Sodastream Ltd and Another v Berman Brothers (Pty) Ltd

• Judge: O'donovan J
• Judgment Date: 08 June 1984
• Citation: 1984 (4) SA 425 (T)
• Hearing Date: 03 April 1984
• Court: Transvaal Provincial Division

O'Donovan J:

The first plaintiff was incorporated in England I and carries on business in the Republic and elsewhere as a seller of machines for making aerated beverages, such as soda water. These beverages are made by using carbon dioxide gas, which is contained and sold in metal pressure cylinders. The first plaintiff is the registered proprietor in the Republic of the trade mark "Sodastream", in relation to goods. The mark is registered in two classes, namely:

O'Donovan J

(1)

No 78/4435 in class 1 (schedule IV) in respect of A chemical substances and chemical preparations, and gases for use in manufacture and dispensing of beverages ("the gas mark"); and

(2)

No 78/4436 in class 6 (schedule IV) in respect of containers made wholly or principally of common metal and their alloys; and parts and fittings therefor (the "cylinder mark").

The first plaintiff has appointed the second plaintiff, a South B African company, as an exclusive distributor of certain of its products and the user of certain trade marks (including the cylinder mark and the gas mark). The second plaintiff trades in the Republic by selling Sodastream machines and cylinders to members of the trade, who in turn sell these goods to members C of the public. The cylinders are expensive items in relation to the gas contained in them and are designed to be refilled. The procedure normally followed is that the second plaintiff receives empty cylinders from members of the trade and exchanges these for full cylinders, charging only for gas therein. The second plaintiff then refills the empty cylinders with gas which is selected so as to ensure quality control but D which is not manufactured by either of the plaintiffs.

Every gas-filled cylinder sold by the plaintiffs carries the Sodastream trade mark in two places:

(a)

it bears a firmly applied gummed label near the base of the cylinders with the word "Sodastream" on it;

(b)

E the brass valve at the head of the cylinder is stamped with the word "Sodastream".

In addition some of the cylinders have embossed on them the words: "Guaranteed filled by authorised Sodastream distributor".

The plaintiffs allege in this action that the defendant has infringed the registered trade marks and that it has also F contravened the Merchandise Marks Act 17 of 1941 in certain respects. The facts have been agreed by the parties and are set out in a written statement which is before the Court. The issue to be decided is therefore whether in law these facts constitute an infringement by the defendant of the first plaintiff's trade marks or a contravention by it of the G Merchandise Marks Act, or both.

In summary, the modus operandi of the defendant of which the plaintiffs complain is as follows: The defendant upon receipt of the empty cylinders from members of the trade or the general public, refills them with its own gas, and re-sells the gas-filled cylinders:

(a)

still bearing the word "Sodastream" stamped on the valve;

(b)

H still bearing the words "Guaranteed filled by authorised Sodasteam distributor", in those cases where these words are embossed on the cylinders;

(c)

in some cases bearing the words "Guaranteed filled by authorised Sodastream distributor" covered over with a gummed label bearing the name of the defendant;

(d)

I with the gummed label bearing the first plaintiff's trade mark effaced either by removal or by covering over with a gummed label bearing the defendant's name.

The two causes of action upon which the plaintiffs rely must be kept separate. I shall deal first with the case of alleged infringement. "Mark"

O'Donovan J

A is defined by s 2 (1) of the Trade Marks Act 62 of 1963 as including a name or word. The word "Sodastream" is such a mark, and it is common cause that the word as used on the cylinders when sold or exchanged by either of the plaintiffs is a trade mark as defined in the Act, and as registered under either or both of the trade marks Nos 78/4435 and 78/4436.

B In s 2 (1) of the Act "trade mark" is defined as:

"... a mark used... for the purpose of -

(a)

indicating a connection in the course of trade between the goods... and some person having the right... to use the mark...; and

(b)

distinguishing the goods... from the same kind of goods... connected in the course of trade with any other person."

C Infringement of trade marks is dealt with in s 44 of the Act. The plaintiffs allege an unauthorised use by the defendant of a trade mark in terms of s 44 (1) (a) of the Act. The relevant parts of s 44 (1) (a) provide:

"... the rights acquired...