RSA: Appeal decision on the Swartkops v Cerebos passing off matter

RSA: Appeal decision on the Swartkops v Cerebos passing off matter

By Caroline B Ncube   Monday, May 20, 2013   1 comment:

Jeremy Speres has pointed out that the appeal decision on the matter between Swartkops and Cerebos was handed down on 10 May 2013.

Swartkops unsuccessfully sued Cerebos for passing off claiming that the get up of Cerebos' Buffalo braai salt was confusingly similar to its Marina braai salt (read the judgement here). As predicted by Afro-Leo in a post on the first ruling in this matter here, Swartkops took the matter on appeal.

Swartkops' appeal succeeded (read the judgement here). Commenting on the appeal decision, Jeremy writes that its most striking aspect  'is the full bench's criticism of the court a quo for undertaking a detailed comparison of the get-up of the products in question, rather than relying on the first and general impression of the products alone.  The court a quo justified its approach in para 26 by stating:

"In my view, in order for a Court to make an appropriate and correct finding, it must undertake such an exercise keeping in mind, of course, the relevant importance of the first and general impression. If a Court does not undertake that exercise and relies solely on a first and general impression, it runs the risk of failing to distinguish between unlawful passing off and lawful competition."

The court a quo relied on the approach of Harms JA in the Reckitt & Colman case, where Judge Harms said the following at pg 317:

"In assessing whether there is a likelihood of deception or confusion it is necessary to consider the whole get-up of the appellant and the whole get-up of the respondent…but it is difficult to do this exercise without having regard to its individual parts."

The full bench seems to have over-emphasised the requirement to consider get-ups as wholes and simply identified certain broad elements that appeared on both products, i.e. the similarities – see para 17. It’s refusal to consider the individual elements of each get-up, as per the court a quo, led to a failure to consider the significant dissimilarities and therefore to a conclusion that confusion was likely.  I’m not sure the court gave consumers enough credit here - I’d like to think I’m sufficiently conscious to distinguish between these two!'

Which of the two decisions do Afro-IP readers agree with?

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SACTWU warns that factories may close due to counterfeiting

SACTWU warns that factories may close due to counterfeiting

By Darren Olivier   Wednesday, January 05, 2011   No comments:



If only counterfeiters were voodoo dolls

The Southern African Clothing and Textile Workers Union (SACTWU) were recently concerned that if the scourge of counterfeit sales does not cease, it would impact the entire South African textile industry and stated that factories will eventually close down. Whilst appreciative of  the efforts made against counterfeiting in the country SACTWU advocate tougher penalties. Source Coastweek and SACTWU press release.

SACTWU appear desperate. Counterfeiting creates a market for illicit goods that compete with genuine products resulting in large scale unemployment in the official goods sector. All of this is not surprising in an industry whose export market has been decimated by the strong value of the Rand over the past year - a situation caused largely by global interest rate differentials which ultimately, were caused by a much more sophisticated deception in the banking industry a few years ago.

However, toxic debt is not to blame. RSA has suffered significant unemployment for a number of years and its manufacturing industry, like many others, struggles to compete anyway with the cost of production of genuine goods made in other parts of the world, especially China (as this article illustrates). Ironically, critics of unions like SACTWU may blame them for assisting to cause their anti-competitive positioning. Furthermore, the temptation to sell counterfeits can be overwhelming as the illegal Ray Ban sunglasses salesman poignantly explains in the piece: “I have a family to feed. I must sell what I can,”

Without doubt, counterfeiting in RSA is on the increase. SCA IP decisions were dominated by counterfeit issues in 2010. The big IP firms in RSA now have dedicated anti-counterfeit departments. Higher sanctions (proposed in the article) may act as a deterrent but the problem is multi-faceted.

Effective or a checklist for counterfeiters?

Educating the public of  the dangers of counterfeiting like the cigarette companies are doing at the moment with their massive motorway billboards should help shift public opinion to reject counterfeits. Government initiatives like this one in September last year are useful but need to show that it has moved from talk to real, effective and measurable action and, despite successes, the court system needs to be able to deal with the problems efficiently. There are some very effective provisions in RSA legislation but the Copyright Act does needs a major update. Other less direct initiatives aimed at increasing growth and employment will also help as would efforts to secure funding (and use it effectively) from worldwide anti-counterfeiting groups.

Afro Leo notes with interest that the article commented on in this post is reported by a Chinese Xinhua news correspondent on a Kenyan website - the effect of broadband access in Africa or a sign of the global nature of the problem and interest groups? Whichever, Afro Leo thinks it positive.

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