Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc (423/93) [1995] ZASCA 26; 1995 (2) SA 903 (AD); [1995] 2 All SA 339 (A) (27 March 1995)

Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever Plc (423/93) [1995] ZASCA 26; 1995 (2) SA 903 (AD); [1995] 2 All SA 339 (A) (27 March 1995)

The court held that the respondent's registered trade mark is limited to red stripes in white toothpaste and does not confer a monopoly over all forms of striped toothpaste. The appellant's proposed marks differ significantly in colour combinations, stripe or layer form, and background, with some omitting the brush and tube device. The disclaimer on the respondent's mark regarding the brush and tube device, a common and non-distinctive feature, must be given effect. The court found that the differences between the marks are so significant that there is no reasonable likelihood of confusion or deception among consumers of average intelligence and caution. The absence of evidence of actual...

Citation
[1995] ZASCA 26
Parties
Appellant: Smithkline Beecham Consumer Brands (Pty) Ltd; Respondent: Unilever Plc
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
27 March 1995
Case Number
423/93
Procedural Posture
Civil Appeal / Appeal From Full Bench of Transvaal Provincial Division; Appeal Against Refusal of Trade Mark Registration
Outcome
Appeal allowed; order of the court a quo and Assistant Registrar set aside; appellant's six trade marks to be registered with specified limitations.
Judges
Corbett, Joubert, Steyn, Eksteen, Olivier
Legal Topics
Trade Mark Registration, Likelihood of Confusion, Distinctiveness, Colour Limitation, Disclaimer of Non Distinctive Features
Intellectual Property Commercial and Corporate Trade Mark Registration Likelihood of Confusion Distinctiveness Colour Limitation Disclaimer of Non Distinctive Features

Case Brief

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Parties

Smithkline Beecham Consumer Brands (Pty) Ltd

Appellant

Unilever Plc

Respondent

Procedural Posture

Civil Appeal / Appeal From Full Bench of Transvaal Provincial Division; Appeal Against Refusal of Trade Mark Registration

Legal Issues

  1. 1 Whether the appellant's six proposed trade marks so resemble the respondent's registered trade mark that their use would be likely to deceive or cause confusion.
  2. 2 Whether the colour limitation and disclaimer on the respondent's trade mark affect the assessment of similarity and likelihood of confusion.
  3. 3 Whether the Assistant Registrar and the court a quo erred in refusing registration of the appellant's trade marks.

Ratio Decidendi

The court held that the respondent's registered trade mark is limited to red stripes in white toothpaste and does not confer a monopoly over all forms of striped toothpaste. The appellant's proposed marks differ significantly in colour combinations, stripe or layer form, and background, with some omitting the brush and tube device. The disclaimer on the respondent's mark regarding the brush and tube device, a common and non-distinctive feature, must be given effect. The court found that the differences between the marks are so significant that there is no reasonable likelihood of confusion or deception among consumers of average intelligence and caution. The absence of evidence of actual...

Court Disposition

Appeal allowed; order of the court a quo and Assistant Registrar set aside; appellant's six trade marks to be registered with specified limitations.

Orders

  • The six appeals are allowed with costs, including costs of two counsel.
  • The order of the court a quo is set aside and replaced with an order granting the appellant's applications for registration of the six trade marks, with costs against the opponent in each case.