Metal Box South Africa Ltd v Midpak Blow-Moulders (Pty) Ltd

• Jurisdiction: South Africa
• Judge: McCreath J
• Judgment Date: 28 December 1987
• Court: Transvaal Provincial Division
• Hearing Date: 15 September 1987

McCreath J:

The applicant and the respondent in this matter both, in competition with each other, carry on business as manufacturers and sellers of plastic bottles which they sell to producers and bottlers of liquid products such as milk and fruit juices.

D The applicant is the proprietor of trade mark 72/1312, registered in class 21 of schedule IV to the regulations of the Trade Marks Act 62 of 1963. In the founding affidavit it is stated that the mark is registered in class 16 of schedule IV and in argument on behalf of the respondent it was suggested that the mark related to the large cardboard containers in which the plastic bottles are marketed by the applicant, and not to E the bottles themselves. It is apparent, in my view, that the reference to class 16 is an error. Each container can hold approximately 480 bottles. The goods specified in the certificate of registration annexed to the application more appropriately cover the plastic bottles and not the cardboard containers. The goods mentioned in the certificate include F (and this is the only category relevant to the items in respect whereof the mark is registered) 'small domestic utensils and containers (not of precious metals, or coated therewith)'. A perusal of the items specified in class 16 of schedule IV makes it apparent that no trade mark in respect of the plastic bottles could be registered under that class. Nor is it suggested in the papers that the certificate which is attached G thereto and to which I have referred is not the correct certificate for purposes of the present proceedings. The cardboard containers could not be covered by that certificate. Class 16 makes specific provision for cardboard and cardboard articles.

It is not disputed that trade mark 72/1312, which consists of the letters 'MB' encapsulated in a rondel device where the circle is divided vertically into two equal parts of different colour by an extenuated H diameter line, appears on the cardboard containers in which the applicant sells its plastic bottles. It is also common cause that a large number of these containers came into the possession of the respondent and were used by it on more than one occasion for purposes of packing therein the plastic bottles which the respondent itself I manufactures and then for delivering supplies of the said bottles to its clients. The applicant maintains that it at all times retained ownership of the containers thus used by the respondent. This is denied by the respondent, which contends that it obtained a lawful right thereto. It is not, however, in dispute that the applicant at no time authorised the respondent to use the containers for purposes of J packaging and supplying the latter's plastic bottles to its customers.

McCreath J

A On the strength of its allegations of ownership in the said containers, together with the fact that the respondent, through one of its directors, had, according to the applicant, undertaken to desist from using the containers, yet had breached this undertaking notwithstanding a further assurance by its attorney that the containers would not be used by the respondent, the applicant obtained, ex parte, a rule nisi B from this Court calling upon the respondent to show cause why it should not be interdicted from infringing the applicant's trade mark, passing off the respondent's products as those of the applicant, contravening the Merchandise Marks Act 17 of 1941 and trading in unlawful competition with the applicant. Certain interim relief was also granted, including an 'Anton Piller' type of order enabling the C applicant to obtain, subject to certain safeguards, possession of those documents of the respondent which would enable the applicant to assess the extent of the damages suffered by it in consequence of the respondent's allegedly unlawful activities.

The matter is now before me on the return day of the aforesaid rule nisi D to determine what relief, if any, should presently be granted to the applicant.

Certain disputes have been raised in the answering affidavits. I have already mentioned that relating to the ownership of the containers acquired by the respondent. The disputes have resulted in the applicant no longer seeking confirmation of the rule in respect of the relief E based on passing off and on any rights of ownership per se which the applicant may have to those containers which have, or may in future, come into the possession of the respondent. The applicant initially adopted the attitude, in the replying affidavits filed on its behalf, that the disputes relating to those issues should be referred to evidence. However, counsel for the applicant did not persist in this F attitude and indicated that the applicant had no objection to the discharge of the rule on those issues (being paras 2.1.33 and 2.1.5 of the rule), which was duly ordered.

I turn then to the remaining relief envisaged in terms of the rule nisi.

The first question to be decided is whether the respondent has infringed the rights of the applicant under its registered trade mark 72/1312 in G terms of the Trade Marks Act 62 of 1963. Section 44 (1) (a) of the said Act provides as follows:

'Subject to the provisions of ss (2) and (3) of this section and of ss 45 and 46 the rights acquired by registration of a trade mark shall be infringed by:

(a)

unauthorised use as a trade mark in relation to goods or services H ...