Tuesday 3 March 2009

Darren Olivier

Unilever enforces 1924 OMO mark in RSA

In Unilever Plc and Another v Salma Traders (7507/2008 ) [2008] ZAGPHC 401 Judge Pretorius adjudicated on whether the use of FOAM-O by Salma Traders in respect of detergents infringed Unilever's OMO trade marks, which included Trade Mark No. 24/00986 OMO dated 13 October 1924 under Section 34(1)(a) and 34(1)(c) of the SA Trade Marks Act 1993. Unilever was successful under Section 34(1)(a) and Pretorius J, regrettably, did not make a finding under Section 34(1)(c). The case is worthwhile reading for those interested in the application of the traditional infringement test in the FMCG environment.

Section 34(1)(a) is the traditional identical/similar goods/likelihood of confusion infringement test, whereas Section 34(1)(c) is the dilution or unfair advantage/detriment to distinctive character or repute infringement test.

Pretorius J held that it was common cause that the OMO trade mark enjoyed a substantial reputation in South Africa. Interestingly, despite the reputation in the OMO mark, Unilever decided not to pursue a ground based on passing off. Afro-IP suspects a number of reasons for the omission which could include Unilever's confidence in their registered rights and the cost associated with preparing for an additional ground. In any event, their sniper-like approach paid off.

Douglas J held, correctly in Afro-IP's view, that "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". As a consequence Salma infringed under Section 34(1)(a).

It is regrettable that the Judge did not make a finding under section 34(1)(c) because it was an opportunity to adjudicate on whether the potentially far reaching ECJ decision in Intel v CPM (decided a few days earlier) was applicable under South African law and, in particular, whether the requirement to prove the likelihood of a change in the economic behaviour of the consumer was part of the dilution test. For more on that debate click here.

Salma traders were injuncted/interdicted from infringing the OMO marks, requested to remove the infringing mark from material or deliver it up to Unilever and ordered to pay costs, including Counsel's costs.

Darren Olivier

Darren Olivier

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