Smithkline Beecham Consumer Brands (Pty) Ltd (Formerly Known as Beecham South Africa (Pty) Ltd) v Unilever plc

• Jurisdiction: South Africa
• Judge: Corbett CJ, Joubert JA, M T Steyn JA, Eksteen JA, Olivier AJA
• Judgment Date: 27 March 1995
• Citation: 1995 (2) SA 903 (A)
• Hearing Date: 17 February 1995
• Court: Appellate Division
• Docket Number: 423/93

H Eksteen JA:

It appears from the papers before us that the appellant company has been selling striped toothpaste in South Africa since 1974. Originally the stripes were in a combination of blue and white, but since 1984 it has also sold a three-coloured toothpaste in blue, red and white, and, since 1986, also in green, red and white. In 1988 the sales of appellant's striped toothpaste in South Africa amounted to some R25 149 I 000 and comprised 22,2% of the total South African market for toothpaste. Over the years the appellant advertised its striped toothpaste range extensively at considerable expense.

The appellant applied to the Registrar of Trade Marks for the registration of seven different trade marks. All the applications were in class 3 in J respect of toothpaste and dentifrices included in that class.

Eksteen JA

A These applications were opposed by the respondent. The respondent, it appears, is also a seller of toothpaste, and is the proprietor of a trade mark registered on 7 May 1973 for a striped toothpaste in class 3 in respect of dentifrices. The respondent objected to the registration of the applicant's proposed trade marks on the basis that they offended B against the provisions of s 17(1) of the Trade Marks Act 62 of 1963 ('the Act') in that they so resemble respondent's registered trade mark that they would be likely to deceive or cause confusion.

The matter came before the Assistant Registrar of Trade Marks in terms of s 29 of the Act, and on 27 April 1992 he refused all seven applications with costs. The appellant thereupon appealed to the Full Bench of the C Transvaal Provincial Division, in terms of s 30 in respect of six of the applications. The seventh application was expressly abandoned at the appeal. This appeal was unsuccessful and the appellant now appeals to this Court in terms of s 63 of the Act.

In the light of the form the proceedings have taken there are presently D six separate appeals before us, ie one in respect of each of the six trade marks that the appellant seeks to register. The principles applicable in each case are however identical. This prompted both the Assistant Registrar and the Court a quo to deal with all six applications in one compendious judgment. I shall also deal with all the present appeals in this one judgment. E

The respondent's trade mark is as follows:

'72/2827 in class 3: Dentifrices, in the name of Unilever Ltd, a British company of Port Sunlight, Cheshire, England. Address for service: Messrs Spoor & Fisher, Masada Buildings, Paul Kruger Street, Pretoria.

Registration of this trade mark shall not confer exclusive rights to the use of the brush and tube device.

H The essential and distinctive feature of the mark are the red stripes in white toothpaste as depicted in the representation affixed to the application form.

Associated with No 70/4167.

Section 24(1)(b) application.

Filed: 24 May 1972.'

As can be seen it depicts a piece of white toothpaste with two red stripes I in it, being squeezed from a tube onto the bristles of a toothbrush. All this is displayed against a dark background. Immediately below the representation the following disclaimer appears, viz'registration of this mark shall not confer exclusive rights to the use of the brush and tube device';

J and then it goes on to say

Eksteen JA

A '(t)he essential and distinctive features of the mark are the red stripes in white toothpaste as depicted in the representation affixed to the application form'

- ie the representation reproduced above.

The six trade marks which the appellant now seeks to have registered are numbered 82/7640, 82/8530, 82/8767, 82/8768, 82/8769 and 83/5167 and are B the following:

'82/7640 in class 3: Toothpastes and dentifrices included in this class; in the name of Beecham South Africa (Pty) Ltd, a South African company of 21 Wrench Road, Isando, Transvaal. Address for service: Messrs D M Kisch Inc, Corporation Building, Commissioner Street, Johannesburg.

D Associated with 82/8639.

Applicants limit their rights to the blue and white stripes alternating as shown in the representation on the application form.

Applicants undertake that, in use, the blank space appearing in the trade mark will be occupied only by matter of non-trade mark character or by a trade mark registered in the name of the applicants in respect of the same E goods, or by a trade mark of which the applicants are registered users, in respect of the same goods, or by a trade mark of a registered user with the consent of the proprietors of such mark.

Toothpaste devices are common in the class.

Filed: 30 September 1982.'

'82/8530 in class 3: Toothpastes and dentifrices included in this class; F in the name of Beecham South Africa (Pty) Ltd, a South African company of 21 Wrench Road, Isando, Transvaal. Address for service: Messrs D M Kisch Inc, Corporation Building, Commissioner Street, Johannesburg.

In use the stripes will be restricted to the colours blue, white and red.

Registration of this trade mark shall give no right to the exclusive use I of a device of a toothbrush separately and apart from the mark.

Associated with 82/8767.

Filed: 1 November 1982.'

'82/8767 in class 3: Toothpastes and dentifrices included in this class; in the name of Beecham South Africa (Pty) Ltd, a South African company of 21 Wrench Road, Isando, Transvaal. Address for service: Messrs D M Kisch J Inc, Corporation Building, Commissioner Street, Johannesburg.

Eksteen JA

Applicants limit their rights to the colours rd, white and green.

Registration of this trade mark shall give no right to the exclusive use C of a device of a toothbrush separately and apart from the mark.

Associated with 82/8530.

Filed: 10 November 1982.'

'82/8768 in class 3: Toothpastes and dentifrices included in this class; in the name of Beecham South Africa (Pty) Ltd, a South African company of 21 Wrench Road, Isando, Transvaal. Address for service: Messrs D M Kisch D Inc, Corporation Building, Commissioner Street, Johannesburg.

Applicants limit their rights to the colours red, white and green.

Applicants undertake that, in use, the blank space appearing in the trade F mark will be occupied only by matter of non-trade mark character or by a trade mark registered in the name of the applicants in respect of the same goods, or by a trade mark of which the applicants are registered users, in respect of the same goods, or by a trade mark of a registered user with the consent of the proprietors of such mark.

Associated with 82/8769

Filed: G 10 November 1982.'

'82/8769 in class 3: Toothpastes and dentifrices included in this class; in the name of Beecham South Africa (Pty) Ltd, a South African company of 21 Wrench Road, Isando, Transvaal. Address for service: Messrs D M Kisch H Inc, Corporation Building, Commissioner Street, Johannesburg.

Applicants limit their rights to the colours red, white and blue. I

Applicants undertake that, in use, the blank space appearing in the trade...