Plascon-Evans Paints (Tvl) Ltd. v Decro Paint and Hardware (Pty) Ltd. (53/84) [1984] ZASCA 52; 1984 (3) SA 647 (A) (21 May 1984)

Plascon-Evans Paints (Tvl) Ltd. v Decro Paint and Hardware (Pty) Ltd. (53/84) [1984] ZASCA 52; 1984 (3) SA 647 (A) (21 May 1984)

The Supreme Court of Appeal found that the appellant established infringement of its registered trade mark 'Micatex' by the respondent's use of 'Mikacote', as the marks were sufficiently similar to cause confusion. However, the evidence did not support the claim of passing off, as there was no convincing proof of deliberate misrepresentation or deception by the respondent's employees. The use of identical colour names was not shown to be exclusive to the appellant, and the alleged 'trap' purchases did not conclusively demonstrate passing off. The Court held that the appellant was entitled to an interdict restraining infringement but not for passing off. On costs, the appellant was awarded...

Citation
[1984] ZASCA 52
Parties
Appellant: Plascon-Evans Paints (Tvl) Limited; Respondent: Decro Paint and Hardware (Pty) Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
21 May 1984
Case Number
53/84
Procedural Posture
Civil Appeal / Appeal From Full Bench of Orange Free State Provincial Division
Outcome
Appeal allowed in part; appellant succeeds on trade mark infringement but fails on passing off.
Judges
Corbett, Miller, Nicholas, Galgut, Howard
Legal Topics
Trade Mark Infringement, Passing Off, Interdict, Registered Trade Mark, Confusion of Goods
Intellectual Property Commercial and Corporate Trade Mark Infringement Passing Off Interdict Registered Trade Mark Confusion of Goods

Case Brief

Summary, issues, holding and outcome

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Parties

Plascon-Evans Paints (Tvl) Limited

Appellant

Decro Paint and Hardware (Pty) Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From Full Bench of Orange Free State Provincial Division

Legal Issues

  1. 1 Whether the respondent's use of the mark 'Mikacote' infringed the appellant's registered trade mark 'Micatex'.
  2. 2 Whether the respondent unlawfully passed off its goods as those of the appellant.
  3. 3 What relief and costs should be granted in light of the findings on infringement and passing off.

Ratio Decidendi

The Supreme Court of Appeal found that the appellant established infringement of its registered trade mark 'Micatex' by the respondent's use of 'Mikacote', as the marks were sufficiently similar to cause confusion. However, the evidence did not support the claim of passing off, as there was no convincing proof of deliberate misrepresentation or deception by the respondent's employees. The use of identical colour names was not shown to be exclusive to the appellant, and the alleged 'trap' purchases did not conclusively demonstrate passing off. The Court held that the appellant was entitled to an interdict restraining infringement but not for passing off. On costs, the appellant was awarded...

Court Disposition

Appeal allowed in part; appellant succeeds on trade mark infringement but fails on passing off.

Orders

  • The appeal is allowed with costs, including the costs of two counsel.
  • The order of the Court a quo is set aside and substituted with: (a) The appeal is allowed to the extent that paragraph 1(b) of the order of the Court a quo is deleted; otherwise the appeal is dismissed. (b) The appellant (Decro Paint and Hardware (Pty) Ltd) is to pay the costs of appeal, including the costs of two...