Reckitt & Colman SA (Pty) Ltd v S C Johnson & Son (SA) (Pty) Ltd

• Jurisdiction: South Africa
• Citation: 1995 (1) SA 725 (T)

Reckitt & Colman SA (Pty) Ltd v S C Johnson & Son (SA) (Pty) Ltd
1995 (1) SA 725 (T)

1995 (1) SA p725

Citation	1995 (1) SA 725 (T)
Case No	17572/94
Court	Transvaal Provincial Division
Judge	Southwood J
Heard	September 1, 1994
Judgment	September 16, 1994

Flynote : Sleutelwoorde D

Trade — Unlawful competition — Deception and confusion as to origin of E goods — Applicant manufacturer and marketer of air freshener called 'Neutra Air' — Respondent intending to launch competing product called 'Neutra Fresh' — Applicant alleging that respondent's conduct amounting to unlawful competition in that word 'Neutra' had become distinctive and that use thereof by respondent on identical product would cause deception or F confusion as to origin of respondent's goods — Applicant however expressly disavowing any reliance on passing off as cause of action — Applicant, by doing so, creating insurmountable problem for itself inasmuch as factors advanced by it precisely those to be shown in passing-off proceedings and not clear on what other basis relief could be granted — Court nevertheless G proceeding to consider whether the applicant's contentions borne out by facts — Applicant's failure to seek registration of word 'Neutra' simpliciter as trade mark significant in light of its contention that word on its own had become distinctive — Even if this were so, clear that respondent intended to use word as part of name of its product in a get-up H incorporating its well-known 'Glade' trade mark, whereas applicant's product would incorporate its equally well-known 'Haze' trade mark — Generally accepted that use of well-known and distinctive trade marks (in casu 'Haze' and 'Glade') on competing products an important distinguishing feature — Name of respondent's product ('Neutra Fresh') different from I name of applicant's product ('Neutra Air') and get-ups of respective products quite different — In light of above, use of word 'Neutra' in respondent's get-up not capable of resulting in deception or confusion as to origin of respondent's product — Application for interim interdict J accordingly dismissed.

1995 (1) SA p726

Headnote : Kopnota

A The applicant approached the Court for an interim interdict prohibiting the respondent from using, selling, marketing or distributing containers or advertising material depicting, in regard to air fresheners, the word 'Neutra', either on its own or in conjunction with other words. It appeared that the applicant had developed a new type of air freshener called 'Neutra Air' which was packaged in a distinctive container. The applicant had applied for the registration of the product in terms of the Trade Marks Act 62 of 1963 under the name 'Haze Neutra Air'. It B subsequently came to the applicant's attention that the respondent was about to launch a product called 'Neutra Fresh' in direct competition with its 'Neutra Air' product, and that the respondent had for this purpose applied for the registration of the trade marks 'Glade Neutra Fresh' and 'Neutra Fresh'.

In its founding affidavit the applicant contended, in language redolent of a passing-off action, that the respondent's use of the word 'Neutra' was C 'intentionally aimed . . . to be confusingly similar to applicant's "Neutra Air", to represent and pass off respondent's product as that of applicant or as being associated with applicant and with applicant's advertising campaign'. The applicant, however, submitted that the cause of action was the delict of unlawful competition in that (1) the word 'Neutra' had through use become distinctive and (2), if the respondent incorporated that word in any way into the get-up of its product, it would give rise to deception or confusion as to the origin of the respondent's D product. The respondent did not dispute that it intended to launch a competing product by the name 'Glade Neutra Fresh' or that it would be marketed in a container similar in size and shape to that of 'Neutra Air'. It denied, however, that it sought to copy the applicant's trade mark or the get-up of its 'Neutra Air' product, or that any deception would result from its use of the 'Glade Neutra Fresh' trade mark. It also denied that it was competing unlawfully with the applicant.

Held, that the applicant, by disavowing any reliance on passing off as a E cause of action, had created an unsurmountable difficulty for itself: the founding affidavit attempted to make out a case of passing off, and if the applicant did not rely thereon, it was not clear on what other basis relief could be granted. (At 730G/H-H.)

The Court nevertheless proceeded to consider whether the applicant's contentions in (1) and (2) above were borne out by the facts.

Held, further, that a further difficulty facing the applicant was that it F was not, in the absence of statutory protection, unlawful to copy and make use of the published ideas and concepts used by a trade rival. (At 731A-A/B.)

Held, further, as to the requirement of distinctiveness, that the applicant's failure to register the word 'Neutra' simpliciter as a trade mark was significant in the light thereof that its contention was that the word on its own had become distinctive: even if this were so, it was clear that the respondent intended to use the word as part of the name of its product in a get-up which would incorporate the respondent's well-known G trade mark 'Glade', whereas the applicant's product would incorporate its equally well-known 'Haze' trade mark. (At 732F-G and 733C-C/D and F.)

Held, further, that it was clear that the name of the respondent's product ('Neutra Fresh') was different from the name of the applicant's product ('Neutra Air') and that the get-ups of the respective products were very different. (At 733D.)

Held, further, that it had been accepted that the use of well-known and H distinctive trade marks on competing products (in casu 'Haze' and 'Glade') was an important distinguishing feature. (At 733F-G.)

Held, further, that the use of the word 'Neutra' in the respondent's get-up could not, in the light of the above, result in any deception or confusion as to the origin of the respondent's goods. (At 733G/H.)

Held, further, that the applicant had accordingly not established even a I prima facie right for the purposes of interim relief. (At 733H.)

Held, further, that the balance of convenience also did not, in the light of the evidence, favour the applicant. (At 733H/I.) Application accordingly dismissed.

Case Information

Application for an interim interdict. The facts appear from the reasons for judgment.

M J Fitzgerald for the applicant.

C E Puckrin SC (with him A B S Franklin) for the respondent. J

1995 (1) SA p727

Cur adv vult. A

Postea (September 16).

Judgment

Southwood J:

This matter comes before me by way of urgency.

The applicant seeks an order that pending the final determination of an action to be instituted by the applicant against the respondent for a B final interdict and/or damages and/or alternative relief, the respondent be interdicted and restrained, by itself or through its servants or agents from using, selling, marketing, distributing, or publishing in any manner, and from causing or promoting the use, sale, marketing, distribution or publication of all or any containers, advertising material, or other C printed or reproduced matter of whatsoever nature describing or depicting in regard to air fresheners, air deodorants, air purifying preparations, odour neutralisers, or deodorisers, the word 'Neutra' either alone or in conjunction with, or incorporated into any other word, phrase or expression, other than the word 'neutraliser'. In the notice of motion this order was sought in the form of a rule nisi but at the hearing the D applicant's counsel indicated that, in view of the fact that all the necessary affidavits had been filed and the respondent was represented by an attorney and counsel, an interim order should be granted without a rule nisi.

The background to this matter is briefly as follows: the applicant is a South African company which is a wholly owned subsidiary of a company E registered in the United Kingdom, Reckitt & Colman PLC. The applicant manufactures and markets a wide range of commodities, including a range of air freshener products which are marketed under the trade mark 'Haze'. The respondent is also a South African company but is a wholly owned subsidiary of S C Johnson Inc of Wisconsin, United States of America. The respondent also manufactures and markets in South Africa a range of air F freshener products. These...