Royal Beech-Nut (Pty) Ltd t/a Manhattan Confectioners v United Tobacco Co Ltd t/a Willards Foods
Jurisdiction | South Africa |
Judge | Corbett CJ, Hefer JA, Nestadt JA, Goldstone JA, nicholas AJA |
Judgment Date | 03 June 1992 |
Citation | 1992 (4) SA 118 (A) |
Hearing Date | 11 May 1992 |
Court | Appellate Division |
Corbett CJ:
The appellant applied unsuccessfully to the Transvaal Provincial Division for a final interdict based upon an alleged passing-off by the respondent. With the leave of this Court the appellant B now appeals against the whole of the judgment of the Court a quo. The facts upon which the appeal must be decided are reasonably straightforward and may be summed up as follows:
The appellant is a South African corporation which in 1989 acquired the business, together with the goodwill and trade marks pertaining thereto, C of a company known as Manhattan Confectioners (Pty) Ltd. The business formerly conducted by Manhattan Confectioners (Pty) Ltd was started in 1947 by a family partnership, which traded as 'Manhattan Confectioners', and this business was taken over in 1967 by Manhattan Confectioners (Pty) Ltd.
The partnership manufactured and distributed certain confectionery products known as marshmallows and gums and from the inception of the D business it used in relation thereto a trade mark consisting of the word 'Manhattan' written in a special manner (to which I shall later refer). The partnership's successors-in-title have continued to run the business in the same way and to make use of the 'Manhattan' mark. At present 'Manhattan' confectionery, in the marshmallow and gum categories, is sold E throughout the Republic of South Africa and in certain neighbouring countries. The usual retail outlets are supermarkets, specialist confectionery stores, rural trading stores and cafés. The number of retail distributors selling 'Manhattan' confectionery is estimated at 6 000 and appellant's turnover in the field of marshmallows and gum confectionery amounted in the year ended 28 February 1989 to R11,5 m. This represents a F 29% share of the South African market for these products.
Over the years appellant and its predecessors in the business (to whom I shall collectively refer as 'Manhattan Confectioners') have extensively advertised and otherwise promoted their 'Manhattan' confectionery. It is alleged on behalf of appellant, and not disputed by respondent, that the trade mark 'Manhattan' enjoys a 'considerable reputation' in the G confectionery field and has become distinctive of the goods marketed by Manhattan Confectioners.
The respondent trades, through one of its divisions, as 'Willards Foods'. This division manufactures and distributes what are termed 'salty H snacks', mainly potato chips. Since about 1964 the trade mark 'Willards' has been used in relation to respondent's potato chips. This mark has acquired a substantial reputation in the field of salty snacks, especially potato chips, and has become distinctive of respondent's products. At the time of the litigation in the Court a quo 37% of the potato chips sold in I South Africa (through about 23 000 outlets) were 'Willards' chips; and in the year 1988 respondent's sales of products bearing the 'Willards' trade mark exceeded R100 m in value. Respondent markets its products through the same kinds of outlets as does appellant.
In July 1989 respondent commenced marketing potato chips in packets upon which appeared not only the 'Willards' trade mark but also the mark J 'Manhattans'. In the main answering affidavit filed on behalf of
Corbett CJ
A respondent it is stated that the word 'Manhattans' and the style of its depiction on respondent's goods (about which more anon) was used in order to symbolise the well-known skyline of Manhattan Island in the City of New York and not as an attempt to imitate the mark used on appellant's confectionery products. This is not disputed by appellant.
B It is appellant's case, as presented on appeal, that in marketing its potato chips under the trade mark 'Manhattans' respondent is passing off its product 'as being connected in the course of trade' (the words used in appellant's heads of argument) with the appellant. And it seeks relief in the form of a final interdict. I should perhaps at this point make it clear that none of the trade marks hitherto referred to is registered C under the trade marks legislation.
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South Africa : Chapter 9
...of dienste”.94 Van Heerden and Neethling 1995: 209.95 Mostert 1986: 181-185.96 1995: 210.97 1977 2 SA 916 (A).98 1991 2 SA 720 (A).99 1992 4 SA 118 (A). there seem to be three requirements to be proved by the plaintiff in orderto successfully rely on leaning-on, these being:1.“that his trad......
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South Africa : Chapter 9
...of dienste”.94 Van Heerden and Neethling 1995: 209.95 Mostert 1986: 181-185.96 1995: 210.97 1977 2 SA 916 (A).98 1991 2 SA 720 (A).99 1992 4 SA 118 (A). there seem to be three requirements to be proved by the plaintiff in orderto successfully rely on leaning-on, these being:1.“that his trad......
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Suggestions for the Protection of Star Athletes and Other Famous Persons against Unauthorised Celebrity Merchandising in South African Law
...refer to the judgment of Corbett CJ in Royal Beech-Nut (Pty) Ltd t/aManhattan Confectioners v United TobaccoCo Ltd t/a Willards Foods 1992 (4) SA 118 (A). In this casethe Court approved of the decision in the Capital Estate case that the absence of a common fiel ofactivity should not preclu......