Scotch Whisky Association and Others v Milestone Beverage CC and Others (2882/2017) [2019] ZAGPPHC 113; 2019 BIP 295 (GP) (4 March 2019)

Scotch Whisky Association and Others v Milestone Beverage CC and Others (2882/2017) [2019] ZAGPPHC 113; 2019 BIP 295 (GP) (4 March 2019)

The court found that the respondents' products, through their get-up, labelling, and marketing, created a reasonable probability of confusion among the public, falsely representing the products as whisky or Scotch Whisky when they were not. The collective attributes of the products, including bottle shape, colour, names, and use of Scottish indicia, were likely to mislead consumers and amounted to unlawful competition and passing-off. The respondents' evidence failed to establish that the products were whisky flavoured or had the claimed alcohol strength. The applicants' expert evidence was preferred, establishing that the products did not contain whisky flavouring and had a lower alcohol...

Citation
[2019] ZAGPPHC 113
Parties
Applicant: The Scotch Whisky Association; Applicant: Chivas Brothers Ltd; Applicant: Chivas Holding (IP) Ltd; Applicant: Pernod Ricard South Africa (Pty) Ltd; Respondent: Milestone Beverage CC; Respondent: Waynel Distributors CC; Respondent: The Trustees for the Time Being of the Thistle Trust (004828/2002); Respondent: T and S Haupt Family Trust (021433/2014); Respondent: Sean Peter Haupt; Respondent: Celeste O Haupt; Respondent: The Minister of Agriculture, Forestry and Fisheries
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
4 March 2019
Case Number
2882/2017
Procedural Posture
Urgent Application / Final Interdict and Ancillary Relief After Opposed Motion
Outcome
Application granted. Final interdict issued restraining respondents from unlawful competition, passing-off, and statutory breaches. Ancillary orders for delivery up and destruction of infringing materials. Costs deferred for later adjudication.
Judges
Kubushi
Legal Topics
Unlawful Competition, Passing Off, Misrepresentation, Liquor Products Act, Consumer Protection Act, Trade Dress Infringement
Commercial and Corporate Civil Procedure Intellectual Property Unlawful Competition Passing Off Misrepresentation Liquor Products Act Consumer Protection Act +1 more

Case Brief

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Parties

The Scotch Whisky Association

Applicant

Chivas Brothers Ltd

Applicant

Chivas Holding (IP) Ltd

Applicant

Pernod Ricard South Africa (Pty) Ltd

Applicant

Milestone Beverage CC

Respondent

Waynel Distributors CC

Respondent

The Trustees for the Time Being of the Thistle Trust (004828/2002)

Respondent

T and S Haupt Family Trust (021433/2014)

Respondent

Sean Peter Haupt

Respondent

Celeste O Haupt

Respondent

The Minister of Agriculture, Forestry and Fisheries

Respondent

Procedural Posture

Urgent Application / Final Interdict and Ancillary Relief After Opposed Motion

Legal Issues

  1. 1 Whether the respondents' products are falsely represented as whisky or Scotch Whisky in breach of statutory and common law.
  2. 2 Whether the respondents' products are marketed in contravention of the Liquor Products Act and Consumer Protection Act.
  3. 3 Whether the respondents' conduct amounts to unlawful competition and passing-off against the applicants.

Ratio Decidendi

The court found that the respondents' products, through their get-up, labelling, and marketing, created a reasonable probability of confusion among the public, falsely representing the products as whisky or Scotch Whisky when they were not. The collective attributes of the products, including bottle shape, colour, names, and use of Scottish indicia, were likely to mislead consumers and amounted to unlawful competition and passing-off. The respondents' evidence failed to establish that the products were whisky flavoured or had the claimed alcohol strength. The applicants' expert evidence was preferred, establishing that the products did not contain whisky flavouring and had a lower alcohol...

Court Disposition

Application granted. Final interdict issued restraining respondents from unlawful competition, passing-off, and statutory breaches. Ancillary orders for delivery up and destruction of infringing materials. Costs deferred for later adjudication.

Orders

  • The First, Second, Third, Fourth, Fifth and Sixth Respondents are interdicted and restrained from selling, offering for sale, promoting, marketing or distributing products with the offending trade dress or similar get-up or labels.
  • Respondents are interdicted from using the name or description 'whisky', 'whiskey', or any derivation thereof in relation to any product not meeting statutory requirements for whisky.