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

• Jurisdiction: South Africa
• Judge: Corbett CJ, Nestadt JA, Vivier JA, Goldstone JA and Harms AJA
• Judgment Date: 28 November 1991
• Citation: 1993 (2) SA 307 (A)
• Hearing Date: 01 November 1991
• Court: Appellate Division

Harms, AJA.:

'Brasso', a metal polish manufactured and marketed by the appellant, is a product known in practically every household in this D . 'To Brasso' forms part of the vocabulary of every soldier, national serviceman and domestic servant. Brasso is sold under a distinctive get-up in metal containers of three sizes, namely 125, 250 and 500 ml, and until March 1987 monopolised the market for metal polishes. E 'Brillo' is also a well-known trade mark which has been used since about 1948 in connection with scouring pads. In order to capitalise on the reputation of the 'Brillo' brand name the respondent, during the latter half of the 1980's, began to extend the Brillo product range. It introduced a floor cleaner and an oven cleaner. But when it began to market a Brillo brass polish the appellant perceived a threat to Brasso. The appellant was especially irked by the fact that the respondent F consciously adopted the identical type of container used by the appellant not only for Brasso but also for its Silvo (a silver polish) and Zebo (a stove polish).

The upshot was that the appellant applied to the Transvaal Provincial Division, on notice of motion, for a final interdict restraining the marketing of the Brillo brass polish in the then current get-up on three grounds:

(a)

G passing off, in that it is alleged that the respondent had entered the metal polish market with the deliberate intention of passing off its Brillo product as that of the appellant's Brasso;

(b)

a contravention of the provisions of ss 6 and 7 of the Merchandise Marks Act 17 of 1941. The allegation was that the respondent's use H of the trade mark 'Brillo' was without the assent of the trade mark owner; it therefore, allegedly, falsely applied a third party's trade mark to its goods;

(c)

a contravention of the provisions of s 9(a) and (b) of the Trade Practices Act 76 of 1976. Its case was that a legend 'Working Hard 75 Years' on the Brillo container was in a material respect false.

I The Court a quo (per Heyns J) dismissed the application with costs but subsequently granted leave to appeal to this Court. It is common cause that, as far as factual disputes are concerned, the case has to be decided according to the principles laid down in Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 634E-635D.

J Brasso was introduced to the South African market during 1904 and the

Harms AJA

A name has been registered as a trade mark since 1926. Although it is a relatively slow selling product, over the years 1985-6 approximately 2000000 tins were sold annually. As indicated, it held a virtual monopoly in the metal polish field. It may be mentioned in passing that it is sold in 70 countries and that South Africa is its third largest market. B The trade mark 'Brasso' has always been used in conjunction with what will be referred to as a 'sun-ray' device, ie broad rays expanding from a central point. The sun-ray device was modernised from time to time but it retained its essential features. During 1973 a new trade mark was registered consisting of the word mark 'Brasso' and, thereunder, in combination, a sun-ray device consisting of 12 emitting rays which end in C a rectangular shape. It was registered in connection with substances and preparations for cleaning and polishing. The mark appears in the following form on the trade marks register: D

E Since then this trade mark has formed the basis of the appellant's get-up. It appears twice on every Brasso tin, each instance covering approximately one third of the circumference of the container. The trade mark registration is not limited as to colour but the colours used are red for the name and also for the right hand half of the sun-ray device. The F other half of the device is blue and everything is set against a white background. The name and the sun-ray device are separated by a description of the contents of the container, viz 'metal polish' or 'metaalpolitoer', also in blue. A small 'Reckitt' trade mark, consisting of an 'R' in a distinctive script and the name 'Reckitt' appears in blue above the last G letter of the name 'Brasso'. Below the sun-ray device there is written in red 'BRINGS OUT THE TRUE BEAUTY OF COPPER AND BRASS' or 'BRING DIE WARE PRAG VAN KOPER NA VORE'. Between the two Brasso trade marks there is, in blue, descriptive matter such as directions for use, the name and address of the manufacturer as well as a bar code.

H The Brillo brass polish is not only sold in containers of identical shape but also identical sizes. The tins are in fact supplied by the same manufacturer. It was introduced to the market during March 1987 and is somewhat lower priced than Brasso. As part of the respondent's market strategy it requested retailers (especially supermarkets) to allocate to Brillo equal shelf space in the immediate proximity of Brasso. On the Brillo tin the additional trade mark 'Johnson' appears in red and, I thereunder, at an angle, the name 'Brillo': its 'i' and 'o' are in red and the other letters in blue. As in the case of Brasso, the background is white. A yellow oval 'hat' caps the 'B' of Brillo and contains the legend 'Working Hard 75 Years'. Below the trade mark 'Brillo' the words 'brass polish' appear in blue capitals. The lower half contains a shooting star J which has a large whitish

Harms AJA

A round centre with a yellow rim. Its rays are asymmetrical and change from yellow to red. In the star the words 'for a brilliant lasting shine' appear in fairly bold blue type. This get-up covers one half of the circumference of the tin and the other half contains, in red and blue, directions, a guarantee and warning as well as a bar code.

B In order to assist in understanding the description of the respective get-ups, a photograph of the Brasso and Brillo tins is reproduced below.

Passing off A

The essential issue on the question of passing off in the present case is whether the respondent, by using the Brillo get-up in relation to a brass polish, is representing to the public that Brillo is the appellant's product (ie a deception as to trade source) or that it is connected in the course of trade with the appellant's business (ie a deception as to B business connection). In both cases it must be established that the Brillo get-up was calculated to deceive. Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 437-8; Cambridge Plan AG and Another v Moore and Others 1987 (4) SA 821 (D) at 838B. That means that there was a reasonable likelihood that members of the public would so be deceived by the representation. Capital Estate and General Agencies (Pty) Ltd and C Others v Holiday Inns Inc and Others 1977 (2) SA 916 (A) at 929C-D; Brian Boswell Circus (Pty) Ltd and Another v Boswell-Wilkie Circus (Pty) Ltd 1985 (4) SA 466 (A) at 478.

In considering whether there was an imitation of the distinctive Brasso get-up, it should be remembered that the likelihood of confusion or D deception is a matter for the Court and that the judgment of the Court must not be surrendered to any witness. Payton and Co Ltd v Snelling Lampard and Co Ltd [1901] AC 308 ([1900] 17 RPC 628) at 635 (RPC); AG Spalding & Bros v A W Gamage Ltd [1915] 32 RPC 273 (HL) ([1914-15] All ER Rep 147) at 286-8 (RPC); Parker-Knoll Ltd v Knoll International Ltd [1962] E RPC 265 (HL) at 291-2. The evidence of the psychologists and linguistic experts tendered in this regard was singularly unhelpful, if not inadmissible because, as is so often the case, in the final analysis it tended to disguise opinion as a statement of scientific principle or fact and attempted subtly to displace the Court's value judgment with that of F the witness.

A rule of long standing requires that the class of persons who are likely to be the purchasers of the goods in question must be taken into account in determining whether there is a likelihood of confusion or deception. In American Chewing Products Corporation v American Chicle Company 1948 (2) SA 736 (A) at 743-4 regard was had to the fact that G addicts of the gum chewing habit included a large number of children and illiterates and in William Edge and Sons Ltd v William Nicolls & Sons Ltd [1911] AC 693 ([1911] 28 RPC 582 (HL)) at 593 (RPC) the probability of confusion amongst illiterate washerwomen, who were said to be the main purchasers, was considered. It is not surprising that the racial and cultural diversity to be found in this country has been referred to in the H evidence. It was pointed out that blacks and whites present different customer profiles and that there are many members of the public who are, in differing degrees, illiterate. One of the greatest problems facing illiterate persons is their inability to cope as consumers. It was, in effect, submitted that in the light of these facts and the fact that illiterates purchase metal polishes, a Court should demand of a competitor I such as the respondent that it takes additional steps to attain a higher

level of distinctiveness in order to prevent the possibility of confusion or deception than would otherwise have been necessary.

The problem in this case is, however, that it is not possible to classify the consumers of...