John Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd

• Jurisdiction: South Africa
• Judge: King AJ
• Judgment Date: 20 April 1977
• Court: Transvaal Provincial Division

King, A.J.:

The applicant is the registered proprietor in the Republic of South Africa of the trade mark Dobbshire, which is registered under No. 65/4328 in class 25 (Schedule IV) in respect of "men's trousers, suits, jackets, shirts, underwear and shoes". The registration has been effective since 28 October 1965. The respondent is the registered proprietor in A the Republic of South Africa of the trade mark Dupa, which is registered under No. 71/1302 in class 28 in respect of "men's clothing included in the class". The registration of the respondent's mark took place on 28 March 1971.

Since April 1976 the respondent has been marketing men's slacks B under the trade mark Dupashire. The applicant contends that this is an infringement of its registered trade mark. The respondent has adopted a get-up in regard to these slacks which the applicant contends results in the respondent passing off its goods as the applicant's goods.

The applicant claims an interdict restraining the respondent C from its alleged infringement. Before the hereinafter mentioned amendment, the applicant claimed an interdict restraining the respondent from passing off its goods as and for those of the applicant by using in relation thereto the trade mark Dupashire and /or a device consisting of a shield containing the letter "D". The labels of both the applicant and the respondent, which are sewn on to the inside of the slacks D sold by them, contain a shield. The applicant further claims delivery up to it for destruction of all goods, packages, containers, advertising matter and other documents in the possession of or under the control of the respondent bearing the trade mark Dupashire or the said device.

In his reply, Mr. Schreiner, for the applicant, moved for an E amendment of the prayers which was not opposed. The amendment was granted and in consequence the prayer for passing off is now claimed in the alternative to the claim for an interdict based on the alleged infringement of the registered trade mark and the word "or" in regard to the trade mark Dupashire and the device of a shield is deleted.

The following are the facts not disputed by the respondent and F facts averred or admitted by it. I also set out facts to which no objection was taken by the respondent in an application to strike out certain passages appearing in the applicant's founding and replying affidavits.

It was common cause that the applicant and the respondent are respectively the registered proprietors of the trade marks G Dobbshire and Dupa as set out above.

The applicant carries on business as dealers in men's clothing at Johannesburg, Kempton Park and Pretoria. The respondent carries on business as a clothing wholesaler at Johannesburg. The respondent has carried on business in the clothing industry as a wholesaler since 1956 and in particular has been selling H men's slacks in the Transvaal Province under its mark Dupa. The respondent made application to the Registrar of Patents, Trade Marks and Designs for the registration of the mark Dupashire. The Registrar was willing to accept the mark Dupashire in class 25 provided the suffix "shire" was disclosed apart from the mark.

The goods sold by the applicant under its Dobbshire trade mark consist of high quality men's slacks, suits and jackets. Approximately 90 per cent of such men's slacks are manufactured from a material known as

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"Sheen Gaberdine". The Respondent Says that the Material Is Known as "Venetian Gaberdine" and Adds that the Material Is a Very Popular One in the Trade and Appeals Particularly to Black Members of the Public. for Some Years the Respondent Has Been Using "Venetian Gaberdine" in the Manufacture of Approximately 15 Per Cent of the Slacks Manufactured by It. the Material Is Freely Available to Manufacturers of Men's Slacks and IT Is a Popular One in the Trade. the Material Is Also Used by Manufacturers of Clothing Articles under the Labels Devonshire, Brookshire, Berkshire and Ayreshire. Berkshire Is a Manufacturer of Stockings Whilst Ayreshire Is a Manufacturer of Caps.

The sale of men's clothing under its trade mark Dobbshire constitutes the major part of the applicant's trade and has been conducted on a substantial and ever-increasing scale for many years. In 1973 the applicant sold approximately 30 000 C slacks having a retail value of R658 500. Both in 1974 and 1975 the turnover was increased. In 1976 the applicant sold 31 906 Dobbshire slacks having a retail value of R827 960,70. Over the same four-year period under the trade mark Dobbshire the applicant sold jackets having a total value of approximately R325 000 and suits having an approximate value of R1 077 500. The approximate total value of the sales of slacks D in this period was R3 408 000. The number of slacks sold was approximately 139 600.

The sales of Dobbshire products have mostly taken place through the applicant's own retail outlets.

The applicant has advertised its products under the trade mark Dobbshire by advertising them in window displays at its two E retail outlets in Johannesburg, one in Kempton Park and one in Pretoria. The applicant has also advertised its Dobbshire products in "The World" newspaper at intervals from 1972 onwards. In this regard the applicant has spent R2 667,81 on advertising in "The World" newspaper from 1972 to 1976.

The use of the trade mark Dobbshire by the applicant is in conjunction with the device of a shield bearing the letter "D". F The label which forms part of the total get-up of the applicant's product is black in colour. A picture of the label is as follows:

The outline of the shield together with the diagonal lines and the small sign above the shield are in the colour orange whilst the capital letter "D" in the shield is in grey. The word Dobbshire is in grey whilst the words "Customized for" are in orange and the words "John Craig" are in grey.

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The whole of the background is black in colour.

A picture of the respondent's label is as follows:

The two lines are yellow in colour. The letters Dupa are yellow C in colour whilst the letters Shire are red in colour. The shield is yellow in colour whilst the letter "D" in the shield is red in colour. The words "Super quality" are in yellow whilst the two symbols under the letters "D" and "U" are red in colour. The whole background is black.

It is common cause that the applicant's Dobbshire trousers are of a high quality and retail for approximately R26 per pair of slacks. The respondent admits that the applicant's trousers D made of "sheen gaberdine" are sought after by black customers. The respondent contends, however, that it is the quality and look of this material which has caused these slacks to become popular and denies that the attraction consists in the applicant's label which is sewn on the inside of the slacks. A certain Maroun who has been in the clothing industry for 18 E years says that customers invariably purchase an article as a result of its quality and style rather than by its brand name.

The respondent has, since April 1976, supplied to retail stores slacks bearing the trade mark Dupashire. These slacks have the same style, cut and material as the applicant's slacks. The F respondent's slacks retail at a price between R22 and R26. The style, cut and material are also sold by many other manufacturers. The respondent also sells other trousers under its trade mark Dupa as well as under the mark Dupa Cools. There are no shields used by the respondent in the trade mark Dupa or its mark Dupa Cools.

The respondent has launched an expensive advertising campaign G to publicise the mark Dupashire which to date has cost the respondent R3 000. In addition, the respondent has caused to have printed boxes for the trousers which have cost the respondent approximately R8 000. These boxes are printed with the Dupashire label on them.

The applicant contends that it has acquired a reputation in the total get-up of its goods. This is denied by the respondent. H The applicant also contends that the use of the trade mark Dupashire is an infringement of its trade mark Dobbshire whilst the total get-up of the respondent's goods results in a wrongful passing off of its goods as and for the goods of the applicant. This is denied by the respondent. The respondent also denies that the use of the mark Dupashire so nearly resembles the mark Dobbshire as to be likely to deceive or cause confusion.

The applicant, on learning of the respondent marketing slacks under the

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trade mark of Dupashire, demanded in writing that the respondent desist from doing so, but the respondent's replies in writing amounted to a refusal to stop marketing men's slacks under the name of Dupashire with the label as set out above.

A The applicant annexed affidavits of Martin Khumalo, Paulus Ngwenya and Reginald Ngwenya. These persons in December 1976 entered men's retail stores in Johannesburg and Benoni. They each asked the salesman behind the counter for a pair of Dobbshire trousers. Each of them deposed to the fact that he B was the only customer whom the salesman was dealing with at the time and the salesman gave to each of them his undivided attention. The salesman on each occasion handed a pair of slacks to each of the deponents who paid for the slacks. Each of the deponents said that he had previously purchased Dobbshire slacks. The style and colour of the slacks seemed C identical to the Dobbshire trousers which they had owned in the past. On leaving the shops and on closer investigation, each of them realised that the label in fact bore the Dupashire mark.

The respondent denies that these deponents were confused by the respondent's label Dupashire when they bought the slacks in question. The respondent contends that any confusion which resulted was as a result of the use of the Venetian gaberdine D material. The respondent does not...