rendered plausible the idea that it might market new product under name 'Hollywood Curl' — Furthermore, there had been evidence of actual confusion — Since respondent's products not unique, evidence B suggested that confusion which had occurred had been caused by appellant's use of word 'Hollywood' on its products — Court concluding that respondent had shown real likelihood of deception or confusion and that if appellant were to continue marketing goods under name 'Hollywood Curl', it would be trading on and infringing respondent's goodwill — C Interdicts against passing-off accordingly granted.

Headnote : Kopnota

The respondent company and an associate company ('C Co') were fellow subsidiaries of a holding company. In the 1950's C Co commenced manufacturing and marketing certain cosmetic products aimed at the Black market under the unregistered trade mark 'Hollywood'. During the ensuing years two trade marks, 'Hollywood 7 Day' and D 'Hollywood-Super-Scotts', were registered, each with the disclaimer that registration would not confer upon the proprietor exclusive use of the constituent words of the marks separately from the marks themselves. The product range was substantially expanded and, by 1978, 17 different cosmetic products were being marketed under both the registered marks and a number of unregistered marks, all of which marks incorporated the word 'Hollywood'. By that stage the respondent had acquired from C Co the right to use the various unregistered marks and was the registered E user of the registered marks. The products were extensively promoted and advertised in various media, were widely distributed through a large number of outlets, and were among the top-selling products in their field. The get-up of the various products was similar, different products in the range were advertised and displayed together and, in the get-up, advertising and promotional material for the range, the word 'Hollywood' received the greatest prominence. The 'Hollywood 7 Day' registered mark had a black background on which the word 'Hollywood' F was printed in white roman print.

The appellant company had been incorporated in South Africa to expand the business of its United States-registered parent company, which manufactured and marketed, inter alia, hair products targeted at the Black market under the label 'Hollywood Curl'. The mark consisted of a white or near-white background on which the word 'Hollywood' was printed in black roman print, and the word 'Curl' was printed in large G cursive script outlined in black. The products bearing the 'Hollywood Curl' mark had been marketed in South Africa since 1981. The appellant applied to register the mark in South Africa.

The respondent applied in a Provincial Division for (a) an interdict restraining the appellant from infringing its (the respondent's) registered trade marks; (b) an interdict restraining the appellant from passing off its goods as those of the respondent; and (c) an interdict restraining the appellant from passing off its business as that of H the respondent. As to (a), the respondent's case was based upon s 44(1)(a) of the Trade Marks Act 62 of 1963, ie infringement consisting of unauthorised use as a trade mark of a mark so nearly resembling the proprietor's registered mark as to be likely to deceive or cause confusion. The only issue was whether the 'Hollywood Curl' mark so nearly resembled either or both of the respondent's registered marks as to be likely to deceive or cause confusion. As to (b) and (c), the passing-off claims, the respondent founded its case on the use by the appellant of the word 'Hollywood'. The respondent's case was that it I had for many years marketed goods in the cosmetic/toiletry field under various marks - registered and unregistered - all of which included as a dominant feature the word 'Hollywood'; that in the minds of the purchasing public the word 'Hollywood' had become distinctive of the respondent's goods and that, consequently, the use by the appellant of the word 'Hollywood' in its mark 'Hollywood Curl' was likely to lead J members of the public to believe that the appellant's goods emanated from the

1989 (1) SA p238

A same source as the respondent's goods. As to the issue of the likelihood of confusion, the respondent argued that, inasmuch as the word 'Hollywood', either on its own or in one or other of the combinations used by it, had come to be distinctive of its products, there was a likelihood that the purchasing public, familiar with the 'Hollywood' range, would, on encountering a Hollywood Curl product, conclude that it was part of the respondent's product range. The three interdicts were granted. In an appeal to the Appellate Division,

B Held, as to (a), that, viewing the respective marks as a whole, both side by side and notionally in the market place, there was insufficient similarity to cause deception and confusion (and, in any event, in relation to one of its marks the respondent had disclaimed the exclusive right to the separate use of the word 'Hollywood', and no action for infringement lay in respect of the unauthorised use of a disclaimed feature).

Held, further, as to (b) and (c), that the essential enquiry was C whether the appellant, in marketing its goods under the name or mark 'Hollywood Curl', had impliedly represented to the buying public, or a substantial section thereof, that its products emanated from the respondent, or whether the appellant's use of the name or mark for its goods raised a reasonable likelihood that ordinary members of the public, or a substantial section thereof, might be confused or deceived into believing that the appellant's goods emanated from the respondent.

D Held, further, that in order to succeed the respondent had to establish that the name, mark or get-up adopted for its goods had by user become distinctive of its goods, that is associated with its goods in the minds of the members of the purchasing public, irrespective of whether its actual identity as the producer of the goods was known to the public or not.

Held, further, as to whether by the time the appellant's goods had entered the South African market the respondent had established E a reputation in the name 'Hollywood' for its goods, that the evidence indicated that the respondent had used the name 'Hollywood', either by itself or in conjunction with other words, in its product get-up for many years; that the word 'Hollywood' had been a very prominent feature of its product get-up and of its promotional and advertising material; that an extensive range of products was sold under the marks or names comprising or including the word 'Hollywood'; that such products were and had been marketed on a large scale; that the Black market was a F very brand-conscious market and that customers asked for the respondent's products by the 'Hollywood' name; and that ordinary purchasers would associate the products sold under the various 'Hollywood' marks with a single producer.

Held, accordingly, and in the absence of any real countervailing proof, that the respondent had established a reputation in the word 'Hollywood'.

Held, further, as to the likelihood of confusion, that the G respondent's past use of the word 'Hollywood' in combination with other words rendered plausible the idea that it might market a new product under the name 'Hollywood Curl' and, furthermore, that there had been evidence (of substance) of incidents of actual confusion.

Held, further, that the respondent's products were far from being unique: they were distinguished by the word 'Hollywood', and the evidence suggested that the confusion which had occurred had been caused by the appellant's use of the word 'Hollywood' on its product mark.

H Held, accordingly, that there was a...