[Home] [Databases] [WorldLII] [Search] [Feedback] High Court of Swaziland

You are here:  CommonLII >> Databases >> High Court of Swaziland >> 2000 >> [2000] SZHC 17

[Database Search] [Name Search] [Recent Decisions] [Noteup] [Download] [Help]

Ngwane Mills (Pty) Limited v Universal Milling (Pty) Limited [2000] SZHC 17 (7 November 2000)

/





SWAZILAND HIGH COURT

Passing off

Ngwane Mills (Pty) Limited
applicant

vs

Universal Milling (Pty) Limited
respondent


Civil Case no. 3255/2000

Coram Sapire, CJ

For Applicant Mr. Henwood
For Respondent Ms van der Walt

JUDGMENT

(07/11/2000)

The applicant has launched an urgent application seeking relief in the following terms:

“ 2. That a rule nisi do hereby issue operating with immediate and interim effect calling upon the Respondent to show cause on or before the day of October 2000 why an order in the following terms should not be made final;

The application is based on a founding affidavit attested by one Robert Keith Skipsey. He describes himself as a major, businessman and director of the applicant. The respondent is described as Universal Milling (Pty) Limited which carries on business at Lot 242, Corner of King Mswati III Avenue and Seventh Street, Matsapha.

The applicant is a cereal miller of maize and wheaten products, which has its place of business at Matsapha. The Respondent too produces and markets maize meal.

On the 1^st August, 1998, the applicant by agreement acquired the goodwill, brand-names and registered trade mark rights to special maize meal products called “Ligugu” Special Maize Meal and “Umndlandla” Special Maize Meal from Swaki Investments Limited. The agreement was not attached but the deponent undertook to produce a copy at the hearing of the matter.

This in itself would have created difficulty if the contents of the agreement had a bearing on the matter. The agreement would have to be identified on oath unless the respondent agreed to its admission. As things have turned out, however, this agreement does not in itself constitutes a cession of the trade marks with which we are concerned and it appears that the applicant is not the registered owner of the trade marks.

The applicant claims that as a result of the acquisition the applicant has claimed exclusive use to the milling, distribution and trademark rights of Ligugu and Umndlandla products. The relevant extract of the Swaziland Trade Marks Registrar are annexed to the affidavit but the proprietor in each case is still Swaki Investment (Pty) Limited.

The applicant claims that since acquisition it has built up a substantial reputation and business goodwill among members of the public and retailers alike. This, it is said, has been achieved through strengthening marketing policies and considerable advertising. The applicant goes on to say that as a consequence of acquiring the registered trade marks for the products the applicant has acquired certain rights for the products and among these are: -

In this connection reference is made to an extract of findings of a formal research carried out by professional marketing and research company called EC Research and Marketing Services CC into the viability or commercial success of the products. This report is annexed to the affidavit. The report however is hearsay and cannot be relied on. There is therefor little evidence to substantiate applicant’s claims.

The applicant also avers that in addition thereto members of the public have through the marks been able to distinguish these products from other similar kinds of goods available in the market. The founding affidavit discloses that the Ligugu Special Maize Meal is milled and pre-packed by the applicant in various sizes. Each package has a distinctive logo portraying a Swazi infant sitting next to a cooking pot. The logo is surrounded by a distinctive yellow and green border design. A specimen the package and its logo is annexed to the papers.

The Swazi infant portrayed in the logo, it is said, has become and is identified in the minds of the public with the Ligugu product that is manufactured by the applicant and likewise the distinctive yellow and green border also become synonymous with the product.

In line with the claimed continued success of the Ligugu product and at the end of August, 200 the applicant launched a new advertising campaign, which sought to emphasise the importance of family bonding by making reference to a mother child and family concept. This advertising campaign has enjoyed an extensive coverage in most sectors of the media. A copy of the Ligugu advertising material in the form of a “washline” is annexed to the papers. Applicant has expended large sums of money in the advertisement campaign.

As far as the “Umndlandla” special maize meal is concerned, in the founding affidavit the applicant claims that, the applicant too prepacks this in a similar manner to the Ligugu products. The packaging includes the distinctive logo, which consists of a head of maize within a circle. The word “Umndlandla” and the head of maize have become identified with energy and power among the members of the public and more specifically customers of the applicant who purchase this product.

During September 2000 it came to the applicant’s attention that the respondent had launched a maize meal product called “Emandla”. The respondent is said to be a new company formed within the past year and it is a new entrant into the maize milling market of Swaziland. The Emandla product is the respondent’s first maize product to be launched into the market of Swaziland.

It is alleged that particular features of the respondent’s product packaging give rise to the present application. They are the following: -

(b) a mother feeding a child which introduces the importance of family bonding as already emphasised by the applicant in its advertising campaign;

(c) two heads of corn similar to the Umndlandla logo;

(d) a yellow and green border with a similar pattern to the applicant’s distinctive yellow and green border;

In regard to the name of the product “Emandla” the applicant submits that the name is and can be associated with the name of “Umndlandla” which as earlier stated enjoys extensive protection. The applicant submits that the similarity in the names may give rise to confusion among the members of the public.

The applicant disavows any permission having been given for the use of the logo and that the conduct of the respondent is calculated to confuse and to deceive members of the public into believing that the respondent’s product is similar or identical or is connected in the course of trade with the applicant. The applicant concludes that the respondent is wrongfully posing off its product as that of the applicant and simultaneously infringing its registered trademarks.

On the 29^th September 2000 the applicant demanded that the respondent cease all use of the offensive logo. No acknowledgement of or reply to this demand has been received. The marketing of the product by the respondent continues.

The respondent has replied to these allegations and claims that because of the time constraints, the respondent has not been able to fully deal. with all the issues raised in the application and reserves the right to request an opportunity to meet the allegations of the applicant.

I do not intend to deal with the attack on the urgency aspect of the matter and I find that it is possible to deal with this application on the basis of the papers before me.

The first point taken is that the applicant has not made out any case for its locus standi .To bring any application for relief based on the alleged infringement of a registered trademark, the applicant must be the registered proprietor or user, in terms of the Trade Marks Act^[1]. Section 15(1) read with section 31,confers the exclusive right to the use of a trademark on the registered owner.

It also claims that the applicant has not made out a proper case for the relief sought in the notice of motion relating to passing off. The applicant, the respondent points out, has relied on the document, which I have already observed is hearsay. No use may be made of that document.

The respondent’s affidavit raised a number of technical points with which it is not necessary to deal at this stage.

The one point which is made, however, is that as the applicant is not the registered owner of the trade marks, the relief sought by virtue of the ownership of such trade marks cannot be granted to the applicant. The case therefore, (and this has become common cause), had to be dealt with on the basis of the passing off.

The respondent also raised the issue that the Applicant does not presently market maize meal under the name Umndlandla. The deponent to the respondent’s affidavit claims not to have seen it sold in Swaziland or elsewhere. When the matter was argued it was common cause that no product was being marketed under the name Umndlandla. This the Applicant has not been able to counter.

The respondent has also denied that any goodwill or reputation has been built up in marks in question and again denies the applicant’s basis or foundation for any claim based on the marks. The applicant was unable to produce anything to advance its claim based on the trademarks and this basis was in effect abandoned in the argument.

The argument turned to the question of passing off. I was asked to compare the get-up of the applicant’s product with that of the respondent.

An essential element to be established by he applicant, is the reputation of its product. This means that it is necessary to demonstrate that through the use of particular packaging, symbols get up and name, the product has become associated in the mind of the public with its business.

“ ‘.....the plaintiff must prove in the first instance that the defendant has used or is using in connection with his own goods, a name, mark, sign or get-up which has become distinctive ‘in the sense that by the use (the Plaintiff’s) name mark, etc., in relation to goods they are regarded by a substantial number of members of the public or in the trade, as coming from a particular source known or unknown’ (Halsbury, Laws of England, 3^rd Ed vol 38 p597). In other words, the plaintiff must prove that the feature of his product on which he relies has acquired a meaning or significance, so that it indicates a single source for goods on which the feature is used”^[2]

The inadmissibility of the market research report is in these proceedings, an insuperable obstacle to the applicant’s success in this regard. Nevertheless, I turn to consider whether the alleged similarities in the get-up of the two products are likely to cause confusion. Simply put, “Are a materially significant number of members of the public likely to buy “EMANDLA” maize meal produced by the respondent thinking, because of the packaging, they are buying “LIGUGU” maize meal, produced by the Applicant.

There are both similarities and differences, which can be seen.

There may be similarities in the packaging. The question however is “Is it so similar as to cause confusion?”

The dominant colour apart from the white background, in the respondent’s package is green while that of the applicant is yellow.

The test, which I am required to apply, is whether the get-up of the respondent’s packaging is so similar as to be likely to cause confusion.

See Hoechst Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (in Liquidation)^[3]

It is difficult to appreciate what goes on in the minds of the purchasing public. For this reason a degree of subjectivity in assessment is unavoidable. One has to rely on one’s own perceptions. There may be several criteria by which differing members of the public may distinguish the one brand from another. There are those who may buy the product and be satisfied that they are getting maize meal wherever it came from. To such there is no question of passing off. There may be those who have a special penchant for the applicant’s product and who have become so accustomed to the get-up of its packaging so as not to be deceived by the alleged similarity of the Respondent’s get up. There is no suggestion on the papers that the maize meal to be found in Applicant’s packages is any different from that produced and marketed by the Respondent.

The immediate impact of the respondent’s get up is that the content of the package is not the same as Ligugu. Moreover the names of the two products which are very prominent on the packages do not suggest to me that much confusion, if any, would arise from the continued marketing by the respondent of its product in the present get-up. In making this observation I do not lose sight of the fact that many of the purchasers may be illiterate. Even to such however the configuration of the name must appear so different as to effectively distinguish the one product from the other.

The applicant has on these papers not established the case which on the authorities it is obliged to do to be afforded the relief it seeks. I find for the respondent, and the application is dismissed with costs.

SAPIRE, CJ

^[1] No. 6 of 1981
^[2] per Nicholas J in Adcock –Ingram Products Ltd v Beecham SA (Pty)Ltd 1977(4) SA 344 (W) at 436-7

^[3] 1987 (2) SA 600 (A)