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

• Jurisdiction: South Africa
• Citation: 1992 (2) SA 489 (A)

Weber-Stephen Products Co v Alrite Engineering (Pty) Ltd and Others
1992 (2) SA 489 (A)

1992 (2) SA p489

Citation	1992 (2) SA 489 (A)
Court	Appellate Division
Judge	Corbett CJ, E M Grosskopf JA, Milne JA, Goldstone JA and Van den Heever JA
Heard	November 22, 1991
Judgment	February 24, 1992

Flynote : Sleutelwoorde B

Trade and trade mark — Trade — Passing off — Reputation of product attaching solely to its shape and external configuration — Source of product anonymous — Whether anonymous source entitled to prevent C competitor from using shape for competing product where competitor making every effort, other than changing shape of competing product, to distinguish latter product — In casu, shape and configuration of competing product identical to shape and configuration of original D product — Manufacturer of original product obtaining interdict restraining passing off — Competitor thereafter selling product bearing prominent notices stating source and origin of product and disclaiming any connection between competing product and original product and latter's source — Manufacturer of original product seeking declaration that competitor failing to comply with terms of interdict on grounds E that notices insufficient to dispel confusion — Court holding that shape and configuration of product, although pertaining to necessary parts of product, capricious in sense that product would operate as efficiently and could be manufactured as economically with different arrangement or shape of its parts — In such circumstances, difficult to F imagine reason of principle or policy for allowing competitor to continue deception rather than changing shape or arrangement of product or its parts — Nothing in nature of product inherently requiring it to be sold in particular format which competitor choosing to adopt — If G competitor unable to comply with order restraining passing off without changing shape of its product, then competitor required either to change shape of product or to stop trading in it.

Headnote : Kopnota

The appellant, a company incorporated in the United States of America, manufactured and sold a 'kettle type' barbecue grill known as the Weber One Touch Barbecue Grill. The product had been imported into and marketed in South Africa since the late 1970's. The respondent, a South H African company, had since 1986 manufactured and sold a competing product called the Mirage Braai Oven, which was virtually identical to the appellant's product. The appellant, contending inter alia that the respondent was passing off its product as the appellant's product, obtained from a Full Bench in a Provincial Division an interdict against the respondent in the following terms: 'The respondent, its servants and agents, are interdicted from passing off as a "Weber One Touch Barbecue I 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 or deceptively similar to the "Weber One Touch Barbecue Grill" without clearly distinguishing it from the "Weber One Touch Barbecue Grill" of the applicant.' The order granted by the Full Bench had been a modification (mainly for reasons of clarity) of the order granted by a single Judge from whose order the respondent had unsuccessfully appealed. The Judge had found that the feature in respect J of which the appellant had acquired a reputation

1992 (2) SA p490

A was the appearance of its product - its 'particular get-up', its 'shape and external configuration'. This finding remained undisturbed on appeal to the Full Bench. The Court a quo had thus accepted the legal and factual position between the parties as follows: (a) the appellant had acquired goodwill deriving from the reputation which the appellant's product had built up in South Africa since the late 1970's; (b) the reputation was such that potential customers identified the appellant's B product by its get-up which, in this instance, consisted principally of its shape and configuration; (c) the source and origin of the appellant's product remained substantially anonymous; and (d) members of the public perceived the respective products of the appellant and respondent as being identical because their shapes were indistinguishable.

The respondent thereafter sold each of its grills with four large notices (two in English and two in Afrikaans) attached to the outside of C the grill. The notices, in English, read as follows: 'This MIRAGE braai/oven is an all South African product by ALRITE and has NO CONNECTION WITH the "One Touch Barbecue Grill" of WEBER-STEPHENS CO of America.' The appellant, alleging that the aforesaid notices were insufficient to distinguish the respondent's product from its own product, sought in a Provincial Division, inter alia, an order declaring that the respondent had acted in conflict with the judgment and order of the Full Bench. It was argued that, after reading such notice, the prospective purchaser would remain confused, since the notice merely D drew attention to the fact that there were two unconnected sources of the products having the same shape, without enabling such purchaser to identify which of the two sources was the one which had built up the reputation with which the shape was connected. The Court a quo had held that, since the interdict had created no monopoly in the shape and arrangement of the appellant's product, it had not obliged the E respondent to change the shape and the arrangement of its product; that the respondent had been required clearly to distinguish its product from the appellant's product; and, since the respondent had 'done all that [it had] in [its] power to do so to distinguish it', that the application should be dismissed. In an appeal to the Appellate Division

Held (per Grosskopf JA; Corbett CJ, Milne JA, Goldstone JA and Van den Heever JA concurring), that since the respondent had been interdicted F from passing off its product as that of the appellant, the respondent was required to make it perfectly clear to the public that it was not selling the goods of the original manufacturer if it wished to continue selling its goods.

Held, further, that the notice, by itself, had not sufficed: the notice had done nothing effectively to eliminate the confusion created by the shape and configuration of the respondent's product.

Held, further, since the steps actually taken to distinguish the G respondent's product from the appellant's product had been ineffective because the confusion between them had arisen from the similarity in their shapes, and since the steps actually taken to distinguish the two products had been the only steps available, short of changing the shape of the respondent's product, the issue was whether, in a case such as the present, where a product's reputation had become associated with its shape while its source remained anonymous, such anonymous source was entitled to prevent a competitor from using the shape for a competing H product, irrespective of the competitor's efforts to distinguish its product by means other than the shape.

Held, further, that it had been accepted that the shape of the respondent's product, and the shape and arrangement of the handles, legs, wheels and ashtray, had given rise to the deception of which the appellant had complained; and that those features, although pertaining to necessary parts of the article, had nevertheless been capricious in the sense that the article would operate as efficiently and, it might be I inferred, could be manufactured as economically with a different arrangement or shape of its parts.

Held, further, that in such circumstances it was difficult to imagine that there could be no reason of principle or policy for allowing the respondent to continue its deception rather than changing the shape or arrangement of the article or its parts.

Held, further, that, even if 'get up' in its proper connotation did not include the appearance of the article itself or any functional parts of it, this would not lead to the conclusion that the shape and J configuration of an article could not be protected from deception.

1992 (2) SA p491

A Held, further, as to the respondent's argument that it was not possible at common law to obtain a monopoly in the shape of an article, and that the shape of an article, even if deceptive, could therefore not give rise to an action for passing-off, that the principle that no one was entitled to steal another's trade was at least as important as the principle against perpetuating or extending monopolies, and that where, as here, there was nothing in the nature of the product sold which inherently required it to be sold in the particular format which the respondent had chosen to adopt, then if the respondent could not comply with the order without changing the shape of its product, it would have B to change the shape of its product or stop trading in it.

The decision in Reckitt & Colman Products Ltd v Borden Inc and Others [1990] 1 All ER 873 (HL) applied.

Held, accordingly, since the notices affixed to the respondent's product had not served clearly to distinguish it from the appellant's product, C that the respondent's had infringed the interdict.

The decision in Weber-Stephen Products Co v Alrite Engineering (Pty) Ltd and Others 1990 (2) SA 718 (T) reversed.

Case Information

Appeal from a decision in the Transvaal Provincial Division reported at 1990 (2) SA 718 (Stegmann J). The facts appear from the judgment of E M Grosskopf JA. D

C E Puckrin SC (with him P Ginsburg SC) for the appellant referred to the following authorities: As to passing off, see Firestone South Africa (Pty) Ltd v Gentiruco AG 1977 (4) SA 298 (A) at 304D-H; adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530 (T) at 538F-539D...