Plascon-Evans Paints (TVL) Ltd. v Van Riebeck Paints (Pty) Ltd. (53/84) [1984] ZASCA 51; [1984] 2 All SA 366 (A); 1984 (3) SA 623; 1984 (3) SA 620 (21 May 1984)

Plascon-Evans Paints (TVL) Ltd. v Van Riebeck Paints (Pty) Ltd. (53/84) [1984] ZASCA 51; [1984] 2 All SA 366 (A); 1984 (3) SA 623; 1984 (3) SA 620 (21 May 1984)

The Supreme Court of Appeal held that the respondent's use of 'Mikacote' was use as a trade mark, not merely a product name or bona fide description. The marks 'Micatex' and 'Mikacote' were found to be sufficiently similar, particularly in their dominant 'mica' prefix, to cause confusion among a substantial number of customers, especially those without specialized knowledge. The court emphasized that the comparison must be made in the context of the marketplace, considering imperfect recollection and the manner in which the goods are sold. The respondent's use of 'Mikacote' was not protected by section 46(b) of the Trade Marks Act, as it was not a genuine description of character or...

Citation
[1984] ZASCA 51
Parties
Appellant: Plascon-Evans Paints Limited; Respondent: Van Riebeeck Paints (Proprietary) 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 Cape Provincial Division
Outcome
Appeal allowed with costs, including costs of two counsel. The order of the court a quo was set aside and substituted with an order dismissing the appeal with costs.
Judges
Corbett, Miller, Nicholas, Galgut, Howard
Legal Topics
Trade Mark Infringement, Likelihood of Confusion, Bona Fide Description, Passing Off, Statutory Interpretation
Intellectual Property Commercial and Corporate Trade Mark Infringement Likelihood of Confusion Bona Fide Description Passing Off Statutory Interpretation

Case Brief

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Parties

Plascon-Evans Paints Limited

Appellant

Van Riebeeck Paints (Proprietary) Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From Full Bench of Cape Provincial Division

Legal Issues

  1. 1 Whether the respondent's use of the mark 'Mikacote' constituted use as a trade mark.
  2. 2 Whether the use of 'Mikacote' infringed the appellant's rights as proprietor of the registered trade mark 'Micatex'.
  3. 3 Whether the respondent's use of 'Mikacote' was protected by section 46(b) of the Trade Marks Act as a bona fide description of the character or quality of its goods.

Ratio Decidendi

The Supreme Court of Appeal held that the respondent's use of 'Mikacote' was use as a trade mark, not merely a product name or bona fide description. The marks 'Micatex' and 'Mikacote' were found to be sufficiently similar, particularly in their dominant 'mica' prefix, to cause confusion among a substantial number of customers, especially those without specialized knowledge. The court emphasized that the comparison must be made in the context of the marketplace, considering imperfect recollection and the manner in which the goods are sold. The respondent's use of 'Mikacote' was not protected by section 46(b) of the Trade Marks Act, as it was not a genuine description of character or...

Court Disposition

Appeal allowed with costs, including costs of two counsel. The order of the court a quo was set aside and substituted with an order dismissing the appeal with costs.

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: 'Appeal is dismissed with costs.'