INTELLECTUAL

Facts and issue: This application initially explicitly concerned alleged design infringements. Most of these alleged infringement issues have now been settled between the applicant and the first respondent. The issue that remains for my determination is an amendment application at the instance of the applicant. The second respondent opposes this amendment application.

Discussion: The parties accept that the applicant owns the sixteen registered designs. The reason for the amendment application was that the first respondent heavily criticized the applicant in the now-settled proceedings. This criticism was that the designs should never have been registered since they formed part of the ‘state of the art’ at their registration. One of the core complaints by the first respondent was the alleged disclosure of the design articles by the applicant at a public exhibition. Because the first respondent initially piloted this state-of-the-art argument, the applicant applied to amend its design registration certificates to include a release date. Thus, the amendments only relate to a release date. The proposed amendments leave the design unaltered. The applicant would have been entitled to the inclusion of a release date. Further, the interests of third parties affected by subsequent registration would also be protected. Most significantly, no third parties have raised any objections after the publication of the intended amendments. The opposition raised by the second respondent is directed to try to make their prior conduct lawful. Any application for the revocation of the designs is absent from these proceedings. None of the grounds of opposition raised by the second respondent (or even the first respondent seeking to impugn the novelty of the designs) provide a tenable basis to conclude for the invalidity of the designs. Thus, the amendments should be allowed. Also, the effect of the amendments will support the position that the amendments may be granted. Thus, the opposition to the amendments must fail.

Findings and order: The applicant is granted leave to amend (by way of formal recordings), to record release dates for the applicant’s registered design numbers. Following section 26(1)(b) of the Designs Act, Act 38 of 1997, the release dates for the amendments to the registered designs are granted to record them as 27 April 2016.

Facts: The African National Congress (ANC) alleges that the uMkhonto weSizwe Party (MKP) has, without authorisation from the ANC as the proprietor of the registered trade mark No 2014/22089, used the identical mark or a mark so similar as to likely cause confusion or deception in the mind of the average South African voter to the extent that she or he will not be able to distinguish between the ANC and the MKP at the ballot box, especially in light of the imminent national elections. In addition, the ANC contends that the MKP has, through the use of the name uMkhonto weSizwe and of its registered mark, accompanied by oral misrepresentations by MKP leaders, engaged in conduct amounting to passing off under the common law. The contention is that millions of voters will know that the name uMkhonto weSizwe and its logo are synonymous with the history of the ANC, and in so doing, they are likely to cast a vote for the MKP while believing that they are in fact voting for the ANC.

Application: An urgent application brought by the ANC against MKP in which the ANC seeks a final interdict on the grounds that the MKP infringed its trade mark, registered pursuant to the provisions of the Trade Marks Act 194 of 1993. The grounds of infringement relied upon by the ANC are located in section 34(1)(a) and (c) of the Trade Marks Act. The MKP contends that the application is one which is disguised as falling under the ambit of trade mark and intellectual property, when in truth it falls squarely within the heartland of political rights and election law.

Election matters and urgency: This court is not the forum to settle a dispute where there are competing historical accounts of events which took place almost 60 years ago, as to who may rightfully lay claim to the name uMkhonto weSizwe, excluding for the moment the debate on the proprietorship of the registered trade name. An important facet of the litigation before this court is the litigation initiated by the ANC in the Electoral Court, in which it sought to set aside the decision of the IEC and its Chief Electoral Officer to register the MKP as a political party on 7 September 2023. The assertions for the ANC directly implicate rights under section 19 of the Constitution (political rights). Matters concerning elections should ordinarily be brought at the earliest available opportunity because of their potential impact on the elections. The explanation tendered by the ANC for launching the urgent application falters at every level when held up against the standard set out by the Constitutional Court. In the exercise of the court’s discretion, the application would not be entertained, due to the lack of urgency.

Jurisdiction: The ANC’s description of the purpose of their application and the disputes that have arisen leaves no uncertainty that it pertains to elections and political rights. Having elected to challenge the registration of the MKP in terms of the mechanisms provided for in the Electoral Commission Act 51 of 1996, and having lost such appeal on the basis that it failed to comply with section 15(4B) of that Act, it was not open to the ANC to change lanes and institute another application in a different forum, essentially seeking the same relief predicated on the same grounds advanced before the IEC. The relief which the ANC seeks under the rubric of trade mark infringement, when considered in its context, falls par excellence into the sphere of “electoral matter” and political rights through the wider prism of the Constitution. The ANC’s right of recourse was an appeal or review to the Electoral Court to challenge the dismissal of its appeal lodged on 20 September 2023. The ANC chose the wrong forum to assert it rights. This court has no jurisdiction.

Locus standi and merits: Any proprietary interest that the ANC had in the warrior mark could only have been perfected by assignment on 23 September 2023. By that date, the MKP was registered as a political party and had acquired a vested interest in certain political rights (including the right to campaign under a particular name (uMkhonto weSizwe); to use an abbreviation (MK); and to use the mark of a warrior bearing a spear and shield). Our history tells us that despite our relatively short democracy, the South African public is finely attuned to the political rhetoric by various parties, particularly in light of the long struggle in this country to achieve the freedoms protected in section 19 of the Bill of Rights. The position of the average voter should not be compared to that of a consumer who may be misled when deciding whether to purchase a particular brand of coffee or teabags at the local supermarket, or a pair of athletic shoes at a sports store. There can be no confusion that will confront a voter in the sanctity of the voting booth, when confronted with the symbols of the ANC and the MKP. It has not been established that the marks resemble each other so closely that deception or confusion among voters is likely to arise. The ANC failed to establish a clear right for final relief, either to the name or to the use of its registered mark. The ANC had an alternate remedy of approaching the Electoral Court to undo the registration of the MKP on the grounds it advanced in this court. It could have achieved substantial redress in that court.

Order: The application is dismissed with costs.

CHETTY J

Claim: The plaintiffs have instituted a claim in delict for a final interdict and damages of R10,646,486.50 against the defendants on four categories of conduct which they allege give rise to unlawful competition: (1) the first defendant’s injurious falsehoods concerning the plaintiffs (2) the direct substitution of Evrigard masks and gloves with NLG’s gloves and masks, alternatively gloves and masks distributed by third parties (3) the passing off of Evrigard’s gloves in the colour green, said to have become distinctive of Evrigard and its gloves (4) the misappropriation of Evrigard’s formula for the manufacture of a fluorescent green coloured polymer applied to its gloves and the misappropriation of Evrigard’s price list, said to constitute confidential information and a trade secret belonging to it.

Exception: An exception together with an application to have the plaintiffs’ particulars of claim set aside as an irregular step in terms of Uniform Rule 30. The plaintiffs’ claims are based on unlawful competition and the defendants submit that on every interpretation that can reasonably be attached to it, the pleading, same is excipiable. The defendants contend that the plaintiffs seek to rely on a concerted scheme devised by the defendants to engage in unlawful competition and to cause the plaintiffs harm.

Passing off and the green colour: The plaintiffs allege that Evrigard has made continuous and extensive use of its proprietary fluorescent green colour for its gloves. The defendants submit that allegations in support of a passing-off claim on the basis that the colour green has become distinctive of Evrigard’s gloves are insufficient to sustain a cause of action because the common law does not countenance the acquisition of a get-up in a single colour and the plaintiffs have not alleged the existence of any capricious additions capable of rendering the get-up of the gloves distinctive. Even if the court finds that the plaintiffs have pleaded the requirements for a passing off, it is unclear on what precise basis such a claim can be quantified. There is no correlation between the alleged passing off and the damages claimed.

Confidential formula: The plaintiffs allege that Evrigard manufactures its gloves using a fluorescent green-coloured polymer according to a confidential formula and process. The defendants submit that the plaintiffs have not alleged the existence of statutory rights that would vest Evrigard with any proprietary right or interest in the fluorescent green polymer or the production process or formula that produces the polymer in a fluorescent green colour, and have not alleged sufficient facts to justify legal recognition and protection to a proprietary right or confidentiality interest at common law. Even if the court finds that plaintiffs have pleaded sufficient facts, which if proved, would justify legal recognition and protection of a proprietary right or confidentiality interest at common law in the fluorescent green polymer or the production process and formula giving rise thereto, it is unclear on what precise basis such a claim can be quantified.

(See also the other grounds of exception, including related to the confidential price list.)

Order: The exception is upheld and the plaintiffs’ particulars of claim are struck out. The plaintiffs are granted leave to amend their particulars of claim within 15 days.

NOWITZ AJ

Facts and issue: The main application is brought by the applicant, in which it seeks to prevent the respondent from making use in the course of its trade of the mark Overland, or marks confusingly similar thereto. The respondent opposes the main application and, in addition, brings a counter-application for the partial cancellation of certain of the goods and services in respect of which the applicant's trade marks have been registered.

Discussion: The applicant seeks to establish trade in respect of camping goods by pointing to its sale of such items as paraffin stoves, flasks, stainless steel cups and candles, which are described as camping products. All of these items however can and are routinely used for a variety of residential, occupational and recreational purposes, and it is entirely artificial and self-serving to describe them as camping products. The applicant has in this regard failed to establish any acceptable level of use in respect of camping gear and accessories, and no trade at all in clothing, footwear and accessories. 

Findings: Bearing in mind the identity of the applicant's customer base and the general nature of goods sold by the applicant and respondent, the goods traded by the respondent are commercially quite different from those traded by the applicant. It would be commercially nonsensical to maintain registration of the full scope of the applicant's trade marks in the circumstances.

Order: Partial cancellation and rectification is ordered of the applicant's OVERLAND Trade Marks, which are to be limited in terms of section 27(1)(a) of the Trade Marks Act 194 of 1993. 

Facts and issue: The respondents applied in the court below for an interdict against the appellants. They alleged delictual interference in their business by the present appellants in the form of passing off and unlawful competitive trading. The court below held that as Applebite is not trading and is dormant it had no case. The application was however, granted in favour of Gonbar and Alex Jay against Apple and Simul. Apple and Simul sought and was granted leave to appeal by the SCA. 

Discussion: The respondents claim that their customers are confused by the marketing by the appellants. The respondents allege that their turnover has dropped. Ultimately, the right of the appellants, as recorded in the lease agreements, to retain the large sign at 95 Van Riebeeck Avenue cannot be read so as to render hollow the right to the name as included in the goodwill, ultimately sold by the appellants to the respondents. The critical issue derives not from ownership but from action calculated to deceive. The conscious and deliberate effort to piggy-back on the reputation of the business which had been sold by the appellants to the respondents is well established. The appellants have passed off their business as being that with which an existing customer base was already acquainted by using an established brand and did so intentionally to solicit that body of customers.

Findings and order: The appeal is dismissed with costs.

Facts: Grupo Bimbo (appellant) is a Mexican company which trades in many countries, including South Africa, and is the proprietor of the impugned mark TAKIS FUEGO. It was registered in South Africa in 2012 and covers the following class 30 goods: “Bread, pastry, corn flour chips, wheat flour chips, corn extruded, wheat extruded, pop corns.” Takis Biltong (respondent) is a South African company which sells biltong and other snack products in South Africa. It is the registered proprietor of two trademarks (the registered TAKIS LOGO marks). The respondent applied to the High Court in terms of section 24 of the Trade Marks Act 194 of 1993 to expunge the impugned mark. Vorster AJ (the court of first instance) dismissed the application. The respondent appealed against that decision to the full court.

Appeal: A reconsideration of the order of the Supreme Court of Appeal dismissing the application for special leave to appeal against the order of the majority in the High Court. The majority made an order cancelling the trademark registration for the TAKIS FUEGO device in class 30 (the impugned mark).

Discussion: The majority found that on comparison of the marks in question, they are so similar that there is a likelihood of confusion or deception arising in the marketplace. The minority found, to the contrary, that although the marks in question are similar, the goods in question are not. It concluded that there is no likelihood of deception or confusion arising in the marketplace. It is evident that the dominant, integral, or essential element of both marks is the identical word TAKIS. It is undisputed, in this regard, that TAKIS is an invented word. It has no meaning in the English language. It is these features of the registered TAKIS LOGO mark which give it an inherent distinctiveness, such that no person can claim an entitlement to use the word in a descriptive context. This means that the addition of any other word or logo will not serve to distinguish. See the colour pictures of the marks at paras [2] and [3].

Findings: The undisputed photographic evidence annexed to the respondent’s founding affidavit confirms that snack foods such as biltong and related snack products are sold in convenience and retail stores side by side to other snack products including crisps/chips, ice-creams, popcorn, peanuts, and nuts in general. The respondent has established for purposes of section 10(14) of the Trade Marks Act that the impugned mark was wrongly entered in the trade mark register as it is (a) identical to or so similar to the respondent’s registered TAKIS LOGO marks; (b) used on the same or similar goods (snack foods) as the respondent’s registered TAKIS LOGO marks are used; and (c) likely to deceive or cause confusion. The applicant’s use of the impugned mark is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of its registered TAKIS LOGO marks.

Order: The application for the reconsideration of the order of this court dismissing the applicant’s application for special leave to appeal is dismissed with costs.

KATHREE-SETILOANE AJA (MOLOMELA P, NICHOLLS JA, MEYER JA and KOEN AJA concurring)

Facts: The Forest and Feast range of products by Checkers were launched and unveiled in November 2020 as a new premium luxury range of products which were previously exclusive and typically found at specialty delicatessens and food emporiums. According to applicant the Forage and Feast assortment is available for purchase at Checkers and Checkers Hyper outlets nationally and has generated extensive nationwide sales in excess of R180 million. The prominent and conspicuous features of the Forage and Feast get-ups are: the mark Forage and Feast at the top of the packaging in a disconnected calligraphic cursive font in gold; the prominent use of the colour combination comprising navy, blue and gold; the artistic representation of the ingredients; and the overlapping placement of the product descriptors.

Application: Checkers seeks interdictory relief on alleged infringements based on passing off under the common law. The parties are direct competitors and well-known retailers of fast-moving consumer products. Checkers alleges that Pick n Pay is infringing upon its common law rights in the form of goodwill and reputation associated with the Forest and Feast range through the manufacturing and offering for sale of its competing Crafted Collection range of products.

Discussion: The submission by Checkers that the colour combination of navy, blue and gold on Pick n Pay's range is used in similar proportions to that applied in its products; that Checkers noted that Pick n Pay's marketing material also imitate those used by Checkers, more specifically in respect of the layout, colour, artistry and look-and-feel of the material; the contention that Pick n Pay's advertisements in the digital and print media reveal glaring similarities to those used to promote Forest and Feast in order to obtain an unfair springboard and competitive advantage in the marketplace; and that Pick n Pay asserted that Checkers cannot claim nor enforce a monopoly in respect of a get-up that is used by multiple brand holders in the grocery stores across the country and that Checkers had merely showcased its use of the Forest and Feast get-up, but mere "showcase" alone does not equate with distinctiveness.

* Note the colour picture of the products in para [2].

Findings: While it is accurate to say that not every item in the Crafted Collection range resembles an item in the Forest and Feast line, a significant proportion of the items possess a comparable visual and tactile experience, rendering them nearly indistinguishable from the Forest and Feast line. The competing products are confusingly similar and are sold exclusively at both retail outlets. The products are also marketed and displayed in a similar manner. It is highly probable that consumers will perceive both products as coming from an identical manufacturer. Considering the notable similarities in terms of colour, typefaces and packaging, the court is satisfied that the Crafted Collection range, viewed holistically, is almost certain to confuse and deceive the public, and potentially result in damages for Checkers.

Order: Pick n Pay is interdicted and restrained from passing off its Crafted Collection products as those of Checkers, in particular its Forage and Feast range and is ordered to destroy all printed materials, product packaging bearing the infringing get-ups, which are under its control. It is directed that an enquiry be held for the purposes of determining the amount of any damages to be awarded to Checkers. Pick n Pay is to pay the cost of two counsel, one of whom is a senior.

GOLIATH AJP

Facts: Two rival traders in the paint industry are at loggerheads. The one trader is a renowned trader whose registered trade mark, DULUX, has been established internationally and nationally over many decades. It is engaged in the manufacturing, marketing and distribution in South Africa of paints, varnishes and related products and services primarily under the DULUX trade name. The other trader is a new entrant into the market, having been established in the beginning of 2021. It started to use the trade name, DUMAX, thereafter.

Application: The applicants seek a final interdict in terms of the Trade Marks Act 194 of 1993, restraining the first and second respondents from infringing the first and second applicants’ registered trade marks. Two main issues are to be considered. First, the get-up of the two rival traders. Second, the respondents’ entitlement to use the name DUMAX, either on its own, or as part of the name DUMAX PAINTS.

Discussion: That the applicants are the owners of several trade marks and trade mark registrations with the name DULUX on its own or with other words such as “Specialist Paint Centre”, “Cover-all” and “MaxiCover”; that the success of the Dulux brand internationally and in this country and its enormous reputation and goodwill as a well-known trade mark is beyond doubt; that on the applicants’ get-up one finds a flourish device on top of the word DULUX, whilst the first respondent is using a rainbow-like device in conjunction with the DUMAX trade mark and this device is running down diagonally between the “M” and the “A” and forms part of the left leg of the “A”; that in both instances the parties make use of red, orange, yellow, green and blue colours; and that the respondents relied in no uncertain terms on the right of previously disadvantaged persons to be allowed to become competitive in markets from which they were excluded during apartheid.

* See the colour pictures at paras [19] and [20].

Findings: The court is satisfied that, contrary to the explanation provided by the respondents’ deponent, this is a case that falls squarely within the parameters of section 34(1)(c) and the species of trade mark infringement commonly known as dilution. The respondents’ deponent, he being the sole director of both companies, has decided to “sponge” on the well-known DULUX and MAXICOVER trade marks by “pirating the product of years of invention” and “reap the fruits” sown by the applicants. It was ironic that when Mr Mthombeni (for the respondents) pronounced the words “Dulux” and “Dumax” in one particular sentence during his oral argument, his pronunciation of the two words was so remarkably the same that the judge commented about it at the time. It is fair to say that, save for the identical first syllable, “Du”, the second syllable in both words may often be pronounced the same, eg as in “sucks". Also, both words end on an “x”.

Order: The respondents are interdicted and restrained in terms of section 34(1)(c) of the Trade Marks Act from infringing the second applicant’s well-known trade mark registration DULUX including but not limited to the use of DUMAX or DUMAX PAINTS or any other trade mark similar to the well-known registered DULUX trade mark. The respondents are ordered to pay the applicants’ costs, including the costs consequent upon the employment of senior counsel.

DAFFUE J

Facts and issue: Evrigard seeks declaratory and interdictory relief as well as ancillary relief. ENB, an entity that manufactures and sells a competing respirator brand in its packaging which Evrigard alleges is both similar and a substantial reproduction or adaptation of the Phuza Moya Get-up. It is claimed that ENB’s conduct amounts to passing off under the common law and copyright infringement.

Discussion: ENB attacked the rights of Evrigard based on section 2(1) of the Copyright Act. The requirement, before a claimant can establish a contravention, is that its own product must be original. ENB showed that another international manufacturer (Port West) uses similar, if not the exact same packaging, as Evrigard. ENB has, consequently, produced evidence to the contrary of the allegations by Evrigard. The patent similarity between the Port West packaging and that of Evrigard is on record and shows that it is strikingly similar. There is no explanation from Evrigard why the Get-up of Evrigard and Port West is so similar. This must impact on the originality of Evrigard’s product. Evrigard failed to show that its product is original as required in section 2 of the Copyright Act.

Findings: ENB submitted that Evrigard failed to establish a sufficient reputation amongst a substantial number of persons to prove the distinctiveness of its goods. The evidence regarding the supply of the masks to mines shows a very limited market, and Evrigard also failed to establish a sufficient reputation in the Get-up in order to succeed. 

Order: The application against the respondents is dismissed with costs.

Facts and issue: The appellant appeals the decision of the Registrar of Patents in refusing to extend the time period for the publication of the acceptance of its South African patent application in respect of the patent application.  The appellant explained that it was not afforded an opportunity to address the Registrar concerning its failure to submit the publication for the acceptance timeously.

Discussion: The appeal is instituted together with an application in terms of Section 19B of the Superior Courts Act read with Regulation 81 of the Patents Act whereby the appellant seeks to introduce new evidence on appeal, more particularly to be granted leave to present the relevant facts to this court. Court may allow further evidence in circumstances where the general principles of justice and reasonableness prevail. One such circumstance is when the evidence was not in the possession of the Registrar, when the decision was made, and which had an adverse effect on the affected party.

Findings: Section 42(3) does not oust the Registrar from exercising discretionary power. Section 42(3) does not contain “otherwise express” provision and neither does it express when such discretion can be exercised. The Registrar’s decision flawed and same should be substituted with an order in favour of the appellant.

Order: The application in terms of Section 19B of the Superior Courts Act is granted.  The request for an extension of time for the publication of acceptance of South African patent application is granted.

Facts: The National bank of Abu Dhabi submitted two trade mark registration applications seeking the registrations of the devices First Abu Dhabi Bank and Grow Stronger First Abu Dhabi Bank. FNB opposes the registration, alleging the trade mark sought is closely similar to their registered trade mark and likely to cause confusion or deceit in the market place. The question to be answered is whether Abu Dhabi Bank’s proposed trade mark is similar or closely similar to applicant’s registered trade mark as to constitute deception or confusion to the public, and would be in contravention of the provisions of section 10(14) of the Act.

Application: In opposition to the registration of two trademarks sought by Abu Dhabi bank in terms of section 21 of the Act. Abu Dhabi bank's proposed trade mark is FAB.

Discussion: Abu Dhabi bank's approach was of initially seeking registration for the protection of its own interests, once the application is granted and the relevant certificate of registration is issued. This explanation is objectively sound and FNB have not tendered any evidence in reply effectively disproving the explanation or evidence. The test whether similarities exist between the proposed mark and a registered trade mark was enunciated in Plascon Evans Paints v Van Riebeeck Paints [1984] ZASCA 51. The legal position is that each mark is viewed as a whole. Thus, First National Bank on the one hand, and Grow Stronger, First Bank of Abu Dhabi with a flash red logo and the Arabic script, on the other, are completely dissimilar.

Findings: FNB have not demonstrated the infringements they sought to rely on in opposition to the respondent’s trade mark registration application. FNB clearly has no factual grounding for opposing Abu Dhabi Banks’s applications. The applicant’s conduct has the hallmarks of a drive to thwart lawful competition, conduct that is described by the court as antithetical. See Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA).

Order: The applicants’ opposition to the registration of the proposed trade mark is dismissed.

MBONGWE J

Facts: National Brands (applicant) and Continental Biscuit Manufacturer (respondent) are competitors in the savoury biscuit market in South Africa where there has been an eight decades long existence of the applicant’s PROVITA biscuits. The applicant is the holder of the trade mark PROVITA which it registered on 19 May 1966 in terms of the Trade Marks Act 194 of 1993. The respondent introduced to the market the SNACTIVE biscuits in 2012 after years of planning and admittedly to compete with the applicant’s PROVITA biscuits.

Application: Eight years after the SNACTIVE biscuits had been in the market, the applicant took issue therewith contending that the biscuits are virtually identical in shape and appearance to the PROVITA biscuit. Applicant seeks interdictory and ancillary relief, premised on alleged infringements of its registered trade mark as well as the common law principle of passing off.

Discussion: The distinctive features of the biscuit and that applicant contends that the presence of these features in the respondent’s biscuits in effect amount to a copying of its PROVITA biscuits and passing off; the market survey which demonstrated that 53% of the participants mistook the SNACTIVE biscuits for PROVITA biscuits by the identification of the shape, look and logo; and that applicant further places emphasis on the presence of the ear of wheat leaf on the SNACTIVE biscuits as the reason for the confusion.

Findings: The respondent entered the savoury biscuit market to compete with the applicant and to offer the consumers a choice. Competition is legitimate provided there is absence of deceit. Applicant can claim no right to the exclusive use of the biscuit itself. By seeking to claim a right to the product type, its shape and appearance, the applicant seeks a continuation of its monopoly of the market in the savoury crispbread space. It is impossible to mistake the two packaging boxes. They are completely distinct, particularly in size, the respondent’s box being almost twice as big to that of the applicant. The colours, particularly the dominance of the colours used by the respondent are 99,9 percent different. The applicant’s implied contention that it has rights to the device and that the use of the biscuit by the respondent constitutes a deception or misrepresentation is misplaced and stands to be rejected.

Order: The application is dismissed.

MBONGWE J