Kellogg Co and Another v Bokomo Co-Operative Ltd

• Jurisdiction: South Africa
• Judge: Van Reenen J
• Judgment Date: 25 October 1996
• Citation: 1997 (2) SA 725 (C)
• Docket Number: 12496/96
• Hearing Date: 18 October 1996
• Counsel: J W Louw (with him A De Vos) for the applicants P Ginsburg (with him O Salmon) for the respondents
• Court: Cape Provincial Division

Kellogg Co and Another v Bokomo Co-Operative Ltd
1997 (2) SA 725 (C)

1997 (2) SA p725

Citation	1997 (2) SA 725 (C)
Case No	12496/96
Court	Cape Provincial Division
Judge	Van Reenen J
Heard	October 18, 1996
Judgment	October 25, 1996
Counsel	J W Louw (with him A De Vos) for the applicants; P Ginsburg (with him O Salmon) for the respondents

Flynote : Sleutelwoorde G

Trade and competition — Trade — Passing-off — Get-up of goods — Deception as to trade source — Parties trading in breakfast cereals with trade marks 'Nutribrix' and 'Nu-Bix' — Guidelines evolved by Courts for process of comparison set out — Held on facts that get-ups of products in question so H dissimilar that no likelihood of confusion existing — Likelihood of aural confusion or deception amongst educated persons also negligible — No evidence before Court as to how illiterate persons who have heard marks but not seen them, may be confused or deceived — Court however taking judicial notice of fact that breakfast cereals sold in supermarkets and self-service shops where shoppers make choices unassisted — Packaging of products so I dissimilar that even illiterate person would not mistake one for other — In any event no evidence adduced that members of public deceived by aural use of respondent's trade mark that his product that of applicants — No case for passing-off made out.

Trade and competition — Trade — Unlawful competition — Registered trade mark not absolute defence in unlawful competition proceedings — Advancement J

1997 (2) SA p726

of personal economic interest generally a legitimate motive — Applicants A alleging that respondent rushed launch of breakfast cereal called Nu-Bix simply to thwart applicants' proposed launch of competing cereal called Nutribrix — Respondent's conduct allegedly contra bonos mores and amounting B to unlawful competition — Court analysing facts and concluding that launch date of Nu-Bix brought forward as result of commercial necessity — Respondent not having acted unlawfully.

Headnote : Kopnota

The first applicant, an American company, and the second applicant, its South African subsidiary, sought an interdict prohibiting the respondent, a rival breakfast cereal C manufacturer (1) from passing off its goods as being those of the applicants and (2) from competing unlawfully with the applicants by using the trade mark 'Nu-Bix' for one of its cereals. The respondent launched Nu-Bix late in 1996 as a line-extension to its well-known Weet-bix brand. At more or less the same time the second applicant launched a new cereal of its own called 'Nutribrix'. Applicants alleged that the D respondent was passing off Nu-Bix as Nutribrix. The Court set out the requirements for an interim interdict and sketched the general nature of the delict of passing- off. (At 732E–733C.) It pointed out that it was apparent from the manner in which the relief claimed was formulated that the applicants were relying on a deception as to trade source. (At 733D.) It further held that the fact that the trade names were confusingly similar would be relevant to an action relating to the infringement of the respondent's E registered trade mark: such similarity in the absence of proof of deception as to either trade source or business connection was incapable of founding the delict of passing-off. (At 733E.) As to whether the respondent, by using the registered trade mark Nu-Bix and the get-up employed by it impliedly represented to members of the public that its product was that of the applicants, the Court F

Held, that the total get-up of the respondent's product had to be compared with the total get-up of the applicants' product, having regard to the guidelines evolved by the Courts, namely (1) that the likelihood of confusion and deception was a matter for the Court which could not surrender its judgment in that regard to witnesses; (2) that the class of persons who were likely to be buyers of the goods in question had to be taken G into account to determine whether there was a likelihood of confusion or deception; (3) that the Court had to place itself in the position of the person of average intelligence and ordinary sight who purchased with ordinary caution; (4) that buyers did not always see the products side by side and accordingly will have to rely on imperfect recollection as regards a product's name or appearance; (5) that the likelihood of confusion was enhanced where, as in the instant case, fancy words were used as trade H names; and (6) that the possibility of imperfect articulation with or without imperfect speech also had to be taken into account. (At 734B–F/G.)

Held, further, that from the point of view of the shopper the appearance of the two products in question was as dissimilar as the dimensions of their packaging, which in I the case of Nutribrix were 25 cm x 19 cm x 5 cm and in the case of Nu-Bix 21,5 cm x 9 cm x 9 cm. The dominant colours in the Nutribrix package were shades of brown and yellow, followed by white, red and blue, and in the case of Nu-Bix dark green followed by yellow, brown, white and red. The trade names were not only in different letter types and sizes but were blue in the case of Nutribrix and green in the case of Nu-Bix. The brand name Kelloggs in red letters approximately 2,5 cm high and 8 cm wide appeared immediately above the trade name Nutribrix, and the trade name Bokomo in red letters approximately 1 cm high and 3,5 cm wide J

1997 (2) SA p727

above the trade name Nu-Bix. Both packages had photographic reproductions in A colour of two wheat biscuits in a milk-filled porridge plate. (At 734G–735A.)

Held, further, that bearing in mind that both products were ready-to-eat wheat biscuits, the respective get-ups were surprisingly dissimilar. The get-up of Nu-Bix affirmed its provenance as 'another horse out of the same stable' as Weet-bix rather B than passing itself off as the applicants' goods. (At 735A/B–B/C.)

Held, further, that in view of the finding that the respective get-ups of Nutribrix and Nu-Bix were entirely different, it remained to be considered whether a case was made out for the deception or confusion of persons who perceived the marks aurally and had C not seen them in the context of their respective get-ups. As the first syllable of the trade mark Nutribrix created in the mind of an educated person a mental picture of nourishment and the first syllable of the trade mark Nu-Bix was the phonetic equivalent of 'new', the likelihood of buyers in retail chains being deceived had to be negligible. (At 735C–D and F–G.)

Held, further, that although no evidence was adduced with regard to how and the D extent to which illiterate persons who had aurally perceived the marks and not seen them in the context of their respective get-ups could have been confused or deceived, the Court was entitled to take judicial notice of the fact that groceries were predominantly sold in supermarkets and self-service shops where shoppers made their choices unassisted. The packaging of Nutribrix and Nu-Bix was so dissimilar that not E even an illiterate person would in a supermarket or shop environment mistake one for the other. In any event, the applicants did not make out a case that members of the public were deceived by their aural perception of the trade marks into believing that the goods of the respondent were those of the applicants. (At 735G–736B, paraphrased.)

The applicants based their case for unlawful competition on Pepsico Inc and Others v F United Tobacco Co Ltd 1988 (2) SA 334 (W). They submitted that the respondent's launch of Nu-Bix was not bona fide and was done simply to thwart the applicants' proposed launch of Nutribrix, and that its conduct offended against the boni mores and therefore amounted to unlawful competition.

Held, that the submission that the conduct of the respondent was comparable to that of G the respondent in the Pepsico case (which had, upon hearing that the applicant was about to launch a product, rushed off to prepare a launching of a similar product on a small scale with the express intention of thwarting the applicant) lost sight of the facts that the respondent decided to introduce line-extensions to its Weet-bix brand and for that reason registered the trade mark Nu-Bix; that the line-extension plans faltered because of manufacturing difficulties; that because of decreasing shelfspace resulting H from increased competition in the ready-to-eat cereal market, the respondent decided on a strategy of 'brand-stretching', and having identified the products it wished to emulate, set about registering the appropriate trade marks; that though initially unsuccessful, the respondent during 1995 commenced and in August 1996 finalised I negotiations with an Australian firm for the acquisition of know-how to commence production of the intended line-extension to its Weet-bix brand; that the respondent had already commenced with the construction of a R60 million manufacturing plant; and that the respondent planned to obtain from the said Australian firm the products necessary for the launch of its line-extension products and would continue to do so until the plant came on-stream. (At 737I/J–738F.)

Held, further, that the first applicant, on the other hand, had with full knowledge J

1997 (2) SA p728

that rights to the Nu-Bix trade mark vested in the respondent, persisted with the A implementation of a decision taken in August 1996 to market its wheat biscuit under the name Nutribrix. (At 738G/H–I.)

Held, that the respondent was, on the evidence, actuated by the advancement of its own economic interests when it brought forward the launch date of Nu-Bix from B January 1997 to September 1996. This was a legitimate motive for acting and not to the detriment of the applicants. The applicants had thus failed to...