Tri-Ang Pedigree (South Africa) (Pty) Ltd v Prima Toys (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Rabie CJ, Kotzé JA, Miller JA, Galgut AJA and Smalberger AJA
• Judgment Date: 09 November 1984
• Citation: 1985 (1) SA 448 (A)
• Hearing Date: 10 September 1984
• Court: Appellate Division

Galgut AJA:

The respondent, Prima Toys (Pty) Ltd, to which I shall refer as Prima, is the proprietor of a trade mark registered in terms of the Trade Marks Act 62 of 1963 ("the C Act"). The trade mark consists of the words BABY LOVE. It was registered, with effect from 11 June 1980, in class 28 of Schedule 4 of the Trade Mark Regulations, 1971, in respect of "Dolls, dolls' clothing and other games, toys and playthings for infants and children".

The appellant, Tri-ang Pedigree (South Africa) (Pty) Ltd, to which I shall refer as Tri-ang, is the registered user of the D trade mark FIRST LOVE. This trade mark is registered in class 28, Schedule 4 in respect of "Toys, playthings and games; parts of and fittings therefor included in this class". BABY LOVE and FIRST LOVE are both registered in part B of the register.

In August 1982 it came to Prima's notice that Tri-ang was E marketing a doll called BABY FIRST LOVE. Prima took legal advice in September and in October caused a letter to be sent to Tri-ang calling on the latter to cease using BABY FIRST LOVE. On 22 November 1982 it launched an urgent application in the Cape Provincial Division in which it sought orders F interdicting Tri-ang:

(a)

from infringing its trade mark BABY LOVE by using the name BABY FIRST LOVE as a trade mark;

(b)

from passing off its goods as those of Prima by marketing the dolls under the name BABY FIRST LOVE;

(c)

from disposing of or in any way dealing with dolls, toys, etcetera, bearing the marks BABY FIRST LOVE or BABY 1ST G LOVE:

(d)

from trading in unlawful competition with Prima by using the name BABY FIRST LOVE or BABY 1ST LOVE.

In addition to the above prayers other consequential relief was sought.

H The Court a quo, ROSE-INNES J and FAGAN J, granted the relief sought in terms of (a) and (c) above and made an order for the delivery up for destruction of all advertising material and boxes containing the words BABY FIRST LOVE or BABY 1ST LOVE. The Court a quo found that the relief granted pursuant to prayers (a) and (c) sufficiently protected Prima's rights and that it was therefore unnecessary to deal with prayers (b) and I (d).

Before considering the issues and arguments raised on appeal, it is necessary to set out the salient facts.

Prima has been manufacturing and marketing dolls under the mark BABY LOVE since 1978. It is said in the affidavit of its managing director, Mr Diamond, that Prima

Galcut Aja"Enjoys an Extensive and Substantial Reputation and Goodwill in and to the Baby Love Mark and the Product, the Get-Up, and the Packaging Based on the Mark Baby Love since 1978".

FIRST LOVE was registered in the Republic in 1976 in the name of an English company, Rovex Ltd ("Rovex"). Rovex granted an exclusive registered user licence to Tri-ang. Tri-ang commenced B marketing dolls under the name FIRST LOVE in 1976. In June 1980 it introduced a version which cried tears. This is advertised as a new FIRST LOVE doll. The word "new" was not printed in the same size as the words FIRST LOVE and was not made part of the trade mark FIRST LOVE. Advertising details and sales figures show that Tri-ang has acquired a reputation and C goodwill in respect of its dolls sold under the trade mark FIRST LOVE.

In December 1980 Rovex and Tri-ang brought an application in the Cape Provincial Division for an order interdicting Prima from using the mark BABY LOVE. At that time BABY LOVE had not yet been registered as a trade mark in Prima's name. (It was D subsequently registered tered with an effective date of 11 June 1980.) In that application Tri-ang claimed that Prima, by using the name BABY LOVE, was infringing the trade mark FIRST LOVE. VAN HEERDEN J who heard that application, held that BABY LOVE and FIRST LOVE were dissimilar in appearance and sound and E that the likely purchasers of dolls would not be confused. He dismissed Tri-ang's application. An appeal against that decision was dismissed. (See Rovex Ltd and Another v Prina Toys (Pty) Ltd 1981 (2) SA 447 (C) and 1982 (2) SA 403 (C)). The facts of that case are not relevant to the present matter. It does, however, show that Tri-ang's marketing director, Mr Spracklen, was fully alive to the likelihood of deception or F confusion which could arise if similar names were used for the goods of Prima and Tri-ang. More as to this aspect later.

As already stated, dolls under the name BABY FIRST LOVE first appeared on the retailers' shelves in August 1982. Mr Spracklen in his affidavit stated that, because of the high level of G sales of dolls under the trade mark FIRST LOVE, he believed saturation point would be reached by the end of 1981 and that he thought it "improbable that parents would purchase a second FIRST LOVE doll for their daughters". His affidavit then goes to state:

"I therefore decided to launch a diminutive version of the respondent's FIRST LOVE doll which might complement any FIRST H LOVE dolls owned by girls, thus introducing such children to the concept of baby sisters or baby brothers. The word 'baby' suggests the concept of a baby doll as opposed to a more grown-up doll."

............

"I state that the use of the word 'baby' on the respondent's product is purely descriptive. It connotes a diminutive version of the respondent's well-known FIRST LOVE doll and nothing I more. I state that the respondent was entirely bona fide in its choice of the word 'baby' in order to describe the character or nature of its product..."

............

"I deny that the respondent is using the word 'baby' as part of a mark. The word is being used in its ordinary descriptive connotation."

I stress that where "baby" appears in Mr Spracklen's affidavit it is not typed in capital letters.

Galgut AJA

Tri-ang alleged that the majority of purchasers of the dolls of A both parties were White whereas Prima pointed out that White customers "by no means represent the whole market".

The boxes, in which the two litigants sell their dolls, are very similar. Each box has a transparent cellophane "window" through which the dolls can be seen. These dolls are effigies of babies. A miniature baby's bottle is also contained in each B box.

Both parties' dolls are sold in the same sort of shops and if one can judge from the advertisements these are shops in which dolls, toys and children's playthings are sold. Annexed to Mr Spracklen's affidavit are six affidavits from women. He says they were annexed "in support of the reputation enjoyed by the C respondent (Tri-ang) in its FIRST LOVE doll". Three of these deponents testify that they have known FIRST LOVE dolls for some years; that they have bought FIRST LOVE dolls for their daughters; that when in recent weeks they saw the mark BABY FIRST LOVE in respect of dolls they believed this was a small version of a FIRST LOVE doll. The other three deponents each D testify that they know both the FIRST LOVE doll and the BABY LOVE doll and that when they recently saw the BABY FIRST LOVE doll they thought it referred to a small version of the FIRST LOVE doll.

It is common cause that the word "baby" is in frequent use in respect of goods in class 28, such as toys, games and E playthings. It is also accepted that the word "baby" is used by traders in respect of toys and dolls.

It is against the above background that the issues in this appeal have to be decided.

F As already stated BABY LOVE and FIRST LOVE are both registered trade marks. This being so, each gives the exclusive right - subject to the provisions of the Act - to use the trade mark within the Republic. The real issue in this Court, as in the Court a quo, is whether Tri-ang was entitled to add BABY, printed and placed as it was, to its registered trade mark, ie G to advertise and sell dolls under the name BABY FIRST LOVE.

For ease of reference I set out the relevant portions of ss 44, 46 and 72 of the Act:

"44(1) Subject to the provisions of ss (2) and (3) of this section and of ss 45 and 46, the rights acquired by registration of a trade mark shall be infringed by:

(a)

unauthorized use as a trade mark, in relation to goods H or services in respect of which the trade mark is registered, of a mark so nearly resembling it as to be likely to deceive or cause confusion; or

(b)

............

Provided that in the case of a trade mark registered in part B of the register, no interdict or other relief shall, for purposes of para (a) of this subsection, be granted if the defendant establishes to the satisfaction of the court I that the use of which the proprietor of the registered mark complains is not likely to be taken as indicating a connection in the course of trade between the goods or services and some person having the right either as proprietor or as registered user to use the trade mark.

(2)

............

(3)

The use of a registered trade mark, being one of two or more registered trade marks that are indentical or nearly resemble each other,

Galgut AJA

A shall in the exercise of the right to the use of that trade mark given by registration, not be deemed to be an infringement of the right so given to the use of any other of those trade marks."

"46. No registration of a trade mark shall interfere with:

(a)

any bona fide use by a person of his own name or of the name of his place of business, or of the name of any of his predecessors in business, or of the name of any such predecessor's place of business; or

(b)

B the use by any person of any bona fide description of the character or quality of his goods or services."

"72 Penalty for falsely representing a trade mark as registered :

(1)

............

(2)

For purposes of this section, use in the Republic in relation to a trade mark of the word 'registered' or of any C abbreviation thereof or of any other word or letter which might reasonably be construed as...