Cholesterol Ease - passing off cases not that easy
5/12/2011

The Western Cape High Court per Acting Judge Cloete delivered judgement in the case of 3 Jerks Manufacturing CC v Vital Health Foods (Pty) Ltd (“Vital”) on 2 December 2011. Adams & Adams Cape Town Office represented the Respondent, Vital.

The Applicant has a vitamin C product (sachets) under the name CholesterolEase in the market, which it had been selling since 2005. The Applicant has no registered trade mark for CholesterolEase. Vital (a well-known South African producer of vitamins and nutritional supplements) launched its product Vital Cholesterol Ease at the end of September 2011.

The Applicant instituted an urgent application for an interdict based on passing off. The conduct complained of was Vital’s use of the mark “Cholesterol Ease” for the product Vital Cholesterol Ease. The Applicant conceded that the respective get-ups are distinguishable (see below), but argued a case of aural confusion in view of its radio advertising campaign, which campaign was focused solely on the mark “CholesterolEase”.

The Court found that the phrase “Cholesterol Ease” is a descriptive term and not a fanciful or invented name. The Court held that: “The term ‘Ease’ is defined in the New Oxford Dictionary of English when used as a verb as follows: ‘(to) make (something unpleasant, painful or intense) less serious or severe’. In my view the respondent correctly argues that the phrase ‘CholesterolEase’ describes the function of the applicant’s product and is thus nothing more than descriptive. The name used by the applicant is not a fancy name, nor is it an arbitrary or invented or fanciful name. It merely constitutes the use of ‘descriptive terms’. Put differently, it seeks to describe the claimed function of the product. It is simply a convenient and natural way to describe a product which is intended to lower cholesterol.”
The Applicant had failed to establish a secondary meaning in the phrase in evidence, in the sense it is “associated in the minds of the public with the applicant’s product and no-one else’s”. Accordingly, the first leg of a successful passing off action, namely reputation, was not successfully established.

There was further no misrepresentation on the part of Vital. The Court placed strong reliance on the marketing methods of the parties. In particular Vital’s product get-up differed significantly from that of the Applicant and Vital marked its product as Vital Cholesterol Ease. The Court found that it cannot be said that there is a likelihood that a substantial number of the people who buy or are interested in the products would be confused as to whether Vital’s product is that of the Applicant, or about the existence of some material connection between the products.

Accordingly, since the Applicant had no registered trade mark rights in the mark CholesterolEase its case had to be considered in terms of the delict of passing off. This involved considering not only the respective marks (as would have been the case in trade mark infringement proceedings), but also additional factors such as the respective get-ups of the products and the respective marketing methods of both parties to determine whether any misrepresentation by Vital had taken place.

This case confirms and highlights the important differences between the law of passing off and the law of trade marks. The Applicant had effectively sought protection for its CholesterolEase name under the common law as if it were a a registered trade mark, with no success.

Suzaan Laing
Partner
sl@adamsadams.co.za

Wensel Britz
Candidate Attorney
wenselb@adamsadams.co.za