Tuesday 15 November 2011

Darren Olivier

RSA: latest passing off decision - not just any old NaCl

Most readers will know that very few IP disputes ever reach a court decision. Like newborn turtles on a Mozambican beach, most never make it to the shoreline. They perish because of costs, delay, settlement, sanity and the ever increasing threat of ADR. This latest case out of the South African High Court of the Eastern Cape is an exception and its longevity is due to its subject matter - braai salt.

There is a specific culture around the "braai" that one needs to appreciate before reading this case and understanding its longevity. To the uninitiated please click here and here to get an insight into the institution of braaing and the strict cultural rules that apply. When one man's braai salt packaging begins to look like another, it is serious. Backing down is simply not an option.

The packaging in dispute looks something like this:

The applicant Swartkops' (represented by Adv Marriott at the hearing) packaging is named Marinas braai salt and the respondent has its manufacturer Cerebos' (represented by Adv Morely SC at the hearing) mark Buffalo above the words "braai salt" on its packaging. Swartkops' packaging (or its similar packaging) had been in existence for many years and Cerebros had received an earlier objection letter and had changed its packaging as a result. But not by enough apparently.

There are no registered trade marks protecting the packaging so this is simply a dispute over look-a-likes. Swartkops therefore relies on passing off which is a common law action.

Acting Judge Rorke sets about deciding the case with a useful, if not simplified, analysis of the law and finds that Swartkops indeed has a reputation in the get-up of its product. However, he dismisses the case on finding that there is no likelihood of confusion between the get-ups, citing with approval:

“These cases make it quite clear that a trader has no monopoly in the “get up” of his goods. However great the advantage and merits of his “get up” may be over that of his trade rivals, how ever much money, time and thought he may have expended over the designing of the particulars, when once he has used and published them they do not become his property but are common property, which can be appropriated by his rivals provided they do not mislead the public but make it perfectly clear that the goods in the “get up” are not his but theirs. When once this principle is clearly born in mind much confusion is, I think, avoided which in many cases of “passing off” arises. Assuming that there has been no infringement of the trademark, the question in “passing off” actions is whether the respondent, where he has imitated the applicant’s “get up”, has sufficiently differentiated his goods from those of the applicant. Under such circumstances the respondent is bound to make it perfectly clear that although he has adopted the applicant’s “get up”, the goods are his and not those of the applicant. If he succeeds in doing this then no liability rests upon him and no legal right of the applicant’s has been invaded.”

Rorke AJ reasons are set out in para 33-44. He also dismisses evidence of confusion by concluding that one of those confused was simply a careless buyer and not the average consumer, and that the other was not confused.

He also dealt with an interesting point argued by Marriott that the decision by Cerebos to change its packaging following an earlier objection had placed upon them a greater obligation to 'keep a safe distance away from the margin line'. This argument has been commented on by this blog before. Rorke held that the change had occurred without a 'conviction' and done on a without prejudice basis and therefore the earlier change by them had not placed any greater burden on Cerebos.

Although the packaging is close and not having had sight of the evidence of actual confusion, Afro Leo tends agrees with the decision. Unsurprisingly, he notes that the robust applicant does not and so looks forward to the appeal decision suspecting that it might be well like err umm... rubbing salt.

Amended the same day, from the original post.

Darren Olivier

Darren Olivier

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