(WESTERN CAPE HIGH COURT, CAPE TOWN)

Case No 2966/10

In the matter between:

SEA HARVEST CORPORATION 

and

		

IN THE HIGH COURT OF SOUTH AFRICA
(WESTERN CAPE HIGH COURT, CAPE TOWN)

Case No 2966/2010

In the matter between:

SEA HARVEST CORPORATION

and

JUNO FINANCE COMPANY LIMITED       Second Respondent

JUDGMENT

CLOETE AJ:

INTRODUCTION

[1] This is an urgent application in which the applicant claims that the first respondent is unlawfully passing-off one of its range of products as being that of the applicant's.

[2] The applicant and first respondent are both Cape Town based companies which compete in the frozen and added-value (i.e. prepared fish) industry. The second respondent is a Mauritian company which owns a number of registered trade marks in South Africa which it licences to the first respondent.

THE FACTS

[4] The material facts which are common cause or which are not seriously disputed by the respondents are the following.

[5] The applicant and first respondent have been direct competitors in the fish industry for at least the past 20 years. Both produce a variety of fish products which are separated into different product ranges, each with its own style of packaging to distinguish one range from the other.

[6] The packagings of the competing products have historically always been distinguishable from each other through differences in font, weight, colour and the like. Products falling into a specific range of one competitor are generally packaged in a similar fashion so as to allow a consumer to classify the product by sight, not only as part of a specific range, but also to distinguish the products from that of the competitor.

[7] The second respondent is the applicant for registration of trademark number 2010/25859-60 l&J OVEN CRUNCH in classes 29 and 30. These trademark applications were filed in November 2010 and are still pending. The applicant will oppose these trademark applications if and when accepted by the registrar of trade marks.

[8] The applicant is, according to AC Nielsen figures, the market leader in the South African frozen fish market with an approximately 46% market share in this category. First respondent has an approximately 44% market share in the same category.

ISSUES TO DETERMINED

THE LEGAL POSITION

Passing-off is a wrong consisting of a false representation made by one trader (the defendant) to members of the purchasing public that the enterpnse, goods or services of a rival trader (the plaintiff) either belong to him (the defendant) or are connected, in the course of trade, with his own enterprise, goods or services. (I shall abbreviate, for the sake of convenient 'enterprise, goods or services' to the single term 'the product' since this is a case of 'product confusion' rather than 'business connection confusion'.) The defendant's representation is a misrepresentation if it is likely to deceive or confuse a substantial number of members of the public as to the source or origin of his product. Passing-off. to be actionable, erodes the plaintiff's goodwill.'

[21] Accordingly, the test whether a false representation amounts to passing-off is whether there is a reasonable likelihood that substantial members of the public may be confused into believing that the business or product of one trader is, or is connected with, that of another.

EVALUATION

[35] At the outset it should be mentioned that the applicant was criticized by the respondents for not placing any direct evidence before me that members of the public have actually been confused or deceived, since (so it was argued) this would have carried far more weight for the applicant. No doubt this would have been optimal for the applicant; however the fact of the matter is that the applicant approached court on an urgent basis in order to attempt to prevent the very harm which such direct evidence would have confirmed. In the circumstances I do not think that the absence of such direct evidence should count against the applicant.

'...South African Courts have recognised that, in motion proceedings, disputes of fact cannot necessarily be accepted at face value and that, in each case, the Court should closely scrutinise the alleged issues of fact in order to decide whether there is indeed a dispute of fact that cannot satisfactorily be determined without the aid of oral evidence ... Thus, while the Court should be circumspect in its approach,
"(i)f, on the papers before the Court, the probabilities overwhelmingly favour a
specific factual finding, the Court should take a robust approach and make that
finding'".

[41] The parties are in agreement that the amount of time which a consumers eye will spend on specific packaging elements is measured in a matter of seconds. Respondents' counsel argued that whilst this is so, "a matter of seconds" is a relative concept and cannot be defined as being a specific number of seconds However he conceded that it is nonetheless a matter of seconds and not minutes. In short therefore, a consumer will spend a very short period of time looking at specific packaging elements, which of course makes sense.

[42] In my view this must be even more so when considering the purchase of an average, generally available commodity such as packaged frozen or added-value fish. Further, one must have regard to the doctrine of imperfect recollection in assessing the memory of the average consumer purchasing an average, generally available commodity.

[43] Bearing these factors in mind it is necessary to compare the get-ups of the applicant's Oven Chsp and the first respondent's Oven Cmnch products, photographs of which are also reproduced for ease of reference hereunder:

[48] Accordingly, the applicant must succeed in the main relief.

THE SECONDARY RELIEF SOUGHT BY THE APPLICANT

'On 23 March 1989 the Full Court dismissed the appeal. I shall henceforth refer to its judgment simply as the judgment of the Full Court. The Full Court did slightly amend the order granted by Van Zyl J. but this was done only for the sake of clarity. Nothing turns on this amendment. The order, as amended, reads as follows:

[51] Secondly, and as is apparent from the papers before me, the respondents themselves had no difficulty as recently as 1 February 2011 in demanding precisely the same scope of relief from the applicant in respect of an unrelated passing-off dispute. The demand by the respondents (through their attorneys) reads as follows;

[52] Accordingly, I do not believe that the scope of the relief sought by the applicant is inappropriate, and it thus succeeds in this relief as well.

COSTS

[53] As the applicant has been successful in the relief sought by it, it follows that the respondents should bear the costs of this application.

(2)	The first and second respondents shall effect payment of the applicant's costs on a scale as between party and party, jointly and severally, the one paying, the other to be absolved.