Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Corbett JA, Miller JA, Nicholas JA, Galgut AJA and Howard AJA
• Judgment Date: 21 May 1984
• Hearing Date: 27 February 1984
• Court: Appellate Division

Corbett JA:

Appellant, a company dealing in paints and allied products, is the proprietor of a trade mark registered in terms of the Trade Marks Act 62 of 1963 ("the Act"). The trade mark in question consists of the word "Micatex". It was registered on 13 September 1971 in respect of the following goods falling within class 2 of the fourth schedule of the Trade Marks E Regulations 1963 (the regulations current at the time of registration):

"Paints, varnishes (other than insulating varnish), enamels (in the nature of paint), distempers, lacquers, preservatives against rust and against deterioration of wood and anti-corrosives, all containing mica."

Respondent is a company also carrying on business as a dealer in paints and allied substances.

F Early in 1980 appellant instituted motion proceedings against respondent in the Cape Provincial Division, alleging that respondent was using a mark which infringed appellant's registered trade mark and also was wrongfully passing off its goods as being those of the appellant; and claiming interdicts against infringement and against passing off and consequential G relief. The application was opposed by respondent, which also applied for the striking out of certain passages in a replying affidavit filed by appellant. The matter came in the first instance before VAN HEERDEN J. At the hearing appellant did not proceed with the cause of action based upon an alleged passing off. Further, it was agreed between the parties that certain H material in the replying affidavit should be struck out. The Court, having heard argument, granted an interdict restraining respondent from infringing appellant's trade mark, made an order for the delivery up for destruction of all goods etc bearing the offending mark and awarded appellant costs of suit (including the costs of two counsel), save for the costs I occasioned by the application to strike out, which costs were awarded to respondent.

Respondent appealed to the Full Bench of the Cape Provincial Division against the whole of this judgment and order, save for the portion relating to the costs of the application to strike out. Respondent also

Corbett JA

A filed an application to place certain additional evidence on affidavit before the Court, tendering at the same time to pay the wasted costs arising from the application. The Full Bench (VAN DEN HEEVER J, BAKER J and SCHOCK J concurring) allowed the appeal with costs, save for the costs of the application to adduce additional evidence on affidavit, but failed, presumably B through oversight, to substitute any order for that of the Court of first instance. It would seem, however, from the tenor of the judgment of the Full Bench that it intended to substitute an order dismissing the application with costs. Appellant applied to the Full Bench for leave to appeal to this Court. The application was opposed by respondent. The Full C Bench granted leave and ordered respondent to pay the costs occasioned by its opposition.

Before I consider the issues and arguments raised on appeal, it is necessary that I should recount the salient facts, as they appear from the affidavits. In this connection I should mention two points. Firstly, at the commencement of the hearing before us appellant's counsel informed the Court that he did not D intend to argue the alleged passing off. I think counsel acted wisely for, in my opinion, appellant did not establish on the papers a cause of action for passing off. It is thus not necessary, in detailing the facts, to refer to the evidence relating solely to passing off.

Secondly, the affidavits reveal certain disputes of fact. The E appellant nevertheless sought a final interdict, together with ancillary relief, on the papers and without resort to oral evidence. In such a case the general rule was stated by VAN WYK J (with whom DE VILLIERS JP and ROSENOW J concurred) in Stellenbosch Farmers' Winery Ltd v Stellenvale Winery (Pty) Ltd 1957 (4) SA 234 (C) at 235E - G, to be:

"... where there is a dispute as to the facts a final F interdict should only be granted in notice of motion proceedings if the facts as stated by the respondents together with the admitted facts in the applicant's affidavits justify such an order... Where it is clear that facts, though not formally admitted, cannot be denied, they must be regarded as admitted."

This rule has been referred to several times by this Court (see Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green Point) G (Pty) Ltd 1976 (2) SA 930 (A) at 938A - B; Tamarillo (Pty) Ltd v B N Aitkin (Pty) Ltd 1982 (1) SA 398 (A) at 430 - 1; Associated South African Bakeries (Pty) Ltd v Oryx & Vereinigte Bäckereien (Pty) Ltd en Andere 1982 (3) SA 893 (A) at 923G - 924D). It seems to me, however, that this formulation of the H general rule, and particularly the second sentence thereof, requires some clarification and, perhaps, qualification. It is correct that, where in proceedings on notice of motion disputes of fact have arisen on the affidavits, a final order, whether it be an interdict or some other form of relief, may be granted if those facts averred in the applicant's affidavits which have been admitted by the respondent, together with the facts I alleged by the respondent, justify such an order. The power of the Court to give such final relief on the papers before it is, however, not confined to such a situation. In certain instances the denial by respondent of a fact alleged by the applicant may not be such as to raise a real, genuine or bona fide dispute of fact (see in this regard Room Hire Co (Pty) Ltd v Jeppe Street Mansions (Pty) Ltd 1949 (3) SA 1155 (T) at 1163 - 5; Da Mata v Otto NO 1972 (3) SA 858

Corbett JA

(A) at 882D - H). If in such a case the respondent has not A availed himself of his right to apply for the deponents concerned to be called for cross-examination under Rule 6 (5) (g) of the Uniform Rules of Court (cf Petersen v Cuthbert & Co Ltd 1945 AD 420 at 428; Room Hire case supra at 1164) and the Court is satisfied as to the inherent credibility of the applicant's factual averment, it may proceed on the basis of the correctness thereof and include this fact among those upon B which it determines whether the applicant is entitled to the final relief which he seeks (see eg Rikhoto v East Rand Administration Board and Another 1983 (4) SA 278 (W) at 283E - H). Moreover, there may be exceptions to this general rule, as, for example, where the allegations or denials of the respondent C are so far-fetched or clearly untenable that the Court is justified in rejecting them merely on the papers (see the remarks of BOTHA AJA in the Associated South African Bakeries case, supra at 924A).

From the papers in this case it appears that as a result of various transactions, the details of which are not relevant, appellant acquired from other companies, whose assets now vest D in appellant, the rights to various trading styles, including "the Plascon Parthenon Paint Company", the "Crown Asbestos Paint Company" and "Crown Cebestos" and also the registered trade mark "Micatex". The latter was legally assigned to appellant on 3 January 1979 with effect from 15 November 1978.

E Some use had been made of the Micatex trade mark by appellant's predecessors in title, but it was only after appellant became entitled thereto (evidently some time before the formal assignment to appellant) that the trade mark was exploited on a large scale. Appellant used it with reference to a texture coating sold by it. The term "texture coating" F denotes to the trade and to the purchasing public a thick paintlike coating or paint primarily applied to the exterior surfaces of buildings. Because of its thick texture it produces a thick covering which hides surface imperfections, such as those encountered in prefabricated concrete slabs and off-shutter concrete, and fine cracks in imperfect plaster G finishes. It furthermore produces an extremely durable finish, which is not easily damaged or destroyed.

The desirable qualities of texture coatings have rendered them extremely popular in this country and they are produced by numerous paint manufacturers. All these manufacturers described their products as "texture coatings", "textured coatings", H "texture paints" or by minor variations of these terms. The term "texture coating" is also in general use in the building trade and contract specifications often stipulate for texture coatings of various kinds.

The texture coating sold by appellant under its Micatex trade mark contains the silicate known as mica. The mica ingredient in the texture coating constitutes approximately 9 per cent by I weight of the texture coating as a whole. It is what is termed a "filler". The other ingredients of appellant's texture coating are pigment and other fillers (not including mica) plus-minus 34 per cent; emulsion (resin) 19 per cent; and water 38 per cent. The use of mica as an ingredient is confined to speciality paints, such as texture finishes, to which it imparts additional

Corbett JA

A strength and resistance to checking and cracking. Another filler substance which Micatex contains is marble.

From the middle of 1978 appellant mounted a concentrated and costly promotional campaign, through the media of the press, the radio and television, in order to publicise its product Micatex and increase the sales thereof. In the course of this B campaign Micatex was portrayed as a particularly effective "textured exterior coating" or "exterior coating". Appellant also produced and distributed sales pamphlets and brochures. The total cost of the campaign over the period August 1978 to July 1979 exceeded R300 000. Sales figures over the period January 1978 to July 1979 for the Reef area, Natal and the Cape Province show that as from July/August 1978, when the campaign C commenced, there was a dramatic and...