Court name
High Court of eSwatini

Ngwane Mills (Pty) Ltd v Universal Milling (Pty) Ltd () [2000] SZHC 94 (07 November 2000);

Law report citations
Media neutral citation
[2000] SZHC 94
Coram
Sapire, CJ









1


SWAZILAND
HIGH COURT


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;


2.1.1 The
Respondent and/or its agents and/or directors and/or any person in
occupation or carrying on business at Lot 242 Corner King Mswati III
Avenue and Seventh street, Matsapha, be and is hereby restrained
from:


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2.1.2 Passing
off its special maize meal product as that of the Applicant or as
being connected in the course of trade with the Applicant, by using
the Emandla or Umndlandla logos which are confusing or definitively
similar to the Applicant's logos.


2.1.3 Infringing
the Applicant's rights acquired by the registration of trade mark
numbers 152/1987 Ligugu Special Maize Meal and 790/96, Umndlandla
Special Maize Meal by using, in relation to any goods in respect of
which the said trade marks are registered, the Emandla logo or any
other mark so nearly resembling the aforesaid registered trade marks
as to be likely to deceive or cause confusion;


2.2 The
Respondent deliver up to the Applicant for destruction any packaging,
containers, labels, letterheads, advertising matter and documents of
whatsoever sort, bearing the current Emandla logo which may be in its
possession or under its control.


2.3 That
the Respondent pays the costs of this application.


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.


3


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 1st 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: -


(a) the
goodwill and reputation built up by the previous owner associated
with the marks that symbolised the product;


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(b) the
goodwill and reputation developed by applicant that is associated
with the marks.


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.


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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: -


(a) The
"Emandla" product logo includes a "mirror image"
of the infant used in the applicant's logo;


(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;


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(e) packaging
which is identical to that of the applicant.


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 29th 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


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registered
trademark, the applicant must be the registered proprietor or user,
in terms of the Trade Marks Act1. 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.

1
No.
6 of 1981


8


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 Plaintiffs) 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, 3rd 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"


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.


(a) Both
packages are use green and yellow to identify the product. The greens
while not identical match very closely. The yellow hues are not so
similar. In applicant's packaging the yellow predominates, while the
predominant colour on Respondent's product is green. The white
background is common to both.


(b) The
design or motif of both contending parties is in black. The
Applicant's washline advertising material depicts a package with the
picture in sepia or brown That of the applicant consists of a child
seated alongside a three-2 per Nicholas J in Adcock -Ingram Products
Ltd v Beecham SA (Pty)Ltd 1977(4) SA 344 (W) at 436-7


9


legged
pot. While the illustration on applicant's packaging only has one
child and the cooking pot, the respondent has a family consisting of
a mother feeding three children from a steaming plate, featured on
its packages.


(c) It
is claimed that the infant seated in both logos is a mirror image of
that on the applicant's package. I cannot from my own observations
find this to be correct. The picture is in both cases that of an
infant. The infant is seated in what is a common posture. It is
however not the same infant. There is nothing in the picture of an
infant to which the applicant can claim a proprietary right.


(d) Both
packages made use of the words "vitamin enriched". This is
nothing more than a description of the meal.


(e) The
applicant's product has the name "Ligugu" printed in bold
letters while that of the respondent has the word "Emandla"
emblazoned on a ribbon across the top of the logo. The two logos are
not very similar to each other.


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 3 1987 (2)
SA 600 (A)


10


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