South Africa Case Law

Fuel Trailers (Pty) Ltd t/a Trailers and Tankers v St Logistics (Pty) Ltd t/a Jikelele Tankers and Trailers (D9292/2021)

Fuel Trailers (Pty) Ltd t/a Trailers and Tankers v St Logistics (Pty) Ltd t/a Jikelele Tankers and Trailers (D9292/2021) [2023] ZAKZDHC 40 (14 June 2023)

Court

Kwazulu-Natal High Court, Durban

Case number

D9292/2021

Judge

Sipunzi

The High Court interdicted a former distributor from using a confusingly similar trailer-and-tanker logo and get-up, finding passing-off and unlawful competition.

• Passing Off
• Unlawful Competition
• Trade Mark Distinctiveness
• Get Up
• Restraint Of Trade
• Passing-off

Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another (636/2021)

Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another (636/2021) [2022] ZASCA 170; [2023] 1 All SA 299 (SCA); 2023 (4) SA 48 (SCA) (1 December 2022)

Court

Supreme Court of Appeal

Case number

636/2021

Judges

Dambuza, Makgoka, Gorven, Goosen, Masipa

The Supreme Court of Appeal held that the Eco bottle's shape was not inherently distinctive, as similar shapes existed in the market and consumers would not perceive the shape alone as a badge of origin. There was no evidence that the shape had acquired distinctiveness through prior use, as Tupperware always marketed the bottle in conjunction with its well-known trade mark, not the shape itself. The mark therefore failed both the inherent and acquired distinctiveness tests, justifying cancellation under s 10(2)(a) of the Trade Marks Act. However, the court found that Tupperware had establishe…

Source excerpt

• Trade Mark Distinctiveness
• Shape Marks
• Passing Off
• Trade Mark Cancellation
• Likelihood Of Confusion

Independent Institute of Education (Pty) Ltd v Trinity College SA (Pty) Ltd and Others (A84/2019)

Independent Institute of Education (Pty) Ltd v Trinity College SA (Pty) Ltd and Others (A84/2019) [2021] ZAGPPHC 841; 2021 BIP 17 (GP) (1 December 2021)

Court

North Gauteng High Court, Pretoria

Case number

A84/2019

Judges

Tolmay, Mabuse, Baqwa

The Court found that the appellant's TRINITYHOUSE trade mark has acquired distinctiveness and reputation in the education sector through long-term and extensive use. The First Respondent's use of TRINITY COLLEGE SA for similar educational services is visually, aurally, and conceptually confusingly similar to the appellant's mark. The addition of 'College SA' is merely descriptive and does not sufficiently distinguish the marks. The likelihood of confusion or deception is heightened in the context of service marks, and both parties operate in the same sector. The First Respondent's company nam…

Source excerpt

• Passing Off
• Trade Mark Distinctiveness
• Company Name Conflict
• Likelihood Of Confusion
• Section 11 Companies Act

Koni Multinational Brands (Pty) Ltd v Beiersdorf AG (553/19)

Koni Multinational Brands (Pty) Ltd v Beiersdorf AG (553/19) [2021] ZASCA 24; 2021 BIP 15 (SCA); [2021] HIPR 162 (SCA) (19 March 2021)

Court

Supreme Court of Appeal

Case number

553/19

Judges

Cachalia, Makgoka, Schippers, Sutherland, Unterhalter

The Supreme Court of Appeal dismissed a passing-off appeal over NIVEA MEN shower gel packaging, finding Koni’s CONNIE MEN get-up confusingly similar.

• Passing Off
• Get Up Protection
• Unlawful Competition
• Trade Mark Distinctiveness
• Consumer Confusion
• Passing-off

Better Homes Expo (Pty) Ltd v Consep Home Ideas (Pty) Ltd and Others (48170/17)

Better Homes Expo (Pty) Ltd v Consep Home Ideas (Pty) Ltd and Others (48170/17) [2019] ZAGPJHC 5; 2019 BIP 259 (GJ) (7 February 2019)

Court

South Gauteng High Court, Johannesburg

Case number

48170/17

Judge

Meyer

The court found that the phrase HOME IDEAS is descriptive and commonly used in the English language, conveying the meaning of ideas for the home. The applicant's reputation in the mark was not sufficient to render the phrase distinctive of its business alone. The addition of the word CONSEP and the markedly different get-up used by the respondents were sufficient to distinguish their business from that of the applicant. The evidence of actual confusion was unsatisfactory and did not establish a reasonable likelihood of confusion or deception. The applicant, having adopted a trading name conta…

Source excerpt

• Passing Off
• Trade Mark Distinctiveness
• Descriptive Terms
• Secondary Meaning
• Likelihood Of Confusion

Tsebo Health CC v Eternal City Trading 529 CC and Others (1251/2010)

Tsebo Health CC v Eternal City Trading 529 CC and Others (1251/2010) [2010] ZAFSHC 45 (30 April 2010)

Court

Free State High Court, Bloemfontein

Case number

1251/2010

Judge

S. Ebrahim

High Court passing-off case where the applicant proved goodwill in “Hlêka” and obtained a final interdict against confusingly similar branding.

• Passing Off
• Unlawful Competition
• Goodwill And Reputation
• Trade Mark Distinctiveness
• Get Up Imitation
• Locus Standi

Caterham Car Sales and Coachworks Ltd. v Birkin Cars (Pty) Ltd. and Another (393/95)

Caterham Car Sales and Coachworks Ltd. v Birkin Cars (Pty) Ltd. and Another (393/95) [1998] ZASCA 44; 1998 (3) SA 938 (SCA); [1998] 3 All SA 175 (A) (27 May 1998)

Court

Supreme Court of Appeal

Case number

393/95

Judges

Smalberger, Harms, Marais, Schutz, Plewman

The Supreme Court of Appeal dismissed Caterham’s passing-off claim over replica Lotus Seven cars, finding no protectable South African reputation or goodwill.

• Passing Off
• Goodwill And Reputation
• Trade Mark Distinctiveness
• Assignment Of Rights
• Unfair Competition
• Passing-off

Royal Beech-Nut (Pty) Ltd. t/a Manhattan Confectioners v United Tobacco Company Ltd. t/a Willards Foods (584/90)

Royal Beech-Nut (Pty) Ltd. t/a Manhattan Confectioners v United Tobacco Company Ltd. t/a Willards Foods (584/90) [1992] ZASCA 113; 1992 (4) SA 118 (AD); [1992] 2 All SA 337 (A) (3 June 1992)

Court

Supreme Court of Appeal

Case number

584/90

Judges

Corbett, Hefer, Nestadt, Goldstone, Nicholas

The court rejected a passing-off claim over MANHATTANS potato chips, finding no likely confusion with MANHATTAN confectionery and dismissing the appeal.

• Passing Off
• Trade Mark Distinctiveness
• Unregistered Trade Mark
• Likelihood Of Confusion
• Passing-off
• Trade-mark-distinctiveness