Berman Brothers (Pty) Ltd. v Sodastream Ltd. (47/86) [1986] ZASCA 27; [1986] 2 All SA 252 (A) (24 March 1986)

Berman Brothers (Pty) Ltd. v Sodastream Ltd. (47/86) [1986] ZASCA 27; [1986] 2 All SA 252 (A) (24 March 1986)

The court held that the appellant's conduct in refilling and selling Sodastream cylinders bearing the gas mark and certain labels constituted unauthorized use of the trade mark in relation to the gas, thereby infringing first respondent's rights under section 44(1)(a) of the Trade Marks Act. The court found that the marks were still present and visible on the cylinders and that their use by the appellant objectively indicated a connection in the course of trade with the proprietor or registered user. The court rejected the argument that the marks ceased to exist or lost their attributes once the original gas was consumed. It further held that the Merchandise Marks Act applied to trade...

Citation
[1986] ZASCA 27
Parties
Appellant: Berman Brothers (Proprietary) Limited; Respondent: Sodastream Limited; Respondent: Teltron Holdings (Proprietary) Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
24 March 1986
Case Number
47/86
Procedural Posture
Civil Appeal / Appeal From the Transvaal Provincial Division; Judgment and Order Challenged by Appellant and Cross Appeal by Respondents
Outcome
Appeal and cross-appeal both allowed in part. Interdicts and ancillary relief granted to respondents, with reformulation of orders and provision for representations by the parties.
Judges
Corbett, Hoexter, Botha, Nicholas, Nestadt
Legal Topics
Trade Mark Infringement, Merchandise Marks Act, Unauthorized Use of Mark, Forged Trade Mark, False Trade Description, Interdict
Intellectual Property Commercial and Corporate Trade Mark Infringement Merchandise Marks Act Unauthorized Use of Mark Forged Trade Mark False Trade Description Interdict

Case Brief

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Parties

Berman Brothers (Proprietary) Limited

Appellant

Sodastream Limited

Respondent

Teltron Holdings (Proprietary) Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From the Transvaal Provincial Division; Judgment and Order Challenged by Appellant and Cross Appeal by Respondents

Legal Issues

  1. 1 Whether the appellant's conduct constituted infringement of first respondent's registered trade marks under the Trade Marks Act.
  2. 2 Whether the appellant contravened sections 6 and 7 of the Merchandise Marks Act by forging or falsely applying trade marks and false trade descriptions.
  3. 3 Whether the respondents were entitled to interdicts and ancillary relief based on the alleged infringements and contraventions.

Ratio Decidendi

The court held that the appellant's conduct in refilling and selling Sodastream cylinders bearing the gas mark and certain labels constituted unauthorized use of the trade mark in relation to the gas, thereby infringing first respondent's rights under section 44(1)(a) of the Trade Marks Act. The court found that the marks were still present and visible on the cylinders and that their use by the appellant objectively indicated a connection in the course of trade with the proprietor or registered user. The court rejected the argument that the marks ceased to exist or lost their attributes once the original gas was consumed. It further held that the Merchandise Marks Act applied to trade...

Court Disposition

Appeal and cross-appeal both allowed in part. Interdicts and ancillary relief granted to respondents, with reformulation of orders and provision for representations by the parties.

Orders

  • The defendant is interdicted and restrained from infringing first plaintiff's gas mark by selling, exchanging, or otherwise dealing in gas cylinders filled by anyone other than an authorized Sodastream distributor and bearing the gas mark in specified forms.
  • The defendant is interdicted and restrained from contravening sections 6(a), 6(b), and 7 of the Merchandise Marks Act by forging, falsely applying, or selling goods to which the gas mark or cylinder mark has been affixed in specified forms.