Spartan Caselaw

Akzonobel Coatings International v Dumax Paints [2023] ZAFSHC 450

INTELLECTUAL – Trademark – Paints and varnishes

Reputation of established mark DULUX – Respondents being new entrant into market and using name DUMAX – Similarities in pronunciation – Respondents pirating the product of years of invention to reap the fruits sown by the applicants – Anti-dilution provision – Protection of the commercial value that attaches to the reputation of trade mark – Respondents interdicted from infringing the well-known trade mark registration DULUX by the use of DUMAX or DUMAX PAINTS – Trade Marks Act 194 of 1993, s 34(1)(c).

Facts: Two rival traders in the paint industry are at loggerheads. The one trader is a renowned trader whose registered trade mark, DULUX, has been established internationally and nationally over many decades. It is engaged in the manufacturing, marketing and distribution in South Africa of paints, varnishes and related products and services primarily under the DULUX trade name. The other trader is a new entrant into the market, having been established in the beginning of 2021. It started to use the trade name, DUMAX, thereafter.

Application: The applicants seek a final interdict in terms of the Trade Marks Act 194 of 1993, restraining the first and second respondents from infringing the first and second applicants’ registered trade marks. Two main issues are to be considered. First, the get-up of the two rival traders. Second, the respondents’ entitlement to use the name DUMAX, either on its own, or as part of the name DUMAX PAINTS.

Discussion: That the applicants are the owners of several trade marks and trade mark registrations with the name DULUX on its own or with other words such as “Specialist Paint Centre”, “Cover-all” and “MaxiCover”; that the success of the Dulux brand internationally and in this country and its enormous reputation and goodwill as a well-known trade mark is beyond doubt; that on the applicants’ get-up one finds a flourish device on top of the word DULUX, whilst the first respondent is using a rainbow-like device in conjunction with the DUMAX trade mark and this device is running down diagonally between the “M” and the “A” and forms part of the left leg of the “A”; that in both instances the parties make use of red, orange, yellow, green and blue colours; and that the respondents relied in no uncertain terms on the right of previously disadvantaged persons to be allowed to become competitive in markets from which they were excluded during apartheid.

* See the colour pictures at paras [19] and [20].

Findings: The court is satisfied that, contrary to the explanation provided by the respondents’ deponent, this is a case that falls squarely within the parameters of section 34(1)(c) and the species of trade mark infringement commonly known as dilution. The respondents’ deponent, he being the sole director of both companies, has decided to “sponge” on the well-known DULUX and MAXICOVER trade marks by “pirating the product of years of invention” and “reap the fruits” sown by the applicants. It was ironic that when Mr Mthombeni (for the respondents) pronounced the words “Dulux” and “Dumax” in one particular sentence during his oral argument, his pronunciation of the two words was so remarkably the same that the judge commented about it at the time. It is fair to say that, save for the identical first syllable, “Du”, the second syllable in both words may often be pronounced the same, eg as in “sucks”. Also, both words end on an “x”.

Order: The respondents are interdicted and restrained in terms of section 34(1)(c) of the Trade Marks Act from infringing the second applicant’s well-known trade mark registration DULUX including but not limited to the use of DUMAX or DUMAX PAINTS or any other trade mark similar to the well-known registered DULUX trade mark. The respondents are ordered to pay the applicants’ costs, including the costs consequent upon the employment of senior counsel.

DAFFUE J

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Shoprite Checkers v Pick n Pay Retailers [2023] ZAWCHC 285

INTELLECTUAL – Passing off – Luxury food range

Competing products are confusingly similar and are sold exclusively at both retail outlets – Products also marketed and displayed in similar manner – Notable similarities in terms of colour, typefaces and packaging –  Pick n Pay range, viewed holistically, is almost certain to confuse and deceive the public and potentially result in damages for Checkers – Pick n Pay is interdicted and restrained from passing off its Crafted Collection products as those of Checkers.

Facts: The Forest and Feast range of products by Checkers were launched and unveiled in November 2020 as a new premium luxury range of products which were previously exclusive and typically found at specialty delicatessens and food emporiums. According to applicant the Forage and Feast assortment is available for purchase at Checkers and Checkers Hyper outlets nationally and has generated extensive nationwide sales in excess of R180 million. The prominent and conspicuous features of the Forage and Feast get-ups are: the mark Forage and Feast at the top of the packaging in a disconnected calligraphic cursive font in gold; the prominent use of the colour combination comprising navy, blue and gold; the artistic representation of the ingredients; and the overlapping placement of the product descriptors.

Application: Checkers seeks interdictory relief on alleged infringements based on passing off under the common law. The parties are direct competitors and well-known retailers of fast-moving consumer products. Checkers alleges that Pick n Pay is infringing upon its common law rights in the form of goodwill and reputation associated with the Forest and Feast range through the manufacturing and offering for sale of its competing Crafted Collection range of products.

Discussion: The submission by Checkers that the colour combination of navy, blue and gold on Pick n Pay’s range is used in similar proportions to that applied in its products; that Checkers noted that Pick n Pay’s marketing material also imitate those used by Checkers, more specifically in respect of the layout, colour, artistry and look-and-feel of the material; the contention that Pick n Pay’s advertisements in the digital and print media reveal glaring similarities to those used to promote Forest and Feast in order to obtain an unfair springboard and competitive advantage in the marketplace; and that Pick n Pay asserted that Checkers cannot claim nor enforce a monopoly in respect of a get-up that is used by multiple brand holders in the grocery stores across the country and that Checkers had merely showcased its use of the Forest and Feast get-up, but mere “showcase” alone does not equate with distinctiveness.

* Note the colour picture of the products in para [2].

Findings: While it is accurate to say that not every item in the Crafted Collection range resembles an item in the Forest and Feast line, a significant proportion of the items possess a comparable visual and tactile experience, rendering them nearly indistinguishable from the Forest and Feast line. The competing products are confusingly similar and are sold exclusively at both retail outlets. The products are also marketed and displayed in a similar manner. It is highly probable that consumers will perceive both products as coming from an identical manufacturer. Considering the notable similarities in terms of colour, typefaces and packaging, the court is satisfied that the Crafted Collection range, viewed holistically, is almost certain to confuse and deceive the public, and potentially result in damages for Checkers.

Order: Pick n Pay is interdicted and restrained from passing off its Crafted Collection products as those of Checkers, in particular its Forage and Feast range and is ordered to destroy all printed materials, product packaging bearing the infringing get-ups, which are under its control. It is directed that an enquiry be held for the purposes of determining the amount of any damages to be awarded to Checkers. Pick n Pay is to pay the cost of two counsel, one of whom is a senior.

GOLIATH AJP

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Vilakazi v CCMA [2023] ZALCJHB 319

LABOUR – Dismissal – Gross misconduct

Taking up full-time employment with company while in full-time employment with university – Did not disclose employment or seek approval – Persistent denial that she had not done anything wrong left university with no choice but to manage its risks by ending employment relationship – Applicant cannot comprehend her fiduciary duties towards university – Arbitrator at CCMA finding dismissal both substantively and procedurally fair – Review application dismissed – Applicant to pay costs of the university.

Facts: Dr Vilakazi was initially employed by the University of Witwatersrand in its Business School section as a part-time lecturer because she also worked for Alexander Forbes. She later resigned from Alexander Forbes, opting to take up full-time employment. Her duties included teaching, examining, researching and scholarly work, as well as general administrative duties. The ink had barely dried on her permanent employment contract with the university when she also took up full time employment with Kantar South Africa as an accounts director. She did not disclose this, but the department head found out when someone anonymously placed a copy of the applicant’s employment contract with Kantar in his pigeonhole. A disciplinary hearing followed and the applicant was dismissed.

Application: Seeking to review and set aside an award of an arbitrator appointed by the CCMA. The arbitrator concluded that the dismissal of the applicant by the university was both substantively and procedurally fair.

Discussion: Review applications and the time limit in terms of section 145(1) of the Labour Relations Act 66 of 1995 where applications are brought out of time and without a proper condonation application; whether there has been a material delay in the serving of the review application; that despite failing to properly make out a case for inconsistency in the arbitration, as the arbitrator correctly appreciated in her award, the applicant still persisted in challenging inconsistency on review; that considering the working hours required of both contracts, the arbitrator mentioned that the applicant had to show superhuman abilities to discharge her obligations under both contracts, which was not humanly possible and simply not sustainable; and the terms of the university’s Policy on the Declaration of Interests on conflict of interest and the requirement for staff members to declare their interests.

Findings: The applicant took up employment at a third party on a full-time basis, despite being employed by the university as a full-time employee. She did not disclose this intention or employment and nor did she seek approval for it. When it was discovered, she sought to justify her position based on her own subjective assessment that she could manage the two positions, that she did not think it would prejudice the university, and that she saw no conflict of interest. Her own subjective views could not exonerate her. The persistent denial by the applicant that she had not done anything wrong left the university with no choice but to manage its risks by ending the employment relationship. If the applicant cannot comprehend what her fiduciary duties towards the university entails, and fails to show even some modicum of appreciation that for her to take up permanent employment with another employer is wrong and may cause the proper discharge of her duties and the interests of the university harm, then risk management necessitates a termination of her employment.

* See paras [83]-[84] on the reasons for the costs order.

Order: The review application is dismissed. The applicant is ordered to pay the university’s costs.

SNYMAN AJ

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ABOUT SPARTAN CASE LAW

Louis Podbielski spent ten years at Juta working on various law reports and has read many thousands of judgments for case selection. He has considerable experience in writing flynotes and headnotes, compiling case annotations, and in refining subject indexes.​ During his four years at LexisNexis he was involved with legal data, analytics and in developing various legal tech solutions. He now runs his own case law service Spartan Case Law

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