South Africa: Passing off and a composite of get-ups
Passing off cases often involve little more than a comparison of two trade marks or get-ups. But the recent South African judgment of Beiersdorf AG v Koni Multinational Brands (Pty) Ltd (12 February 2019) is a little different. It deals with the use by one party of a get-up that is a composite of various get-ups used by another party. It touches on interesting issues, such as residual reputation and enduring associations.
The German company Beiersdorf is the owner of the trade mark Nivea. One of the company’s products is Nivea shower gel for men. The South African company Koni sells a shower gel for men under the trade mark Connie. Beiersdorf claimed that Koni’s shower gel passed off its product because it employed a similar get-up, a get-up in which the colour blue features strongly.
The main thrust of Koni’s defence was that the Nivea get-up had changed a number of times over the years, and that the Nivea get-up that was closest to the Connie get-up had in fact been discontinued before the Connie product came to market. Beiersdorf’s riposte was that Koni had ‘borrowed from ... (its) stable of distinctive logos and features, both past and present, so as to create a composite which is deceptive to the average consumer.’
Judge Fisher pointed to a number of similarities between the get-ups: an overall colour combination of blue, white and silver, with the brand name appearing in white; the use of the colour green for certain descriptive wording; the use of a wavy graphic feature; and the use of similar size containers.
Dealing with the relevance of get-up, Judge Fisher referred to the famous South African case of Adidas Sportschufabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530, where the court said that ‘the use of the different names in this case is insufficient to negative the deceptive effect on the buying public of the conspicuous similarities in the appearance of the respective goods of the plaintiff and the defendant.’
The judge then went on to deal with the fact that there were ‘manifest differences’ between the Connie get-up and the Nivea get-up that was in use when Connie hit the market. But she felt that these differences ‘did not alter the fact that there is potential for confusion between the two products.’ The judge said that ‘get-up and logo have the potential to retain reputation through changes and rebrands and it is not unusual for historical brands to be revisited in the market in order to invoke nostalgia and a sense of staying power.’ She said that ‘the memory in the marketplace of past get-ups can, in some circumstances, create associations which endure and which can outlive changes in get-up and rebranding.’ She said this: ‘ I accept that parts of a get-up, if having the necessary distinction in relation to a particular mark or brand, can suffice to create confusion and that it matters not that the use of such parts has been discontinued.’
The judge went on to say that in a case like this a ‘feature by feature deconstructionist analysis of the products is unhelpful.’ Alluding to a famous old English decision she said that, even if intention is not a requirement for passing off, ‘the get-up of the respondent exhibits all the signs of a “straining of every nerve’’ to evoke the product of the applicant.’ Before concluding as follows: ‘The composite created from aspects of the get-up of the applicant over time is deceiving... (it is) plainly evocative of the applicant’s brand.’
So there was passing off.