Weber-Stephen Products Co v Alrite Engineering (Pty) Ltd and Others

• Jurisdiction: South Africa
• Judge: Corbett CJ, E M Grosskopf JA, Milne JA, Goldstone JA and Van den Heever JA
• Judgment Date: 24 February 1992
• Citation: 1992 (2) SA 489 (A)
• Hearing Date: 22 November 1991
• Court: Appellate Division

E M Grosskopf JA:

This is an appeal against a judgment of Stegmann J in the Transvaal Provincial Division in which he dismissed an application for relief based upon alleged infringements of an interdict. The G judgment is reported: see Weber-Stephen Products Co v Alrite Engineering (Pty) Ltd and Others 1990 (2) SA 718 (T).

The appellant is a corporation incorporated under the laws of the State of Illinois in the United States of America. It manufactures and sells, inter alia, a product known as the Weber One Touch Barbecue H Grill. This barbecue grill has been imported into the Republic of South Africa since the late 1970's. Since about 1986 the first respondent, a South African company having its principal place of business in Johannesburg, has manufactured and sold a competing product called the Mirage Braai Oven which is virtually identical to the appellant's product.

In 1987 the appellant instituted motion proceedings in the Transvaal I Provincial Division against the first respondent. For present purposes only two of the grounds of relief relied upon by the appellant are relevant. The first was passing-off - the appellant contended that the first respondent was passing off its Mirage Oven as the appellant's Weber Grill. The second unlawful act was alleged to consist in plagiarism of the Weber Grill, which, it was contended, constituted J unfair trading.

E M Grosskopf JA

A The matter came before Van Zyl J. On 30 November 1987 he allowed the application on the grounds of passing-off and granted an interdict restraining the offending conduct. I shall deal later with the exact terms of the interdict. Van Zyl J found it unnecessary to deal with the appellant's complaint of plagiarism.

With the leave of the trial Judge the matter went on appeal to the B Full Court.

On 23 March 1989 the Full Court dismissed the appeal. I shall henceforth refer to its judgment simply as the judgment of the Full Court. The Full Court did slightly amend the order granted by Van Zyl J, but this was done only for the sake of clarity. Nothing turns on this C amendment. The order, as amended, reads as follows:

'The respondent, its servants and agents, are interdicted from passing off as a "Weber One Touch Barbecue Grill", by sale, distribution or any other means, its kettle type barbecue grill known as the "Mirage" or any other grill which embodies a get-up confusingly D or deceptively similar to the "Weber One Touch Barbecue Grill" without clearly distinguishing it from the "Weber One Touch Barbecue Grill" of the applicant.'

Even prior to the appeal the first respondent (acting through its directors, the second and third respondents) obtained legal advice about the effect of Van Zyl J's judgment. On the strength of this advice the respondents had notices printed in both official languages for E attachment to their Mirage Ovens. These notices read as follows:

'This MIRAGE braai/oven is an all South African product by ALRITE and has NO CONNECTION WITH the "Weber One Touch Barbecue Grill" of WEBER-STEPHENS CO of America.'

'Hierdie MIRAGE braai/oond is 'n eksklusiewe Suid-Afrikaanse produk F deur ALRITE en het GEEN VERBINDING hoegenaamd met die "Weber One Touch Barbecue Grill" deur WEBER-STEPHENS CO van Amerika.'

As stated by the Court a quo (at 725C-D), these notices were of a generous size in relation to the objects to which they were to be attached. The respondents caused four of the notices to be attached by G means of adhesive tape to the outside of each Mirage Oven they sold after the dismissal of the appeal, two such notices in English and two in Afrikaans. Two were attached to each lid and two to each bowl in such a way that the notices covered most of the outer surfaces of the Mirage Oven and, whilst in position, could not be overlooked by any potential purchaser. The respondents also stipulated to retailers to whom they H thereafter sold Mirage Ovens that they were only to be displayed and sold with the notices attached.

On 2 June 1989 the appellant applied to the Transvaal Provincial Division for an order imposing sanctions on the respondents for alleged contempt of the order of the Full Court. The second and third I respondents were joined in these proceedings as being the persons responsible for the acts of the first respondent. The respondents did not contest their joinder or the grounds on which it was based.

At the hearing of the matter, the appellant sought in the alternative an order declaring that the respondents had acted in conflict with the J judgment and order of the Full Court.

E M Grosskopf JA

A Both the main and the alternative claim were based mainly on the proposition that the affixing of the said notices was not sufficient to distinguish the respondents' Mirage Oven from the appellant's Weber Grill. In addition, the appellant complained of a number of specific incidents in which Mirage Ovens had been displayed for sale without the B notices, and one or two other isolated alleged infringements of the interdict.

On 14 December 1989 Stegmann J dismissed the application with costs. With his leave the matter now comes on appeal before us.

While the appeal to this Court was pending the appellant applied on notice of motion for leave to adduce further evidence on appeal. The C evidence sought to be adduced was set out in affidavits accompanying the notice of motion. I shall deal with their contents later. The respondents filed opposing affidavits, to which the appellant replied.

When the matter was called Mr Puckrin, who appeared for the appellant, D informed us that the appellant was not proceedings with the case based on alleged contempt of Court, but was seeking only the relief which it sought as an alternative in the Court a quo, viz an order declaring that the respondents had acted in conflict with the judgment and order of the Full Court. There are accordingly now two matters before us, namely the application to lead further evidence and the appeal as limited by counsel.

E For reasons which will become apparent later, I propose dealing with the appeal first, and I start with the main issue, viz whether the sale or display of Mirage Ovens with the above notices affixed to them constitutes an infringement of the interdict. The answer to this question depends, firstly, on an interpretation of the terms of the F interdict. In Firestone South Africa (Pty) Ltd v Genticuro AG 1977 (4) SA 298 (A) at 304D-E Trollip JA said the following:

'The basic principles applicable to construing documents also apply to the construction of a court's judgment or order: the court's intention is to be ascertained primarily from the language of the judgment or order as construed according to the usual, well-known rules. See Garlick G v Smartt and Another 1928 AD 82 at 87; West Rand Estates Ltd v New Zealand Insurance Co Ltd 1926 AD 173 at 188. Thus, as in the case of a document, the judgment or order and the court's reasons for giving it must be read as a whole in order to ascertain its intention.'

To determine the content and ambit of the interdict it will accordingly be necessary to read the order of the Full Court in the H light of its judgment, and the judgment of Van Zyl J insofar as it has not been disturbed on appeal. The order of the Full Court in essence prohibits the 'passing-off . . . by sale, distribution or any other means' of the respondents' Mirage Oven for the Weber Grill 'without clearly distinguishing it' from the Weber Grill. This wording is I somewhat inelegant - once the first respondent has clearly distinguished its product from that of the appellant, it would no longer be passing it off. However, be that as it may, what the interdict clearly contemplates is that the first respondent will not be entitled to sell, distribute or otherwise deal with its product without so distinguishing it. The order itself does not prescribe how the respondent should distinguish its product (as noted later, this form of J order is common in passing-off cases). It does, however, give a hint of

E M Grosskopf JA

A what the Court regarded as the objectionable feature of the Mirage Oven when it lays down that the interdict applies also to any other grill 'which embodies a get-up confusingly or deceptively similar to the Weber Grill'.

That it was the 'get-up' of the Mirage Grill, in the sense of its appearance (ie its shape, configuration, appurtenances, etc), that was the essential feature of the passing-off in the view of Van Zyl J and B the Full Court appears clearly from their judgments. This was in accordance with the case put forward by the appellant, which Van Zyl J described as follows:

'The applicant has placed great emphasis on its averment that the shape or configuration of the Weber Grill, together with its whole appearance or "get-up", is central to the advertisements and other publicity relating to it. It is this get-up which is recognised by C potential customers as originating from the applicant. It is, according to the applicant, clearly distinctive and has been basic to the high repute in which it is held. The applicant has, it is submitted, built up considerable goodwill and reputation on the basis of its distinctive shape and get-up which are described as unique and unusual.' D

After setting out the various matters raised in the affidavits and the requirements for an action of passing-off (as laid down in cases such as Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc and Others 1977 (2) SA 916 (A) at 929C; Brian Boswell Circus (Pty) Ltd and Another v Boswell-Wilkie Circus (Pty) Ltd 1985 (4) SA 466 (A) at E 478J and Hoechst Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (in Liquidation) and Another 1987 (2) SA 600 (A) at 613D-614D), Van Zyl J dealt with the reputation which a plaintiff in a passing-off action must establish in respect of the goods in question. By...