National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Hefer ACJ, Harms JA, Zulman JA, Mpati JA and Nugent AJA
• Judgment Date: 16 March 2001
• Citation: 2001 (3) SA 563 (SCA)
• Docket Number: 229/99
• Hearing Date: 05 March 2001
• Counsel: L G Bowman SC (with Owen Salmon) for the appellant. C E Puckrin SC (with R Michau) for the respondent.
• Court: Supreme Court of Appeal

National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd
2001 (3) SA 563 (SCA)

2001 (3) SA p563

Citation	2001 (3) SA 563 (SCA)
Case No	229/99
Court	Supreme Court of Appeal
Judge	Hefer ACJ, Harms JA, Zulman JA, Mpati JA and Nugent AJA
Heard	March 5, 2001
Judgment	March 16, 2001
Counsel	L G Bowman SC (with Owen Salmon) for the appellant.; C E Puckrin SC (with R Michau) for the respondent.

Flynote : Sleutelwoorde B

Trade mark — Infringement — Infringement under s 34(1)(a) of Trade Marks Act 194 of 1993 — Infringement by use of mark so nearly resembling trade mark as to be likely to deceive and confuse — Word mark, and particularly one using ordinary language, not merely combination of abstract symbols but usually recognisable as whole, and C for what it conveys — Where sense of one word mark differs markedly from that of another, and in particular where registered trade mark well known, scope for deception or confusion reduced, though these are always matters of degree.

Trade mark — Infringement — Proof of — Where packaging of respective products reproduced in Court papers, likelihood, or otherwise, of D deception or confusion to be attributable to resemblance (or otherwise) of marks themselves and not to extraneous matter.

Trade mark — Infringement — Infringement under s 34(1)(c) of Trade Marks Act 194 of 1993 — Infringement by use of mark similar or identical to trade mark notwithstanding absence of likelihood of confusion or deception — Section 34(1)(c) protects proprietor E of registered trade mark only against use of mark which is 'identical or similar' to registered trade mark — Word 'similar' as used in section having its ordinary meaning, which is 'marked resemblance or likeness' and 'marked' in turn meaning 'easy to recognise'. F

Headnote : Kopnota

The appellant was the biscuit manufacturer and holder of the registered trade mark of Romany Creams. The respondent had commenced manufacturing a similar biscuit under the name of Romantic Dreams. The appellant objected thereto. Although the respondent offered to change the name of its biscuits to Kwality Romantic Dreams, the appellant approached a Provincial Division for a restraining order. G It was unsuccessful. In an appeal,

Held, that, where the packaging of the respective products had been reproduced in the Court papers, the likelihood, or otherwise, of deception or confusion had to be attributable to the resemblance (or otherwise) of the marks themselves and not to extraneous matter. (Paragraph [7] at 569E - F.)

Held, further, that the marks were not likely to deceive or confuse by their sound. Whilst the first word of each mark had three H syllables, they were pronounced quite differently, even allowing for imperfect usage. (Paragraph [9] at 569I - I/J.)

Held, further, that a word mark, and particularly one that made use of ordinary language, was not merely a combination of abstract symbols but was usually recognisable as a whole, and for what it conveyed. Where the sense of one word mark differed markedly from that I of another (as in the present case) and, in particular, where the registered trade mark was well known, the scope for deception or confusion was reduced, though these were always matters of degree. (Paragraph [10] at 570C/D - E/F.)

Held, further, that the visual distinctions in the words which were in issue in the present case, bearing in mind that each conjured up a different picture, J

2001 (3) SA p564

were such that there was not likely to be deception or confusion as contemplated in A s 34(1)(a) of the Trade Marks Act 194 of 1993. (Paragraph [10] at 570E/F - F/G.)

Held, further, that s 34(1)(c) protected the proprietor of a registered trade mark only against the use of a mark which was 'identical or similar' to the registered trade mark. The word 'similar' as it was used in the section had its ordinary meaning, which was 'a marked resemblance or likeness' and B 'marked' in turn meant 'easy to recognise'. Romantic Dreams was not an easily recognisable likeness of Romany Creams for the same reasons that it did not fall foul of s 34(1)(a). (Paragraph [12] at 570H - J.)

The decision in the Transvaal Provincial Division in National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd confirmed.

Cases Considered

Annotations: C

Reported cases

Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (SCA): dictum at 852D applied

Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A): dictum at 640G - 641E applied D

Reckitt & Colman SA (Pty) Ltd v S C Johnson & Son SA (Pty) Ltd 1993 (2) SA 307 (A): dictum at 316B - E approved

Tri-ang Pedigree (South Africa) (Pty) Ltd v Prima Toys (Pty) Ltd 1985 (1) SA 448 (A): dictum at 468G - H applied.

Statutes Considered

Statutes

The Trade Marks Act 194 of 1993, s 34(1)(a) and (c): see E Juta's Statutes of South Africa 2000 vol 2 at 2-240.

Case Information

Appeal from a decision in the Transvaal Provincial Division (Kruger AJ). The facts appear from the judgment of Nugent AJA.

L G Bowman SC (with Owen Salmon) for the appellant.

C E Puckrin SC (with R Michau) for the respondent. F

In addition to the authorities cited in the judgment of the Court, counsel referred to the following:

Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530 (T) at 533D, 533H - 535, 536B

Asics Corporation v Nan Fang International Manufacturing and Trading Enterprises (Pty) Ltd (TPD case No 1908/96, 29 G October 1997)

Bayer Trade Mark (1947) 64 RPC 125 at 128

Baywatch Production Co Inc v The Home Corporation [1997] FSR 22 (Ch) at 30

Cambridge Plan AG and Another v Moore and Others 1987 (4) SA 821 (D) at 827B - F, 847H - 848B H

Cavalla Ltd v International Tobacco Co of SA Ltd 1953 (1) SA 461 (T) at 468G - H, 470D - E

Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another 1991 (4) SA 850 (A) at 861F - G

Darwin Ltd's Application (1946) 63 RPC 1 I

De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106 'De Gevel' Trade Mark Application March 1970 SA Patent Journal at 233

Demuth Trade Mark (1948) 65 RPC at 346

Enoch's Application (1947) RPC 119 J

2001 (3) SA p565

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