5 December 2022

International Cases

Dart Industries Incorporated and Another vs. Botle Buhle Brands (Pty) Ltd and Another

South Africa


Intellectual Property Rights

In passing off proceedings, the court must consider all extraneous factors in reaching a conclusion that confusion is likely

The dispute was about a shape of a water bottle. Since 2011, Tupperware has been selling a plastic bottle that has the shape of the registered mark, and marketed as the ‘Eco bottle’, in South Africa. In 2019, the first respondent, Botle Buhle Brands (Pty) Ltd (Buhle Brands), started to market and sell an almost identical bottle as the Tupperware’s Eco bottle. Tupperware considered the Buhle Brands’ bottle to infringe its registered trade mark. Accordingly, it applied to the high court seeking to restrain Buhle Brands from infringing its registered mark in terms of Section 34(1)(a) and 34(1)(c) of the Trade Mark Act, 1993 (the Act). In addition, Tupperware sought a restraining order based on passing off. In response, Buhle Brands launched a counter-application for the removal of Tupperware’s trade mark registration.

The High Court found that the registered trade mark was neither inherently distinctive nor had acquired distinctiveness as a result of prior use, as envisaged in Section 9(2). Consequently, it dismissed Tupperware’s application and granted Buhle Brands’ counter application for the removal of Tupperware's trade mark from the trade mark register. As regards the relief based on passing off, the high court found that although the bottles were virtually identical, there was no likelihood of deception or confusion, given the sales model used by both parties.

Passing-off consists in a representation by one person that the goods or services marketed by him or her are from another or that there is an association between such goods or services and the business conducted by the other. There is a caveat. The law against passing-off is not designed to grant monopolies in successful get-ups. A certain measure of copying is permissible, provided that the imitator ‘makes it perfectly clear to the public that the articles which he is selling are not the other manufacturer’s, but his own articles, so that there is no probability of any ordinary purchaser being deceived.’ In passing off proceedings, the court must consider all extraneous factors in reaching a conclusion that confusion is likely. The entire get-up of the respective products is compared, including the shapes, the markings and the decorations on the products, as well as how the respective trade marks are applied to the products.

The Eco bottle did not represent a significant departure from the norms and customs of the water bottle sector. Also, there was no evidence that the average consumer appreciated that the bottle conveyed trade mark significance. Thus, customers would not regard the shape of the Eco bottle alone as a guarantee that it was produced by Tupperware, as ‘containers and shapes generally do not serve as sources of origin.’ Despite that fact that the Eco bottle was visually distinctive, and would be recognised as different to other bottles on the market, this did not mean that it would ‘convey a message that it was intended to be an indication of origin or that it performed that function.’

A potential customer who had attended a Tupperware party may wish to purchase the Eco bottle online. They would search for it by name. Another potential customer may have seen the Eco bottle at the office, school or church. They may search for it by shape. In both instances, the potential customer would likely encounter the Eco bottle and the Buhle Brands bottle side by side. In either case, because of the similarities between the two products, they make the association between them. Because of the similarities, the consumer was likely to perceive the two bottles to be associated. This type of confusion, which results in consumers purchasing one product thinking that it is the one they know, or is associated with it, is at the heart of the action of passing-off. Therefore, the likelihood of confusion exists, and the claim for passing off should have succeeded. Accordingly, the Supreme Court, dismissed Tupperware’s appeal against the dismissal of its trade mark infringement claim but upheld its appeal against the dismissal of its passing-off claim.

Tags : Passing off claim Deception Likelihood

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