Royal Beech-Nut (Pty) Ltd t/a Manhattan Confectioners v United Tobacco Co Ltd t/a Willards Foods

• Jurisdiction: South Africa
• Citation: 1992 (4) SA 118 (A)

Royal Beech-Nut (Pty) Ltd t/a Manhattan Confectioners v United Tobacco Co Ltd t/a Willards Foods
1992 (4) SA 118 (A)

1992 (4) SA p118

Citation	1992 (4) SA 118 (A)
Court	Appellate Division
Judge	Corbett CJ, Hefer JA, Nestadt JA, Goldstone JA, nicholas AJA
Heard	May 11, 1992
Judgment	June 3, 1992

Flynote : Sleutelwoorde F

Trade and trade mark — Trade — Passing-off — Implied representation by trader by adopting trade mark of his rival or one closely resembling it that his goods are those of or connected in some way with those of his G rival — Plaintiff required to establish reputation in his trade mark, ie that trade mark has become associated with goods emanating from plaintiff and thus distinctive of his goods — Traders competing in disparate goods but using very similar unregistered trade marks (in casu 'Manhattan' and 'Manhattans') — Court will not readily conclude in such circumstances that defendant's products will be regarded as coming from plaintiff in H absence of cogent grounds to justify such conclusion — Reaction of ordinary members of purchasing public to goods to be gauged, not that of lawyers, traders or persons engaged in business of parties — Held on facts that it was not likely that a substantial portion of public would be confused by defendant's use of 'Manhattans' trade mark — Refusal of I interdict against use of such mark by defendant confirmed on appeal.

Headnote : Kopnota

One of the elements which a plaintiff in a passing-off action based upon an implied representation (where a trader, by adopting the trade mark of his rival, or one so closely resembling it as to be calculated to deceive or cause confusion, thereby impliedly represents that his goods are those J of his rival or that they are connected

1992 (4) SA p119

A in some way with his rival) must establish is a reputation in such trade mark. By this it is meant that by user or advertising or some similar means the trade mark has become associated in the mind of the public with goods emanating from the plaintiff and has thus become distinctive of his goods. Because only if there is such a reputation will the user by the defendant, on his own goods, of this mark, or one deceptively similar, be capable of amounting to an implied representation that defendant's goods emanate from the plaintiff or are connected in some way with the plaintiff B and thus be capable of causing consequential damage to the plaintiff.

The appellant was, and had been for many years, a manufacturer and distributor of certain confectionery products known as marshmallows and gums and had used in relation thereto an unregistered trade mark consisting of the word 'Manhattan' written in a special manner. The appellant had marketed these products throughout the Republic of South Africa and certain neighbouring countries and the trade mark 'Manhattan' C had acquired a 'considerable reputation' in the confectionery field and had become distinctive of the goods marketed by the appellant. The respondent, through one of its divisions, 'Willards Foods', manufactured and distributed 'salty snacks', mainly potato chips, and had since 1964 used the trade mark 'Willards' in relation thereto. This trade mark had acquired a substantial reputation in the field of salty snacks, especially potato chips, and had become distinctive of the respondent's products. In July 1989, the respondent commenced marketing potato chips in packets upon D which appeared not only the 'Willards' trade mark but also the mark 'Manhattans'. Contending that the respondent was thereby passing off its product 'as being connected in the course of trade' with the appellant, the appellant applied in a Provincial Division for a final interdict. The application failed on the ground that it was not likely that a substantial portion of the public would be confused by the respondent's use of the 'Manhattans' trade mark. In an appeal, it was contended for the appellant E (1) that the parties were engaged in the same or closely related field of activity and that they both marketed what were termed 'impulse foods' or 'snack foods' in the same kinds of outlets; (2) although conceding that the respondent's use of the 'Manhattans' mark could not lead the purchasing public to think that the respondent's goods (ie potato chips) were the goods which they associated with the appellant's 'Manhattan' mark, that there was nevertheless a likelihood of the public being deceived into thinking that the respondent's product was 'another horse F out of the same stable'.

Held, as to (1), that it had to be noted in regard to the question of deception or confusion that the parties did not carry on their activities in a common field: they manufactured and marketed different kinds of products - certain types of confectionery in the appellant's case and salty snacks in respondent's case.

Held, further, that the classifications of 'impulse foods' and 'snack G foods' were artificial and ignored the very substantial distinction between marshmallows and gums, on the one hand, and potato chips, on the other.

Held, further, that any confusion which might arise owing to the use by the respondent of the 'Manhattans' mark could certainly never result in the diversion of custom from the appellant: at most it could cause damage to its goodwill or amount to the partial misappropriation thereof.

Held, further, as to (2), that the Court would not readily conclude that H in the case of disparate goods (as was the position in the present case) the defendant's product would be regarded as another horse from the plaintiff's stable: there had to be cogent grounds to justify such a conclusion, and it had to be borne in mind that what had to be gauged was the likely reaction of ordinary members of the purchasing public, not that of lawyers or traders or persons engaged in the kinds of business conducted by the parties.

Held, further, having regard to the very different get-ups of the parties' I products apart from the trade marks 'Manhattan' and 'Manhattans'; the fact that the resemblance between the two marks ended with the words themselves; that there was no evidence of actual confusion or deception in the sense of members of the public having been misled into thinking that the goods on which the respondent's 'Manhattans' mark was used emanated in some way from the appellant; the fact that the parties' goods, although sold in the same kind of outlets, were generally displayed on different J shelves, and that there was no suggestion in the evidence

1992 (4) SA p120

A that confectionery manufacturers did, and were known to, diversify into the production of salty snacks and potato chips, that it could not be found that the Court a quo had reached a wrong conclusion. Appeal dismissed.

The decision in the Transvaal Provincial Division in Royal Beech-nut (Pty) Ltd t/a Manhattan Confectioners v United Tobacco Co Ltd t/a Willards Foods confirmed. B

Case Information

Appeal from a decision in the Transvaal Provincial Division (Du Plessis J). The facts appear from the judgment of Corbett CJ.

C E Puckrin SC (with him Miss M M Jansen) for the appellant referred to the following authorities: Stellenbosch Farmers' Winery Ltd v Stellenvale Winery (Pty) Ltd 1957 (4) SA 234 (C) at 235E-G; Plascon-Evans Paints Ltd C v Van...