Koni Multinational Brands (Pty) Ltd v Beiersdorf AG (553/19) [2021] ZASCA 24; 2021 BIP 15 (SCA); [2021] HIPR 162 (SCA) (19 March 2021)

Koni Multinational Brands (Pty) Ltd v Beiersdorf AG (553/19) [2021] ZASCA 24; 2021 BIP 15 (SCA); [2021] HIPR 162 (SCA) (19 March 2021)

The majority held that the respondent had established a substantial reputation and goodwill in the distinctive blue, white, and silver get-up of its NIVEA MEN products, which had dominated the male shower gel market in South Africa for years. The appellant's CONNIE MEN shower gel adopted a get-up that was confusingly similar in colour scheme, packaging, and wave-label, likely to deceive consumers into believing the products were associated. The court found that the similarities in overall appearance and format were sufficient to create confusion, and that the use of different brand names did not exclude the probability of deception. The appeal was dismissed, and the appellant was...

Citation
[2021] ZASCA 24
Parties
Appellant: Koni Multinational Brands (Pty) Ltd; Respondent: Beiersdorf AG
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
19 March 2021
Case Number
553/19
Procedural Posture
Civil Appeal / Appeal From Gauteng Division of the High Court, Johannesburg
Outcome
Appeal dismissed with costs, including costs of two counsel where so employed. Registrar directed to refer conduct of respondent's attorneys to Legal Practice Council for investigation.
Judges
Cachalia, Makgoka, Schippers, Sutherland, Unterhalter
Legal Topics
Passing Off, Get Up Protection, Unlawful Competition, Trade Mark Distinctiveness, Consumer Confusion
Intellectual Property Commercial and Corporate Passing Off Get Up Protection Unlawful Competition Trade Mark Distinctiveness Consumer Confusion

Case Brief

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Parties

Koni Multinational Brands (Pty) Ltd

Appellant

Beiersdorf AG

Respondent

Procedural Posture

Civil Appeal / Appeal From Gauteng Division of the High Court, Johannesburg

Legal Issues

  1. 1 Whether the respondent established a protectable reputation and goodwill in the get-up of its NIVEA MEN products.
  2. 2 Whether the appellant's CONNIE MEN shower gel get-up is confusingly similar to the respondent's get-up, amounting to passing-off.
  3. 3 Whether the use of different brand names is sufficient to distinguish the products and avoid consumer confusion.

Ratio Decidendi

The majority held that the respondent had established a substantial reputation and goodwill in the distinctive blue, white, and silver get-up of its NIVEA MEN products, which had dominated the male shower gel market in South Africa for years. The appellant's CONNIE MEN shower gel adopted a get-up that was confusingly similar in colour scheme, packaging, and wave-label, likely to deceive consumers into believing the products were associated. The court found that the similarities in overall appearance and format were sufficient to create confusion, and that the use of different brand names did not exclude the probability of deception. The appeal was dismissed, and the appellant was...

Court Disposition

Appeal dismissed with costs, including costs of two counsel where so employed. Registrar directed to refer conduct of respondent's attorneys to Legal Practice Council for investigation.

Orders

  • The appeal is dismissed with costs, including the costs of two counsel, where so employed.
  • The Registrar of this Court is directed to forward a copy of this judgment to the Legal Practice Council, Pretoria, to investigate the circumstances in which the respondent’s attorneys, Mr Gerard du Plessis and Ms Elizabeth Serrurier, failed to disclose Ms Serrurier’s association with the respondent’s attorneys to...