Union Wine Ltd v E Snell & Co Ltd

• Jurisdiction: South Africa
• Judge: Didcott J
• Judgment Date: 12 September 1989
• Hearing Date: 28 August 1989
• Court: Durban and Coast Local Division

Union Wine Ltd v E Snell & Co Ltd
1990 (2) SA 180 (D)

1990 (2) SA p180

Citation	1990 (2) SA 180 (D)
Court	Durban and Coast Local Division
Judge	Didcott J
Heard	August 28, 1989
Judgment	September 12, 1989

Flynote : Sleutelwoorde F

Trade and trade mark — Trade — Passing off — Applicant marketing wine known as 'Bellingham Johannisberger' — Applying for interdict to G restrain respondent from marketing wine known as 'Edward Snell Johannisberger' — Comparison between get up of respective wines leading to inevitable conclusion that, despite shared name 'Johannisberger', get up of each so dissimilar that no significant section of public was likely to believe that two wines were the same or had connection with each other. H

Headnote : Kopnota

The applicant produced and distributed a wine which had been on the market since 1957 as 'Bellingham Johannisberger'. In July 1989 the respondent, a liquor merchant, started selling wines under its own label, including one marketed as 'Edward Snell Johannisberger'. The applicant applied for an interdict to prevent the respondent from describing its wine as a 'Johannisberger' on the grounds of passing off. The name 'Johannisberger', or anything incorporating the name, had never I been registered as a trade mark. It was the applicant's case that it had acquired a reputation in the name 'Johannisberger': until 1989 its wine had been the only wine on the South African market called a Johannisberger, its wine was popular and widely sold and, in ordering Bellingham Johannisberger, an appreciable number of diners in restaurants tended to refer to it as just 'Johannisberger'.

The applicant's and respondent's wines were blends of various white grape varieties. The applicant's wine bottle was bright emerald green, J 21 centimetres high, 15

1990 (2) SA p181

A centimetres wide near its base and nine centimetres deep, shaped unusually to resemble the silhouette of a Cape Dutch gable, with the moulded outline of a grapevine encircling it near its base. The respondent's bottle, by comparison, was an ordinary, standard wine bottle, 28 centimetres high, with sloping shoulders, cylindrical below its neck and coloured pale olive green. The labelling on the respective bottles was dissimilar, the only feature common to each being the word 'Johannisberger' printed on both; on the applicant's bottle in brown lettering, with a capital 'J' followed by lower case letters, and on the B respondent's label printed in black capital letters.

Held, that the legal principle underlying the wrong known as passing off was simply that no one had the right to represent his goods (or business) as the goods (or business) of someone else.

Held, further, that while it was essential to the success of a complainant's case that he establish a reputation in the name of his C goods or business, proof of reputation was merely the first leg of the enquiry whether the defendant's use of the name concerned was likely to mislead the public into believing that there was a connection between the goods or business of the defendant and those of the complainant.

Held, further, on the facts, that a comparison between the whole get up of Bellingham Johannisberger and that of Edward Snell Johannisberger led to the inevitable conclusion that, notwithstanding the shared name, the get up of the two wines was so dissimilar that no significant section of D the public was likely to believe that the two wines were either the same or that they had a connection with each other. The application was accordingly dismissed.

Case Information

Application for an interdict on the grounds of passing off. The facts appear from the reasons for judgment.

E N V Hurt SC (with him F G Richings) for the applicant.

M J D Wallis SC for the respondent.

Cur adv vult.

Postea (September 12). F

Judgment

Didcott J:

Bellingham Johannisberger, a South African white wine, is familiar and popular throughout the country. One of the wide range that bears the Bellingham name, it accounts for more than half the sales of all those doing so. It has been on the market since 1957. The applicant produces and distributes it nowadays, together with the other Bellingham G wines.

The respondent, a liquor merchant, has embarked recently on the venture of selling under its own labels wines of a different provenance which it obtains from their producers. They include a white wine that it calls Edward Snell Johannisberger.

H That will not do, the applicant maintains. It accordingly seeks, on notice of motion, an interdict putting a stop to the respondent's designation or description of the wine in question as a Johannisberger. The application is opposed. Both sides have filed detailed affidavits. From these some conflicts of fact have emerged, but not many on the whole and none so material that I cannot decide the case on the papers. Nor did either counsel suggest that oral evidence was needed before I I could fairly determine it. The circumstances I have mentioned already are all undisputed. So, unless a dispute is noted, are the rest with which I shall deal.

The affidavit of the applicant's spokesman referred repeatedly to the J Johannisberger trade mark, and sometimes to its proprietorship of that.

1990 (2) SA p182

Didcott J

A But no such trade mark, none consisting of or incorporating the word, has ever been registered in this country. The litigation has nothing therefore to do with the protection or infringement of a registered trade mark. Nor has it been brought on the strength of any. Passing off, and that alone, is the cause of action invoked. The papers complained not only of a passing off, it is true, but also and specifically of B unlawful competition. Counsel who represented the applicant told me at the start of his argument, however, that no separate and alternative cause of action was thus advanced. The unlawful competition which his client had in mind was simply the form of it, he explained, that passing off itself took.

Our Courts have defined passing off frequently and in more or less the C same terms. A recent definition is the following one of Corbett JA:

'The wrong known as passing off is constituted by a representation, express or implied, by one person that his business or merchandise or both are, or are connected with, those of another.'

The quotation comes from the judgment given in Brian Boswell Circus D (Pty) Ltd and Another v Boswell-Wilkie Circus (Pty) Ltd 1985 (4) SA 466 (A) at 478F. Postulated, of course, was the situation in which the businesses or merchandise were in truth neither the same nor connected, and therefore the falsity of the representation. Speaking solely of businesses because the appeal that had to be decided concerned them alone, but expressing himself in terms equally appropriate to E merchandise once the spotlight fell there, Corbett JA added (at 478G - I):

'Where they are implied, such representations are usually made by the wrongdoer adopting a name for his business which resembles that of the aggrieved party's business; and the test then is whether in all the circumstances the resemblance is such that there is a reasonable F likelihood that ordinary members of the public, or a substantial section thereof, may be confused or deceived into believing that the business of the alleged wrongdoer is that of the aggrieved party or is connected therewith. Whether there is such a reasonable likelihood of...