Passing off products in South Africa taken with more than a pinch of salt

By Nombulelo Kambule, DM Kisch
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Most South Africans know better than to get in between a fellow South African and their beloved braai (that’s barbecue to foreigners). Our courts seem to concur, as noted in a recent judgment handed down by the full bench of the Eastern Cape High Court of South Africa. The court decided on a dispute spanning just over two years between two salt giants, Cerebos and Swartkops Sea Salt.

Nombulelo Kambule DM Kisch律师事务所 商标律师 Trademark Attorney DM Kisch
Nombulelo Kambule
DM Kisch律师事务所
Trademark Attorney
DM Kisch

The judgment

In the judgment, Cerebos was interdicted and restrained from passing off its braai salt product as that of Swartkops’ braai salt product.

The interdict prevents Cerebos from using the current get-up (appearance) of its Buffalo braai salt or any get-up confusingly or deceptively similar to the get-up (or style) of Swartkops’ well known orange-bottle braai salt.

The order handed down by the Appeal Court also made provision for an inquiry into the damages suffered by Swartkops as a result of the unlawful conduct of Cerebos.

Battle of the salts

The battle of the salts began at the end of 2010, when Cerebos launched its Buffalo braai salt product with a noticeably similar get-up to that of the Swartkops orange-bottle braai salt. Swartkops’ large orange bottle of braai salt was unique to the salt market, particularly in the braai salt arena.

Following Swartkops’ failed communications with Cerebos, Swartkops followed suit by instituting passing off proceedings against Cerebos in 2011.

At that stage, in response to the letter of demand, Cerebos had made slight changes to its product, such as replacing the brown lid with a black lid. This did little to appease Swartkops as the contentious orange bottle remained, along with other features shared by the two products.

Passing off

This matter presented classic passing off principles that have been dealt with extensively in South African law.

The wrongdoing of passing off is defined as a representation by one party that its merchandise – or business, as the case may be – is that of another, or that it is associated with that of another party.

In determining whether such a representation amounts to passing off, an inquiry is made as to whether a reasonable likelihood exists that members of the public may be confused into believing that the merchandise of the one is, or is connected with, that of the other.

Proof of reputation

Success in such an action requires proof of a relevant reputation. Where a product or business has acquired repute in its trade through a strong presence in the market, such repute attributes to the reputation and thus goodwill in and to the business of the relevant party.

The goodwill built up by a business is said to be the attractive force that draws customers, and the wrongdoing of passing accordingly causes damage to such reputation.

Continuous and widespread use of its orange braai salt product since the 1950s meant Swartkops did not have difficulty in establishing a reputation in its product.

The Port Elizabeth High Court – the court of first instance – in fact found that Swartkops had set out sufficient evidence to establish the necessary reputation in its orange braai salt product, although the court ultimately dismissed the application on the basis that Cerebos had managed to distinguish its Buffalo braai salt get-up from that of the Swartkops product, and that there was thus no prospect of confusion on the part of the ordinary customer.

Although the court cited the precedent Supreme Court of Appeal authorities and their guidelines for determining confusing similarity – in particular avoiding a close “courtroom” scrutiny of the two articles – the court then proceeded to follow a detailed “courtroom” scrutiny or analysis of the products, which was clearly in conflict with the authorities.

The appeal

This led to an appeal being lodged by Swartkops. Taking into account that an ordinary everyday buyer, especially of a relatively low-cost commodity such as salt, is a person likely to have only a general idea of what he or she is actually looking for, and who does not necessarily have an accurate illustration of the product, the Appeal Court in Grahamstown rejected the Port Elizabeth court’s close scrutiny of the two containers, and held that an immediate and striking similarity between the packaging and get-up of the rival products existed, especially since it accepted evidence of actual confusion that had been put forward.

Likelihood of confusion

It has long been established in South African law that when dealing with the question of a likelihood of confusion arising among members of the buying public, consideration of the product as a whole, along with the surrounding circumstances of the point of sale, must be made.

Potential customers may only have an idea of a product or an imperfect recollection of the words appearing on the packaging, and not necessarily have the luxury of time or opportunity to place two competing products side by side, with an eye for all the various details of each product and its labelling. Confusion may actually take place after the fact, once the customer has purchased the product and only realising at a later stage that a mistake was made.

Appeal Court decision

Taking the above factors into account, the Appeal Court was accordingly of the view that Swartkops had sufficiently established the necessary likelihood of deception and confusion.

It seems Cerebos may have forgotten to throw some salt over its shoulder when it spilled the bottle of braai salt on the orange coat-tails of Swartkops.

Nombulelo Kambule is a trademark attorney at DM Kisch

DM Kisch

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54 Wierda Road West

Wierda Valley

Sandton, Johannesburg, South Africa

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