The way GM PATEL FOODS CC's cookie crumbled
31/07/2009

Adams & Adams' client succeeds with trade mark infringement and passing-off action
In June 2008, National Brands Ltd instituted action in the North Gauteng High Court, Pretoria against GM Patel Foods CC in respect of its use of the following get-up in relation to its Tanee biscuit product:

National Brands Ltd sought an interdict restraining GM Patel Foods CC from infringing its registered rights in terms of Section 34 (1)(a) of the Trade Marks Act no. 194 of 1993, and from passing off.

The details of National Brands Ltd’s said trade mark registration are:
Official description: Biscuit design (Tennis)

Depiction:

Trade mark registration no. 1963/3324

Class: 30

Goods and Services : Biscuits and confectionery

Filing date: 3 October 1963

National Brands Limited argued that the use of red lettering and, on the right of the packaging, an image of pouring syrup, a sliced coconut device and an image of Tennis biscuits by GM Patel Foods CC in the get-up of its packaging of Tanee product was likely to lead to deception and confusion. The get-up used by National Brands Ltd for the packaging of its Tennis biscuits is depicted as follows:

Passing off

GM Patel Foods CC’s primary defence to National Brands Ltd’s claim that it was passing off was that no likelihood of deception or confusion existed as a consequence of the following differences between certain individual elements that appeared on the respective Tanee and Tennis packaging:

• The background colouring of Tanee biscuit packaging was yellow/orange whereas the background colouring of Tennis biscuit packaging was white;
• The Tennis biscuit product appeared on the Bakers trade mark including the device of a baker, where no similar trade mark appeared on the Tanee product;
• The word Tennis appeared on the packaging of Tennis products whereas the word Tanee appeared on Tanee products. GM Patel Foods CC pointed out that the words Tennis and Tanee were printed in different fonts and in different forms of capitalisation and had different conceptual meanings; and
• The words “the original” appeared on the packaging of Tennis products and not on Tanee products.

National Brands Ltd argued that consumers do not, as GM Patel Foods CC had done, artificially isolate and compare the individual features of product packaging when distinguishing products from each other and that it was clear that the similarities between the dominant aspects of the respective get-ups would deceive and confuse. National Brands Ltd pointed out that that confectionary items were often purchased on impulse and close attention was not given to individual features that appeared on different packaging.

The Court considered that the purchasers of biscuits could be illiterate and that those persons would have only a “general idea in his mind eye of what he intends to buy and not an exact representation thereof”.

The Court referred to the decisions in the Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd 2001 (3) 884 (SCA) and Harrods Ltd v Harrodian School Ltd [1996] RPC 697 (CA), where it was observed that a Court will not go out of its way to assist the person who wants to pass off his goods as those of another in cases of deliberate copying.

The Court held that there could be no doubt that there was deliberate copying by GM Patel Foods CC. The distinctive features of the get-up of GM Patel Foods CC’s Tanee biscuits were not “sufficient to persuade a purchaser that the product of [GM Patel Foods CC] is not the product of [National Brands Ltd] and the get-up [chosen by it] would cause deception and confusion”.

The Court was of the opinion that in deciding whether or not there is “deliberate copying” in any particular case, it must have regard to whether the copier provides a plausible explanation for adopting the relevant get-up for use in respect of its products.

The Court also observed that the nature of the enquiry differed in cases of deliberate and so-called “innocent copying”. It held that, when “innocent imitation” takes place, it should focus its enquiry on the features of the offending design or get-up that are alleged to cause deception or confusion. The Court held that, if its conclusion, in those circumstances, is that “those features will cause deception and/or confusion, there is passing off”.

In the case of deliberate copying, the focus of the Court’s enquiry will be on the distinguishing features to establish whether or not the alleged offending competitor “made it perfectly clear to the public that the articles that he is selling are not those of the other competitor, but his own”. The Court held that, if this was not made clear, there was passing off.

Trade mark infringement

GM Patel Foods CC’s primary defence was that the biscuit design trade mark that it applied to its Tanee biscuits was so dissimilar to the Tennis biscuit design device trade mark that no deception or confusion was likely. The differences relied on by GM Patel Foods CC were that:

• The Tennis biscuit design consisted of “closely knitted”, “asymmetrical” and “natural and rounded” “flower petals” whereas the Tanee design consisted of “symmetrical”, “cobbled pebbles” that did not have any resemblance to “natural flowers”; and
• The Tennis biscuit design featured three flat and wide rectangular figures, the middle being curved, encapsulating the words Bakers, Biscuits and Tennis, whereas the Tanee design featured three rectangular figures encapsulating the words “nice and fresh”.

National Brands Ltd argued that members of the public would not consider the GM Patel Food CC’s biscuit design as consisting of “closely knitted”, “asymmetrical” and “natural and rounded” “flower petals” and, when encountering the trade mark in the market, distinguish it from the Tennis trade mark as “symmetrical”, “cobbled pebbles” that do not have any resemblance to “natural flowers”. National Brands Ltd was of the view that that was a bizarre notion and an artificial attempt by GM Patel Foods CC to escape the obvious conclusion that the biscuit design trade mark used by it was virtually identical to the registered Tennis biscuit design device trade mark.

National Brands Ltd was of the view that the appearance of the words Bakers, Tennis and Biscuits that appear on Tennis biscuits, but not in the registered Tennis biscuit design device trade mark, was irrelevant to the determination of trade mark infringement.

The Court was of the view that “few observers of the two designs [would] even think about symmetry and asymmetry and it [was] unlikely that what appear[ed] on the [GM Patel Foods CC’s] design [would] be likened to pebbles instead of petals”. The Court, noting that the spaces in the Tennis biscuit design device trade mark registration were blank and that, in any event, the wording on the respective biscuits was not “at all that distinct so that many customers will not even observe the difference”, found that there was a distinct probability that a substantial number of potential customers would be confused and would regard GM Patel Foods CC’s “design as connected to [National Brands Ltd] in some way or another”.

GM Patel Foods CC decided not to pursue an appeal.

Charne le Roux
Partner
Adams & Adams
CLR@adamsadams.co.za
Theuns van de Merwe
Associate
Adams & Adams
Theuns-V@adamsadams.co.za