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Unilever Plc and Another v Salma Traders (7507/2008) [2008] ZAGPHC 401 (12 December 2008)

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IN THE HIGH COURT OF SOUTH AFRICA


(TRANSVAAL PROVINCIAL DIVISION)


Case number: 7507/2008

Date: 12 December 2008

Not reportable






In the matter between:


UNILEVER PLC First Applicant


UNILEVER SOUTH AFRICA HOME & PERSONAL Second Applicant

CARE (PTY) LIMITED


and


SALMA TRADERS Respondent



JUDGMENT

PRETORIUS J,

This is an application for the following relief:

  1. Interdicting and restraining the respondent from infringing its registered OMO trade marks No’s 24/986, 85/8231, 65/5023 and 98/09335 in terms of Section 34 (1) (a) of the Trade Marks Act, 194 of 1993 by using the trade mark FOAM-O in relation to goods for which the aforesaid trade marks are registered, or of any other mark which so nearly resembles the OMO trade marks as to be likely to deceive or cause confusion;

  2. Interdicting and restraining the respondent from infringing the first applicant’s rights in and to its registered OMO trade marks No’s 24/986, 85/8231, 65/5023 and/or 98/09335 in terms of Section 34 (1) (c) of the Trade Marks Act, 194 of 1993 by using the trade mark FOAM-O in relation to any goods or the use of any other mark likely to take unfair advantage of, or be determined to, the distinctive character or the repute of the aforesaid registered OMO trade marks;

  3. Ordering the respondent to remove the infringing mark FOAM-O from raw material and, where the infringing mark is inseparable or incapable of being removed from any material, the Respondent shall deliver up such material to the applicants;

  4. That the respondent pays the costs of this application, including the costs of two counsel where applicable.”



It is common cause that the first applicant is a multi-national company that conducts business in South Africa in laundry, detergent and personal care products through its licensee in South Africa, the second applicant, who is a permitted user of the first applicant’s registered trade marks.


The second applicant is a manufacturer and distributor of the first applicant’s detergents and laundry products. It is further common cause that the second applicant is a permitted user of the OMO product within the meaning of the South African Trade Marks Act.


The respondent is Salmon Traders CC, a closed corporation with the principal business, according to the records of the Companies Registry as being:” General wholesale, retail trade and consultants.”


The reason for this application is to prohibit the respondent from selling and distributing a washing powder under the trade mark FOAM-O. The applicants contend that the respondent infringes the first applicant’s registered OMO trade marks in terms of provision of section 34 (1) (a) and/or 34 (1) (c) of the Trade Marks Act No 194 of 1993.


Section 34(1) (a) of the Act provides:

34 (1) The rights acquired by registration of a trade mark shall be infringed by-

(a) the unauthorized use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;


The first applicant is the registered proprietor of the following OMO trade marks:

Trade Mark No. 24/00986 OMO dated 13 October 1924 in class 3 in respect of:

“Cleaning preparations for laundry purpose”


Trade Mark No. 85/08231 OMO WITH POWER-FOAM PLUS dated 13 November 1985 in Class 3 in respect of:

“Detergents (not for use in industrial or manufacturing processes or for medical use); preparations and substances all for laundry use; fabric conditioning preparations; bleaching preparation included in class 3; soaps; cleaning, polishing, scouring and abrasive preparations”

Trade Mark No. 65/05023 OMO dated 3 December 1965 in Class 3 in respect of:

“All goods included in class 3, but not including dentifrices, cleaning preparations for laundry purposes and soaps.”


Trade Mark No. 98/09335 COLD WATER OMO MACHINE WITH COLOURSAFE BLEACH & DEVICE dated 1 June 1998 in Class 3 in respect of:

“bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps.”



The respondent does not dispute that the first applicant’s trade marks in South Africa are primarily well-known trade marks within the meaning of the Paris Convention and the GATT Agreement on trade related aspects of intellectual property rights and are constantly under threat of imitation and reproduction. It is further admitted by the respondent that the first applicant’s OMO trade marks have been used in South African to such an extent that they enjoy a considerable reputation and goodwill. They therefore qualify as a “well-known” trademark.


Mr Marcel Kerkmeester, the Vice President: Home Care for the Unilever Group and a director of the second applicant, supported the founding affidavit of Mr Daly and the respondent agrees that the contents of the affidavit is correct. The conclusion is therefore that the mark OMO is distinctive in relation to washing powder.


The applicant contends that OMO has a considerable reputation regarding foaming washing powders and that the ordinary customer perceives it in that light. It is also common cause that OMO was launched in 1963 as OMO “Insta-foam” and that in 1969 the “Power Foam” concept was launched. In the 1970’s it was re-launched as “Cold Water OMO with Power Foam Plus.”


OMO is well-known to all markets, the upper end of the market who can afford washing machines and the lower end of the market, as it caters for hand washing, as well as for cold water washing. It is bought by all sectors of the community across the income spectrum, by the sophisticated and unsophisticated clients in all kinds of shops – from hypermarkets to spaza shops.


Respondent acknowledges that it is importing and distributing in South Africa a detergent bearing the trade mark FOAM-O. The respondent has applied for the registration of the trade mark FOAM-O. The respondent argues that the word “super” in front of the word FOAM-O should be read as once concept – Super FOAM-O. In Oude Meester Group Bpk and Another vs SA Breweries Ltd; SA Breweries Ltd and Another v Distillers Corporation (SA) Ltd and Another 1973 (4) SA 145 (W) at 161 A-C, Cole J set out the test that should be applied :


“ But that, the authorities tell us, is not the proper approach to a problem of this kind. I am required, notionally, to transport myself from the court room to the market place, and to stand in the shoes or sit in the chairs of those who buy beer. I am to remember that the consumers of beer, in South Africa, include white, black and coloured people, many of whom are uneducated or ill-educated, and some of whom use English and Afrikaans imperfectly but interchangeably. I must remember the fact that not all beer drinkers are careful or logical people, and that not all of them articulate clearly. I think it relevant to bear in mind, also, the fact that on a convivial occasion, enlivened by the use of beer or spirits, recollection may fade and articulation may deteriorate with the passage of time.


I must ignore the advantages of looking at the two relevant marks
side by side, and I must allow for the imperfect recollection which is characteristic of most human beings (see Aktiebolaget Hjorth & Co . v. Aktiebolaget Optimus, 1932 T.P.D. 177 at p. 187; American Chewing Products Corporation v American Chicle Co. , 1948 (2) SA 736 (AD) at p. 744). I must remember that there is a tendency for people (and, I incline to think, ill-educated and uneducated people in particular) to abbreviate the names of things (see Application of Frederick Wilks: The Aqua-Repela case, (1912) 29 R.P.C. 21). I must remember that confusion in sound is no less important than confusion in appearance, and that beer is often ordered and drunk in busy, noisy places. I must bear in mind, as well, that the idea conveyed by a mark may be remembered, accurately or vaguely, rather than its exact form or characteristics.” (my emphasis)


In African Sun Oil Refineries (Pty) Ltd v Unilever plc 2007 BIP 127 (NPD) at p 131 Hurt J found:

“Moreover, and in contradistinction to the hypothetical customer of earlier times, I think that the courts must take cognisance of the circumstances that shoppers in supermarkets, more especially those seeking the more prosaic domestic products such as soap or toothpaste, are often in a hurry and may easily be induced, by the first impression of the appearance of a mark, to put a product into their shopping baskets without a detailed examination of the mark. In this setting, the importance of ‘first impression’ cannot be over-emphasised. And, of course, it has long been the trademark law that the ‘first impression’ (whether it be in relation to the sound of a mark, when pronounced, or the appearance of the dominant features of a mark) is usually the most reliable guide for deciding whether there is a likelihood of confusion. In this case of Aristoc Ltd v Rysta Ltd (reported in [1945] AC 68) it was accepted that the appearance of the two marks was unlikely to result in confusion, but the contention was that, in some accents, second syllable of the work ‘Aristoc’ would be emphasised and that the phonetic similarity resulting from such a pronunciation would be likely to cause confusion. Lord Maugham (at 86) approved an earlier statement by Luxmoore LJ, which was in the following terms:

The answer to the question whether the sound of a word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trademarks Act, 1938, must nearly always depend on first impressions, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.


Just so, in more modem context, must the first impression of the appearance of a mark weigh heavily in the test for the likelihood of confusion or deception. I hasten to add that this is not to say that the setting of the customer seeking help from a sales assistant is to be disregarded in applying the test – where that setting is reasonable conceivable, the type of ‘notional discussion’


It is quite apparent from the packaging that FOAM-O is the dominant feature and super is used as a descriptive word. It is also clear that FOAM-O, as is the case with OMO, is an invented word, and not an existing word.


The respondent’s arguement that it chose the word FOAM-O to rhyme with foam cannot bear any weight. If the respondent wanted to emphasize the foam characteristic of its product, it could have used the word FOAM without adding the O. It is strange that the respondent elected to add an O to FOAM, where-as Y or E or any other letter could have been used, but in this instance FOAM-O and OMO have the same sound aurally.


In Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd [1984] ZASCA 51; 1984 (3) SA 623 (A) at 640 G Corbett JA set out:

In an infringement action the onus is on the plaintiff to show the probability or likelihood of deception or confusion. It is not incumbent upon the plaintiff to show that every person interested or concerned (usually as customer) in the class of goods for which his trade mark has been registered would probably be deceived or confused. It is sufficient if the probabilities establish that a substantial number of such persons will be deceived or confused. The concept of deception or confusion is not limited to inducing in the minds of interested persons the erroneous belief or impression that the goods in relation to which the defendant's mark is used are the goods of the proprietor of the registered mark, ie the plaintiff, or that there is a material connection between the defendant's goods and the proprietor of the registered mark; it is enough for the plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of such a connection.”



The applicants have to prove that FOAM-O may cause confusion or deceive customers as it so closely resembles the applicant’s registered trade marks. The applicants only have to show that a substantial number of persons may be confused as to the origin of the goods.


In Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 (ECJ) at 224 it was held:

“That global appreciation of the visual aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components…



In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive, either per se or because of the reputation it enjoys with the public.”


This court has to decide whether there is any likelihood of deception or confusion in the market place. I am of the opinion that there is no doubt that OMO is known to the majority of South Africans as a washing powder. The question is whether FOAM-O will in any way be confused with OMO in the market place. In my view both OMO and FOAM-O are aurally similar in sound and both are washing powders. It is clear that the respondent has pitched the product at the lower end of the market. To my mind it exacerbates the problem as unsophisticated, uneducated and rural people will be more prone to confusion than the upper end of the market. It is also more likely that these customers at the lower end of the market will be confused or deceived due to the reputation that OMO has as a washing powder amongst ordinary customers.


First impressions will also play a larger part in this case in the likelihood of confusion or deception. It is quite clear that OMO has relied on its foaming power and marketed it as such since 1963 – a period of 45 years. This is important as this attribute will be employed in the market place.


The finding by Hurt J in the African Sun Oil matter (supra) on p 132 is apposite to this matter:

“Where an invented word has been registered as a mark, a person subsequently selecting an invented word for his own mark, who has the whole spectrum of possible permutations of the letters of the alphabet at his disposal, should take care not to select a permutation which is too close to, the registered mark.”


In International Power Marketing (Pty) Ltd v Searles Industrial (Pty) Ltd 1983 (4) SA 163 T at 170 A Margo J held:

“This passage, in the context, means nothing more than that, for the purpose of opposing registration (and, presumably, of establishing infringement), proof of the likelihood of initial confusion, even though such is capable of being cleared up, would be sufficient. In a common sense evaluation of the likelihood or otherwise of confusion, the question of momentary confusion would not ordinarily arise.”


In John Craig (Pty) Ltd v Dupa Clothing Industries 1977 (3) SA 144 (T) at 151 King AJ found:

“A reasonable likelihood of deception or confusion in regard to either the sense, sound or appearance of the two marks will suffice to discharge the onus on the applicant. Vide, Cavalla Ltd . v International Tobacco Co. of South Africa Ltd ., 1953 (1) SA 461 (T) . PARKER, J., in the Pianotist case, 23 R.P.C. 777, said:

"You must take the two words; you must judge them by their look and their sound; you must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy these goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If after considering all the circumstances you come to the conclusion that there will be confusion, that is to say not necessarily that one man will be injured and the other will gain illicit benefit - but that there will be confusion in the mind of the public which will lead to confusion in the goods, then you must refuse registration in that case."


The Galaxy case is authority for the proposition that the deception or confusion need only last for a fraction of time and that only one of the two persons involved need to be deceived or confused.”


The test remains whether it is likely that a person who has seen or knows the marks will, by reason of imperfect recollection or perception, think that they are the same or maybe the same. The distinctive suffix of O to FOAM, in my opinion will lead to confusion or deception. The probability that FOAM-O and OMO can be confused through mispronunciation is much greater than the respondent will concede.


In this instance the get-up of the products is of no consequence as I am dealing with a trade-mark and not a passing-off question.


In National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA) Nugent AJA held at 567 par 7:

“Similarities in the goods themselves or in the form in which they are presented might form the basis for an action for passing-off, but that is not what is before us, and for present purposes they must be disregarded.”


Mr Lazarus, for the respondent argued that the emphasis on the words are different and that the general public will ask for FOAM-O, by pronouncing FOAM and waiting a fraction of a second before adding the O and that will distinguish it from OMO. The visual distinction of the two words is not apparent to such an extent that it can be argued that no confusion or deception will take place in the market place.


I must agree with Mr Morley’s contention, for the applicants, that FOAM-O is not being used in a descriptive sense. The respondent has not relied on any other defence to deny infringing of the trademark OMO.

It is clear that according to the provisions of section 34 (1) (a) of the Trade Marks Act that the use of FOAM-O by the respondent in the course of trade and in relation to washing-powder, for which the applicants have registered trade marks for OMO, is in contravention of the Act.


I find that the respondent has infringed the applicants trademark OMO in terms of section 34 (1) (a) of the Trade Mark Act.


I find that the applicants have proven the probability of deception or confusion on a balance of probabilities and will suffer irreparable harm if the respondents continue using the FOAM-O mark or if the respondent succeeds in having FOAM-O registered as a trade mark as there is such an application pending.


I make the following order:


  1. The respondent is interdicted and restrained from infringing the applicants’ registered OMO trade marks No’s 24/986, 85/8231, 65/5023 and 98/09335 in terms of Section 34 (1) (a) of the Trade Marks Act, 194 of 1993 by using the trade mark FOAM-O in relation to goods for which the aforesaid trade marks are registered, or of any other mark which so nearly resembles the OMO trade marks as to be likely to deceive or cause confusion;

  2. The respondent is ordered to remove the infringing mark FOAM-O from raw material and, where the infringing mark is inseparable or incapable of being removed from any material, the Respondent shall deliver up such material to the applicants

3. The respondent is ordered to pay the costs of this application, including the cost of senior counsel.




______________________

C Pretorius

Judge of the High Court


Case number : 7507/2008

Heard on : 2 December 2008

For the Applicant : GE Morley SC

Instructed by : Spoor & Fisher

For the Respondent : G Lazarus

Instructed by : Faruk Kajee

Date of Judgment : 12 December 2008