Premier Trading Company (Pty) Ltd and Another v Sportopia (Pty) Ltd (218/97) [1999] ZASCA 48 (1 June 1999)

Premier Trading Company (Pty) Ltd and Another v Sportopia (Pty) Ltd (218/97) [1999] ZASCA 48 (1 June 1999)

The court found that the appellants failed to prove a reputation in the word-mark Bladeline in Durban at the relevant time. The evidence showed that any reputation acquired was in the Jokari mark as the make, with Bladeline functioning only as a model name. The affidavits provided were contradictory and lacked direct customer evidence. The notion of a composite mark was rejected on the facts, as the marks were not used in tandem. Without proof of reputation in Bladeline, there could be no misrepresentation or passing-off. Furthermore, the differences in get-up between the products after redesign were sufficient to avoid confusion among potential customers. The appeal was dismissed.

Citation
[1999] ZASCA 48
Parties
Appellant: Premier Trading Company (Pty) Limited; Appellant: GDK Sports (Pty) Limited; Respondent: Sportopia (Pty) Ltd
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
1 June 1999
Case Number
218/97
Procedural Posture
Civil Appeal / Appeal From Durban and Coast Local Division; Judgment Delivered
Outcome
Appeal dismissed with costs, including costs of two counsel, payable jointly and severally by the first and second appellants.
Judges
Hefer, Nienaber, Schutz, Plewman, Farlam
Legal Topics
Passing Off, Trade Mark Registration, Product Confusion, Reputation in Trade Mark, Interdict, Goodwill
Commercial and Corporate Civil Procedure Passing Off Trade Mark Registration Product Confusion Reputation in Trade Mark Interdict Goodwill

Case Brief

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Parties

Premier Trading Company (Pty) Limited

Appellant

GDK Sports (Pty) Limited

Appellant

Sportopia (Pty) Ltd

Respondent

Procedural Posture

Civil Appeal / Appeal From Durban and Coast Local Division; Judgment Delivered

Legal Issues

  1. 1 Did the appellant have a reputation in the word-mark Bladeline in respect of in-line skates at the relevant time and place?
  2. 2 Was there a likelihood of deception or confusion among a substantial segment of the buying public as to the origin of the product?
  3. 3 Did the respondent's use of the word-mark Bladeline constitute passing-off?

Ratio Decidendi

The court found that the appellants failed to prove a reputation in the word-mark Bladeline in Durban at the relevant time. The evidence showed that any reputation acquired was in the Jokari mark as the make, with Bladeline functioning only as a model name. The affidavits provided were contradictory and lacked direct customer evidence. The notion of a composite mark was rejected on the facts, as the marks were not used in tandem. Without proof of reputation in Bladeline, there could be no misrepresentation or passing-off. Furthermore, the differences in get-up between the products after redesign were sufficient to avoid confusion among potential customers. The appeal was dismissed.

Court Disposition

Appeal dismissed with costs, including costs of two counsel, payable jointly and severally by the first and second appellants.

Orders

  • The appeal is dismissed with costs, such costs to be paid jointly and severally by the first and second appellants, and to include the costs occasioned by the employment of two counsel.