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IN THE SUPREME COURT OF APPEAL
OF SOUTH AFRICA
Case No: 218/97
PREMIER TRADING COMPANY (PTY) LIMITED First Appellant
and
GDK SPORTS (PTY) LIMITED
Second
Appellant
and
SPORTOPIA
(PTY) LTD Respondent
CORAM : HEFER, NIENABER, SCHUTZ, PLEWMAN
JJA,
FARLAM AJA.
DELIVERED : 1 JUNE 1999
Passing-off -
alleged product confusion - reputation as importer/distributor - absence of - no
likelihood of confusion
JUDGMENT
NIENABER JA
NIENABER JA:
[1] This is a case about passing-off. It
commenced as an application by the first appellant for an interdict in the
Durban and Coast
Local Division in which it sought to restrain the respondent
from
"1.1 dealing in any way in roller skates bearing the trade mark Bladeline or using the brand name Bladeline in connection with the sale of roller skates;
1.2 interfering in the applicants' business
in its roller skates bearing the trade mark Bladeline by asserting to the
applicant's
customers that the applicant is disentitled to use its Bladeline
trade mark and threatening legal proceedings against such customers
and/or the
applicant on the grounds that the respondent is the only party entitled to use
the trade mark Bladeline in respect of
roller skates".
The roller skates
concerned are so-called "in-line" roller skates. In-line roller skates differ
from conventional roller skates
in that the four wheels are not mounted in two
matching pairs at the front and at the rear but in a line along the chassis of
the
boot. This configuration, comparable to ice skates, increases their [2]
user's manoeuvrability and speed.
This particular product, so it was
stated, was developed during about 1989 in Australia by a firm called
"Skateworks" which registered
the trade mark "Bladeline" in that country in
1992. Skateworks was taken over by, and eventually became a division of,
Australian
Power Brands (Proprietary) Limited ("APB"). On 23 September 1993 APB
concluded a distribution agreement with the respondent. The
respondent is a
South African company, incorporated two days before, with its principal place of
business in Durban. It operates
as an importer of consumer goods, including
sports and recreational equipment, which it supplies to retail outlets. In
terms of
the agreement APB licensed the respondent to market, distribute and
sell Skateworks products in South Africa, in particular Bladeline
in-line
skates. Clause 13 of the agreement granted the respondent the exclusive right
to the use of the trade mark Bladeline in
South Africa, including the right to
apply for its registration as a trade mark in its own name. The [3]
respondent,
having determined that it was open to it to do so, duly applied for
registration of the trade mark Bladeline in classes 28 and 42
under applications
93/11039 and 93/11040 respectively on 22 November 1993.
Twenty one days
later, on 12 December 1993, the first appellant filed its application, 93/11832
in class 28 and 93/11833 in class
42, for registration of the trade mark
Bladeline.
Both applications are still pending.
The first appellant, a
Johannesburg company, is an importer, like the respondent, of a wide range of
consumer durable goods, including
sports and recreational equipment, such as
roller skates, and, like the respondent, it acts as a supplier to retail
distribution
chains and independent retail stores.
On 8 July 1993 (before
the respondent's incorporation) it acquired, from a notarial bond holder, the
assets and goodwill of three
companies, one of which was Jokari (South Africa)
(Pty) Ltd ("Jokari"). Prior to the takeover Jokari had [4] been a prominent
supplier of sporting goods (including roller skates) to the mass retail market
in South Africa, in relation to which it used the
mark "Jokari".
Included in
the stock Jokari imported were 312 pairs of what was described in the invoice of
the exporter as "Bladeline Inline Skates:
Three Buckles". The invoice is dated
12 March 1993. The exporter was a Taiwanese company, Ellen East Company Limited
("Ellen East").
How this all came about is explained by one Schneider, an
employee of the first appellant who was an employee of Jokari at the time,
in an
affidavit in support of the application: He states:
"If my memory serves me correctly, round October/November 1992, Stephen Stone [Jokari's then managing director] visited Jokari's buying agent in Taiwan. When he returned he told Jokari's sales staff, myself included, of an upgraded in-line skate called the "Bladeline" which he hoped to launch successfully on the South African market from late 1992 onwards ... As far as I can recall, in late 1992 Stephen Stone had samples of both the new "BLADELINE" skate as well as its packaging."
[5] (I shall refer to the product introduced
into South Africa by Jokari as the Taiwanese skates and to the respondent's
product as
the Australian skates, although the latter, so we were informed from
the bar, was also manufactured in Taiwan.)
The Taiwanese skates resembled
but were not identical to the Australian skates. The Australian skates have
the name Bladeline
prominently depicted on the side of the heel of the boot as
well as continuously along the rims of the wheels, separated by a star
motif.
The Taiwanese skates display the name Jokari, although in smaller print, on the
side of the boot and the name Bladeline
on the wheels, likewise (at least
initially) interspersed with a star motif. The Australian skates have a single
buckle with laces
and "mag" wheels whereas the Taiwanese skates have three
buckles and solid wheels.
The box in which the Taiwanese skates were
packaged was an exact copy of the cardboard box, designed for Skateworks
in Australia, in which [6] the Skateworks' Bladeline in-line skates were
marketed. The only difference was in the picture of
the boot on the box which
was that of the Taiwanese skates. That the package was a direct copy admits of
no doubt inasmuch as the
technical specifications displayed on the box related
to the Australian and not to the Taiwanese skates.
Who the actual
manufacturer of the Taiwanese skates was and how it happened that Ellen East
assumed the name Bladeline in Taiwan
are matters not explained in the papers.
What is certain is that it happened without the consent of APB in
Australia.
The following inferences can, I think, safely be drawn:
i) that the article imported by the first appellant was manufactured by someone in Taiwan who pirated, but did not exactly copy, the Australian design. This could have been either Ellen East itself or someone who supplied Ellen East with it;
[7] ii) that Ellen East or its supplier appropriated the trade name Bladeline (for which an application for the registration of the trade mark was pending in Taiwan - the application was made in April and accepted into the register in August 1993);
iii) that the product was packaged in a box which,
but for one detail, was an exact replica of the Australian package;
iv) that
the name Jokari was added to the product, and therefore to the picture appearing
on its package, by or at the order of Ellen
East acting at the instance of
Jokari - either at the very outset, prior to the first delivery of 312 pairs of
skates, or some time
thereafter.
The first appellant, after the takeover of
Jokari, continued to import quantities of the Taiwanese skates which it
advertised, promoted
and marketed in South Africa. It also took formal
assignment of Jokari as a trade mark on 11 April 1995.
[8] Hoar, the managing
director of the respondent, first noticed the Taiwanese skates on the shelves
of retailers in November 1993,
after the incorporation of the respondent and the
conclusion of its agreement with APB in September of that year. On his
instructions
the respondent's attorneys thereupon wrote to the first appellant
objecting to the first appellant's sales of its Bladeline in-line
skates and
claiming for itself all the rights in and to the trade mark. The first
appellant's attorneys responded that the first
appellant's use of the mark,
which it claimed to be extensive, predated the respondent's application for
registration of the trade
mark. The respondent's attorneys thereupon complained
that the box in which the first appellant's product was packaged was not only
a
replica of the package used by Skateworks in Australia but displayed misleading
information relating to the product sold. The
first appellant reacted to this
complaint by at first placing a brightly coloured sticker over the false
specifications with the
words "By Jokari - World of Sport - New
Bright Colours" and, some months thereafter, [9] by redesigning the
package,
as well as the manner in which the word Bladeline appeared on the
wheels, so as not to resemble, as conspicuously as before, the
Australian
get-up.
About a year later, in December 1994, the respondent launched the
Australian skates in South Africa with the name Bladeline prominently
featured
on the outside heel of the boot and on the "mag" wheels.
This foray into the
South African market by the respondent prompted the present motion proceedings,
in which the first appellant
pressed for the relief set out earlier in this
judgment. Paragraph 1 of the notice of motion was opposed by the respondent and
refused
by Combrink J but paragraph 2 was conceded by the respondent and granted
by the court a quo. In the result the respondent was ordered to pay a
proportion of the costs. There is no cross appeal.
After judgment was
reserved by the court a quo but before it was delivered the second
appellant in October 1995 purchased and took over a portion of the [10]
assets and the
business of the first appellant, including the first appellant's
rights in the Jokari trade mark as well as the first appellant's
pending trade
mark application in respect of Bladeline. Also included in the sale was the
first appellant's stock on hand or order
for its in-line skates under the Jokari
legend. After the take-over the Bladeline line of business was conducted by the
second appellant.
The first appellant sought leave to appeal against the
judgment of the court a quo and the second appellant sought leave both to
intervene and to appeal. Both applications were simultaneously granted. For
the sake
of convenience I shall henceforth refer to Jokari, the first appellant
and the second appellant collectively as "the appellant".
Passing-off is a
wrong consisting of a false representation made by one trader ("the defendant")
to members of the purchasing public
that the enterprise, goods or services of
a rival trader ("the plaintiff") either belong to him (the [11] defendant) or
are
connected, in the course of trade, with his own enterprise, goods or
services. (I shall abbreviate, for the sake of convenience,
"enterprise, goods
or services" to the single term "the product" since this is a case of "product
confusion" rather than "business
connection confusion".) The defendant's
representation is a misrepresentation if it is likely to deceive or confuse a
substantial
number of members of the public as to the source or origin of his
product. Passing-off, to be actionable, erodes the plaintiff's
goodwill.
Goodwill is the product of a cumulation of factors, the most important of which,
in the context of passing-off, is the
plaintiff's reputation. Reputation is the
opinion which the relevant section of the community holds of the plaintiff or
his product.
If favourable, it would dispose potential customers to patronise
the plaintiff or his product and if unfavourable, it would tend
to discourage
them from doing so. The plaintiff's reputation may be associated with the symbol
under which his product is marketed.
The symbol renders the product
distinctive of the plaintiff or his [12] product. A false representation by
the defendant
about the symbol used by the plaintiff may encourage or induce
potential customers of the plaintiff, believing that they were patronising
him,
into patronising the defendant. (See, generally, Capital Estate and General
Agencies (Pty) Ltd and Others v Holiday Inns Inc and Others 1977 (2) SA 916
(A); Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434
(W); Brian Boswell Circus (Pty) and Another v Boswell-Wilkie Circus (Pty)
Ltd 1985 (4) SA 466 (A); Royal Beech-Nut (Pty) Ltd t/a Manhattan
Confectioners v United Tobacco Co Ltd t/a Willards Foods 1992 (4) SA 118
(A); Reckitt & Colman SA (Pty) Ltd v S C Johnson & Sons SA (Pty)
Ltd 1993 (2) SA 307 (A); Caterham Car Sales & Coachworks Ltd v
Birkin Cars (Pty) Ltd and Another 1998 (3) SA 938 (A).)
From the above
paraphrase of what is said in the cases there can be extracted two minimum
requirements which a plaintiff must normally
prove in proceedings for an
interdict, based on passing-off involving the use of a symbol, [13] namely, i)
his own reputation in
relation to the symbol which epitomises his product and
ii) deception, or at the very least confusion, on the part of a not
insignificant
segment of the buying public, caused by the conduct of the
defendant, as to the origin of the product or a trade connection with
the
defendant, and which would likely have had an influence on their decision to
procure it.
These requirements the appellant in this matter sought to prove.
I deal with each in turn.
In Caterham, supra, it was said in par 20:
"The correct question can be distilled from the judgments on passing-off of this Court mentioned earlier ... In general terms, it appears to me to be whether the plaintiff has, in a practical and business sense, a sufficient reputation amongst a substantial number of persons who are either clients or potential clients of his business. As far as the 'location' of reputation is concerned, it must subsist where the misrepresentation complained of causes actual or potential damage to the drawing power of the plaintiff's business. Otherwise the misrepresentation would be made in the air and be without any consequences."
[14] The misrepresentation alleged and
complained of by the appellant is the marketing by the respondent of in-line
skates by means
of a get-up in which the word-mark Bladeline is a prominent
feature, without distinguishing it from the appellant's product. The
issue can
therefore be particularised as follows: did the appellant, at the time when and
at the place where the respondent entered
the market, enjoy a reputation in the
word-mark Bladeline in respect of in-line skates?
The respondent entered the
market during the weekend of 16 - 17 December 1994 when its product, with
Bladeline as the name of its
make and "Retro" and "Magic" as the names of two
models, was offered for sale at Sneaker's Store in Durban. The relevant time,
for
present purposes, is therefore December 1994 and the relevant place the area
of jurisdiction of the Durban and Coast Local Division.
The evidence adduced
by the appellant in proof of its reputation consisted of nationwide sales of
its product; national advertising
on TV; promotional material (in the form of
press fliers or brochures containing, inter alia, pictures and [15] prices of
its
Jokari in-line skates, as distributed by Pick ‘n Pay, a national
chain of retail stores with branches throughout the country,
including Durban
and its surrounds); and finally some trade evidence to which I shall return in
greater detail later. No direct
customer evidence was tendered.
The
evidence so offered, as was pointed out on behalf of the respondent, is in the
broadest of terms. Moreover, the evidence of
Durban sales of in-line roller
skates (19 pairs with a stated value of R3 609,05 and 144 pairs with a
stated value of R22 896,00)
can hardly be said to be extensive, having
regard to a potential market of 70 000 to 80 000 pairs in the country
as a
whole. Nevertheless there was, scattered throughout the evidence, just
enough material, I believe, to justify the conclusion that
the appellant's
product must have enjoyed some repute in Durban during December 1994.
But
what repute, in what capacity, and with whom?
The appellant was not the
manufacturer of its product. At best it was the [16] importer and distributor
thereof in South Africa.
Who the actual manufacturer of the Taiwanese skates
was, does not expressly appear from the papers. The inference, as stated
earlier,
is that it was Ellen East or someone who manufactured the product on
behalf or at the order of Ellen East.
Since Ellen East undoubtedly copied
the Skateworks' artwork in designing the package, to the extent of falsely
duplicating the Skateworks'
technical specifications on its package, it is, I
think, safe to assume, in the absence of any contrary explanation from Ellen
East
or Stone, that the name Bladeline was also copied from its Australian
source. Such copying, as counsel for the appellant was at
pains to point out,
was not in itself wrongful; it would only have been wrongful if APB had earlier
acquired a reputation in the
word-mark Bladeline in Taiwan - which has not been
established. If this inference (that the word Bladeline was copied from the
Australian
product by or at the order of Ellen East) is correct,
Bladeline was in effect a manufacturer's mark.
[17] Some confirmation for
this assumption appears, firstly, from the Ellen East invoices of March 12 1993,
20 September 1993 and
23 October 1993 where the product is described by Ellen
East as "item # 7013 Bladeline Inline skate - 3 Buckles". And secondly there
is
the evidence of Schneider, quoted earlier in this judgment, which was to the
same effect.
If Bladeline was a feature devised by or at the instance of
Ellen East by which the product was distinguised as that of the manufacturer,
then the word Jokari must have been affixed to it at the instance of Jokari in
its capacity as importer and distributor of the product
in South Africa.
Whether this happened before or only after the first consignment of 312 pairs
was imported into South Africa in
March 1993, does not appear to me to be a
matter of any moment in this case. It could have happened either at the outset
or later
when Jokari, having tested the market, resolved to import the product
in greater quantities. (Counsel for the appellant demonstrated
during argument
that the nametag Jokari was not [18] integrated into the boot but was stuck
onto it by what was described elsewhere
in the papers as a "magic sticker".
The photograph of the boot with the sticker on it was thereupon incorporated as
a feature into
the package which in colouring, design and detail was otherwise
copied from the Australian product.)
In my opinion the inference can
therefore safely be drawn i) that the word Bladeline, at least initially,
functioned as a manufacturer's
mark and ii) that the word Jokari on the boot
and on the package functioned as the mark of an importer and distributor.
Before dealing with the legal implications of that inference I propose
briefly to dispose of two other issues that were debated in
this court.
The
first is whether the word Bladeline was a mere generic term, descriptive of
in-line roller skates as such, in contradistinction
to conventional roller
skates. I agree with counsel for the appellant that it has not been shown that
Bladeline, as a word which
either is or has become purely descriptive, was
indicative only of a [19] particular type of article. On the facts of this
case
Bladeline was not in that exclusive sense a generic term but fulfilled its
primary function as the mark of its manufacturer.
The second issue I propose
to mention in passing is whether the reputation of the appellant, if any,
adhering to the mark Bladeline,
was tainted and as such had to be
disregarded.
In Caterham Car Sales, supra, par 31, it was said,
stating the principle:
"... to the extent that a reputation is founded upon a conscious falsehood, public policy demands that legal protection should be withheld. ... Caterham cannot be permitted to benefit from its own wrong."
In an
affidavit in support of the respondent's case Lynch, the original owner of the
trade mark in Australia who negotiated the sale
thereof to Skateworks,
stated:
"3. The original artwork and design of the box referred to in proceedings in this application in South Africa was created by
[20] Ms. Jo Shintah, an employee of mine at all relevant times. The artwork for the box was handed to the supplier in Taiwan GOOD-MEN ASSOCIATES INC. for printing on or about 1.5.92.
4. I have carried out investigations and have come to the conclusion that the artwork was blatantly cribbed, without my permission or authority, by the printer in Taiwan who printed the artwork for GOOD-MEN ASSOCIATES INC. and in the process gave it to ELLEN EAST COMPANY LIMITED also without my permission or authority."
That Ellen East exploited the
information so passed on to it and that the appellant in turn capitalised on
that exploitation, may
well be so. The Taiwanese skates, it is true, were not
an exact replica of the Australian ones but the box in which it was packaged
was. When it was pointed out to the appellant in December 1993 by the
respondent's attorneys that its package contained false information,
a sticker
was immediately placed over the offending specifications on the box and the box
itself was afterwards completely redesigned
in May 1994. The manner in which
the mark Bladeline appeared on the wheels was likewise altered so as not [21]
to resemble so
closely the style of its Australian counterpart. While all of
this may well have constituted an admission by conduct that the get-up
of the
Taiwanese product contained matter to which the respondent was legitimately
entitled to object, the objectionable material
was promptly and properly
removed. On the facts of this case there is accordingly insufficient reason to
deny the appellant a reputation
on the strength of the dictum in the
Caterham case quoted above.
To return to the earlier point, the case
must therefore be approached on the footing that Bladeline represented the mark
of the manufacturer,
to which the word Jokari was added at the instance of the
appellant in its capacity as the importer and distributor of the product
in
South Africa.
An importer or distributor of the goods of a manufacturer who
acts as a mere conduit between the manufacturer and the end user of
the product,
will as a rule find it hard to maintain proceedings for passing-off in his own
name. But this [22] is not such a
case. The appellant qua
importer/distributor was not simply an inactive link in the chain of
distribution. It caused to be imprinted on the product its
own
imprimatur or stamp of identity, selection and approval. Cases cited in
argument, such as Hirsch v Jonas (1876) 3 ChD 584, Dental
Manufacturing Company Ltd v C De Trey & Company [1912] 3 KB 76 (CA),
Imperial Tobacco Company of India Ltd v Bonnon and Others [1924] AC 755
(PC) and Rusmarc (SA) (Pty) Ltd v Hemdon Enterprises (Pty) Ltd
1975 (4) SA 626 (W), are accordingly not directly in point.
But of
course on that approach the appellant's distinguishing symbol is Jokari, not
Bladeline. Any reputation it acquires as importer/distributor
would therefore
adhere not to the word Bladeline but to the word Jokari. The adding of the word
Jokari accordingly does not assist
the appellant in establishing a reputation in
the word-mark Bladeline.
This conclusion, that the appellant, at best for
it, acquired a reputation in the [23] word Jokari rather than Bladeline, is
fortified
by the appellant's own trade evidence.
That evidence consisted of
an affidavit from Baker, a houseware buyer at the Pick ‘n Pay Hypermarket
by the Sea in Durban North;
Armstrong, a houseware buyer at the Pick ‘n
Pay Hypermarket in Boksburg; Taylor, who describes his position as that of "a
merchandiser in Totalsports (Pty) Limited" of Cape Town and Perrik the managing
director of Sports ‘n Leisure, a retailer in
Durban.
These affidavits
were rightly criticised on behalf of the respondent as being suspiciously alike.
I shall confine myself, for present
purposes, to the affidavits of Baker and
Perrik who are the only ones commenting on the situation in Durban. Baker
refers to the
"Jokari brand" as one of the market leaders in the field of mass
distributed sports equipment and as one of the country's major suppliers
of
roller skates (as opposed to in-line roller blades).
[24] In par 5 of his
affidavit he states:
"The JOKARI "In-line" rollerskates were marketed under three model names, these being JOKARI BLADELINES, JOKARI RADICALS and JOKARI PRO LINE ..."
Paragraph 12 reads as follows:
"As a result of the promotional campaigns conducted by both the Applicant and Pick ‘n Pay for the JOKARI BLADELINE "In-LINE" rollerskates they have acquired a substantial reputation and goodwill in the market place and are asked for by name."
This paragraph must be contrasted with
paragraph 14:
"Both JOKARI BLADELINES and JOKARI RADICALS are asked for by the name BLADELINE or RADICALS respectively and it is clear to me that JOKARI BLADELINE is an established brand and has been established since mid 1993."
Apart from the contradiction (as to whether customers
ask for Jokari Bladelines or simply for Bladelines), it is plain that in South
Africa the dominant mark is Jokari and not Bladeline. This is also apparent
from the affidavit of Perrik, who in paragraph
6 refers to the product which
was:
[25] "branded with the Jokari trade mark on the body of the boot and the BLADELINE and PRO-LINE models were labelled on the wheels of the roller skates" (my emphasis).
In paragraph 8 of his affidavit he
contrasts the "house mark JOKARI" and the "model marks BLADELINE and PRO-LINE"
and in paragraph
10 he refers to Jokari as the house mark and to the other two
as "subsidiary trade marks for the two models of roller skates." Paragraph
11
reads:
"To my knowledge Jokari is the dominant supplier of all types of roller skates, and it has held this position since I commenced trading in this field. The trade mark JOKARI is exceptionally well known and I estimate that it supplies up top 60% of the roller skate market."
These affidavits
strongly suggest that in South Africa Jokari is regarded as the name of the make
and Bladeline and Pro-Line as
the names of particular Jokari
models.
Notionally there is nothing unacceptable in the proposition that a
model name may acquire a reputation separate and distinct from
that of the
make, but in [26] my view the conflicting evidence adduced by the appellant in
this case falls short of establishing
such a separate reputation in Durban. The
reputation, if any, is one acquired for Jokari rather than Bladeline.
To
overcome this difficulty in its case (that the reputation adhered in Jokari
rather than in Bladeline), the appellant in its replying
affidavit sought to
demonstrate that the reputation was not in Jokari or in Bladeline as such but
rather in the juxtaposition of
the two word-marks; consequently that the
exploitation by another party of either of the two component parts, in this
case Bladeline,
would ipso jure infringe on the conjoined
mark.
According to the appellant the skates were promoted and marketed with
the "general" mark Jokari endorsed on the outside of the heel
used in
conjunction with the "specific" mark Bladeline on the wheels. Because the
specific mark is always used in conjunction with
the general mark each
indicates, so it was submitted, the "source and provenance of the goods in the
First Appellant". It is stated
thus in [27] the replying affidavit:
" .... the conjunctive use of these two marks denotes and identifies the actual BLADELINE roller skate as a JOKARI product, and as emanating from and being connected in the course of trade with the proprietor of the Jokari Trade mark."
The notion of a conjoined or composite mark may be
perfectly feasible as a proposition of law; in this case, as a proposition of
fact, it fails. The two marks simply did not function in that fashion.
Nowhere, on the boot or on the package, do they appear
in the form
"Jokari-Bladeline". On the boot itself Jokari is affixed on the heel and
Bladeline is printed on the wheels. Merely
as a matter of physical appearance
the two words consequently are not linked or articulated. On the package, in
its redesigned form,
Bladeline appears on the box, with the letters B, E and E
in bright and the remaining letters in subdued colours, removed from a
separate
insert on which the words "Jokari: World of Sport" appear in much smaller
print.
[28] In the first appellant's correspondence, likewise, Jokari and
Bladeline are never used in tandem; in fact, in the appellant's
attorney's
first letter of 14 December 1993 only the word Bladeline or Blade-line is used,
and Jokari is not mentioned at all. So
too in the affidavits of the appellant's
witnesses, as stated earlier, there is no reference to Jokari-Bladeline in
composite form.
Schneider in particular talks only of Bladeline. Baker, as
stated earlier, distinguishes between Jokari Bladeline, Jokari Radical
and
Jokari Pro-Line in the sense that Jokari is the make and the others are
descriptions of various models; as such Bladeline is
simply, as he put it, "a
Jokari product". Perrik also distinguishes between the house mark, Jokari, and
the model marks, Bladeline
and Radical. Baker's bald assertions that Jokari
Bladeline acquired a substantial reputation and goodwill in the market place,
that
the product is asked for by that name and that Jokari Bladeline is "an
established brand", must therefore be open to considerable
doubt.
That
assertion has not been confirmed by any other evidence and, contrary [29] to
what one would have expected, the aforementioned
doubt has not been removed by
evidence, in particular, from representative members of the buying public as to
how the product was
in fact viewed in the market place. Reputation, after all,
is the collective opinion held by a particular section of the community
about
something or somebody. The relevant opinion, for present purposes, is that of
customers or potential customers of in-line
skates. Evidence, in this case,
of the reputation Bladeline enjoyed in the market-place with customers and
potential customers
is conspicuously lacking.
In my opinion the evidence
tendered on behalf of the appellant accordingly falls short of proving the
requisite reputation for either
Bladeline or Jokari-Bladeline (as opposed to
Jokari) in Durban during December 1994.
That conclusion effectively disposes
of the appeal. If the appellant failed to prove the requisite reputation
there could have
been no misrepresentation and hence no passing-off.
Consequently it is not speaking necessary to say anything about the
further aspect mentioned earlier, namely, whether the get-up
of the product
introduced into the South African market by the respondent, which included the
word-mark Bladeline, was and would
be confusingly similar (in the eyes of a
substantial number of ordinary members of that segment of the public disposed to
purchase
this kind of article) to the get-up of the product previously
introduced into the country by the appellant. I propose, nevertheless,
in one
paragraph, to do so all the same.
In respect of the appellant's article the
word Jokari is that of the make and Bladeline that of the model; in respect of
the respondent's
article Bladeline is the make and Retro or Magic is the model.
The common factor is the word Bladeline. In the one case it fulfils
a secondary
or subsidiary function and in the other a primary or dominant one. The
retailers to whom the respective products
are supplied would themselves of
course not be confused. But that, I accept for [31] present purposes, is not
the test.
The enquiry must be directed at the potential end customers. Judging
by the promotional material adduced by the appellant in support
of its case, the
end customers would most likely be teenagers or their parents. Teenagers, when
it comes to this sort of product,
are notoriously discerning and discriminating
purchasers and their parents, if uninformed, would, one imagines, take advice
from
shop assistants who themselves would be alive to the differences between
the two products. Having regard to its price range this
is not the type of
product which would inspire buying on impulse. Finally, and purely as a matter
of appearance, the differences
in get-up between the two products after the
redesign of the appellant's package in May 1994, so far outweigh the similarity
of
the one common feature, the word Bladeline, that the realistic likelihood of
deception in my opinion is slim.
The appellants have accordingly also not
established the further requirement for the interdict which they
sought.
[32] For the above reasons the appeal should in my view be dismissed.
The following order is made: the appeal is dismissed with costs, such
costs to be paid jointly and severally by the first and second
appellants, and
to include the costs occasioned by the employment of two counsel.
.............................
P M NIENABER
JUDGE OF APPEAL
Concur:
Hefer JA
Schutz JA
Plewman JA
Farlam
AJA
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