Salusa (Pty) Ltd v Eagle International Traders

• Jurisdiction: South Africa
• Judge: Van Zijl JP
• Judgment Date: 21 August 1979
• Citation: 1979 (4) SA 697 (C)
• Court: Cape Provincial Division

Van Zijl JP:

This is a passing off action in which the plaintiff is claiming an interdict restraining the defendant from marketing, selling or E disposing of the "stop-smoking" product with the trade name: "MD4 stop-smoking" method, and certain further consequential relief. In the present action only the question whether plaintiff is entitled to the interdict claimed has been raised.

The commodity which is the subject of the present dispute is a set of four cigarette holders that have been designed so as to reduce progressively F the intake of "tar" and nicotine through the use of the holder; each of the holders has a small air vent just below the cigarette-holding portion of the holder so that the smoker draws in through the holder, air and smoke. This intake of air cools the smoke which passes through a small condensation chamber where as a result of a drop in temperature portion of G the "tar" and nicotine content of the smoke condenses out in small beads in the condensation chamber with the result that the smoker's intake of both these substances is reduced. To be effective the cigarette holder must be cleaned at regular intervals. The holders are numbered 1 - 4, the size of the air vent increases as the numbers rise. The increase in the size of the air vent has the result of more air being mixed with smoke and H increasing the condensing out of "tar" and nicotine. As each holder comes into use the smoker's intake of "tar" and nicotine is reduced. The instructions contained on the pack recommend that each holder should be used for two weeks, and asserts that, by proper consecutive use of these holders, the smoker is weaned from his cigarette smoking habit and eventually gives up smoking without suffering from the usual withdrawal symptoms.

This smoking device was invented and patented in the United States of America. The patent is held by Medical Dynamics Incorporated (hereinafter)

Van Zijl JP

referred to as the American company), who marketed it under the trade name: "One step at a time" and under the slogan "Stop smoking the same way as you started". The American company marketed the holders in a 2 X 9,5 X A 15,5 cm cardboard container which has a drawer with a metal coloured plastic tray in it. The tray has four slots numbered 1, 2, 3, 4 in which the holders are placed according to their number. These slots occupy half the tray and above these slots on the lid of the box is a window showing the top portion of the cigarette holders. This window is glassed with a B transparent plastic. Across the top of the box and over the window are four bands of colour; the first, an orange brown band covering No 1 holder, an orange band covers No 2 holder, a deep yellow band covers No 3 holder and a light yellow band covers the 4th holder. Taken in sequence the bands shade off into lighter colours. On the back of the box four outlines of the human head, profilewise, smoking a lighted cigarette in a C holder, and the human torso is depicted. Within these outlines is depicted in diagrammatic form the respiratory system, ie the mouth cavity, the throat and lungs. The outlines are numbered steps 1, 2, 3 and 4 respectively and within each outline is coloured in the same colour as the band covering the holder of the corresponding number on the lid of the D box. Below these diagrams appear the words: "Approximate percentage of tars and nicotine removed", and below each diagram appears: 2 weeks, and from left to right ie from the dark to the light colour are 25 per cent, 50 per cent, 70 per cent and 90 per cent. The colour system is arranged to indicate how through the consecutive use of the holders the respiratory system is freed progressively from the "tar" and nicotine contained in the E cigarette smoke. Above these diagrams is also a legend setting out the use and how to use the holders. The American container was handed in as an exhibit, it however contained no holders nor any explanatory pamphlet or instruction for use.

F Sometime prior to 1976, the American company gave to Doetsch Grether & Co of Bahl (hereinafter referred to as DG) a licence to manufacture and market the holder in Europe and Southern Africa. DG proceeded to manufacture these cigarette holders in Switzerland and to market them there. It markets the cigarette holders under the name "MD4 Stop Smoking G Method" stating that it is patented in the United States and gives its number. Neither the name nor the patent number are stamped on the holders. They appear only on the container in which the holders are sold. Except for the change of name and minor differences such as a box with a lid and not a drawer being used, and on the back of the container is printed more elaborate instructions regarding the use of the holders and a statement H that the holders are a simple, easy and scientific way of stopping smoking that has been proved by named researchers, the holders are marketed in containers made up in virtually the identical manner - except for language and the name of the manufacturers - as that employed by the United States firm. In the container is a metal coloured tray with the four holders, two sticked cleaners and an absorbent tissue. The get-up is so similar to the American container that a purchaser would be aware that the identical article is being offered for sale.

Van Zijl JP

In or about June 1976 Mrs Snyckers, a director of the plaintiff company (sometimes hereinafter referred to as Salusa) and of Medex Pharma (Pty) Ltd (hereinafter referred to as Medex) visited Switzerland and on behalf A of Medex entered into a tentative agreement with DG by which Medex would be given the exclusive right to market MD4 in South Africa.

Salusa, ie the plaintiff company, and Medex are both companies of Noristan Holdings Ltd - a public company. The Noristan Group operates as importers B and manufacturers of pharmaceutical products. It trades exclusively with the pharmacies with an undertaking that it will not supply its products to...