The South African Supreme Court of Appeal (SCA) handed down its judgment in a passing off case recently – Koni Multinational Brands (Pty) Ltd v Beiersdorf AG (553/19) (2020) ZASCA 24, 19 March 2021.The issue here was whether a shower gel product called CONNIE MEN passed off a long-established brand NIVEA MEN. The similarities were all in the packaging, with both featuring:
- A colour combination of blue, white and silver, in the form of an elongated rectangular bottle with a blue base and a silver lid.
- A wave-styled label.
- The trade mark in white font on a blue background with a silver outline.
- The use of bright green lettering.
In order to prove a passing off it is necessary for the plaintiff to establish that its mark has a reputation. This proved to be easy for Beiersdorf, with its NIVEA brand having been in South Africa for many years, and the brand having a 50% market share. The majority (four of the five judges) had no difficulty finding that there had been passing off.
What is unusual about this case, however, is that there was a very long and very robust dissenting judgment from one judge. Judge Makgoka concentrated on the following issues:
- The fact that the usage of the NIVEA brand has been very inconsistent over the years, with many different colour combinations having been used.
- The fact that the brand names used by the two parties were very different – NIVEA v CONNIE.
The judge remarked that ‘it would take a particularly careless purchaser’ to confuse the products, one who would ‘have to totally ignore the CONNIE trade mark so clearly and prominently displayed on the Koni shower gel.’
The dissenting judgment is a reminder that trade mark owners are well advised to register the entire label (in addition to the word mark) rather than rely on the difficult action of passing off.