IK THE SUPRB1B COURT OF SOUTH AFRICA (TRAK5VAAI FKOVTNCIAI DIVISION)

/EvW

CASE HO:

21217/87

DELETE WHICHEVER IS NOT APPLICABLE (1) REPORTABLE: Yfe/NO. (2) OF INTERESTED OTHER JUDGES: t l S J N O . (3) REVISED. DATE. / I n the matter between:

WJ*
r

SIGNATURE

COINTREAU & CIE S.A.

Applicant

and

PAGAN INTERNATIONAL

Restondent

JUDGMENT

MACARTHUR, J :

The applicant a company registered in France seeks by way of a final interdict to restrain the respondent from infringing certain of its registered trade marks. The respondent G. Pagan Enterprises (Pty)

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Ltd is a company registered in South Africa and it trades under the style of Pagan International. The applicant is a manufacturer in France of liqueurs and other alcoholic beverages. In particular i t manufactures an orange flavoured liqueur known as Cointreau and it has been marketing this product in South Africa since 1929In 1980

the trade marks were registered in South Africa for the first time and details thereof are set out hereunder. The applicant now complains that its registered trade marks are being infringed by the activities of the respondent who is marketing and selling an orange based liqueur called Alianca which it imports from Portugal.

The trade marks registered in the name of the applicant are two container marks being numbers SO/4468 and 80/5123 and one mark in respect of a label number 81/0153All 3 registrations are in Part

A of the register and all are registered in class 33 (schedule 4) The two container marks are registered in respect of spirits and liqueurs whereas the mark in respect of the label covers wines, spirits and liqueurs.

The two container marks as shown in the Registrar's Certificates given in terms of regulation 92(1) of the Trade Marks Act No. 62/1963 each show a pictorial representation of a bottle. In the

case of 80/4468 the bottle shown in the photograph is coloured brown

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and the certificate limits the rights to a container coloured brown. There is no such colour limitation with the other container mark 80/5123 and the pictorial representation merely shows a black and white picture of a bottle of similar shape to the one depicted in 80/44-68. In both these container marks the representation shows a rectangular shaped bottle but depicting only one face of the bottle. There is no indication as to what the other faces look like. Near the neck of the bottle there is a glass boss or seal and if a magnifying glass is used the word Cointreau can be seen moulded into the glass boss. The neck of the bottle is slightly unusual in that The

it has a thickened ring of material about half way up the neck. longitudinal sides of the face of the bottle are also of some

importance as there is a flat surface adjacent to the face of the bottle shown extending from the shoulders down to the base.

The label mark 81/0153 is rectangular in shape with a surrounding border and consists of the name Cointreau prominently displayed in the upper third of the label and placed diagonally across the label against a diagonal banner. There is a great deal of black space on the label 'but the proprietors of the mark when applying to register the mark stated the following: "Applicants undertake that in use the black space appearing in the trade mark will be occupied only by matter of non-trade mark character or by a trade

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mark registered tr the name of the applicants in respect of the same goods or by a trade mark of which the applicants are registered users in respect of the same goods or by a trade mark of a registered user with the consent of the proprietors of such mark." The distinctive features of this mark is therefore the rectangular label with its border together with the word Cointreau placed diagonally across the label against the diagonal banner.

The respondent which has been.operating since 1967 in South Africa carries on business as a dealer and distributor of wines, spirits and liqueurs. In particular the respondent specialises in importing a number of alcoholic products which have their origin in Portugal. One of these imports is the orange based liqueur called Alianca. ' According to the affidavits of Mr. G. Pagan who is the managing director of the respondent, this company has imported Alianca liqueur into South Africa since 1967. Since 1967 the liqueur has used the same shaped bottle and essentially the same label. It has

been sold in South Africa side by side with Cointreau from that early date.

The Alianca liqueur bottle is also rectangular shaped and is .brown with rounded shoulders. Each face of the bottle is identical in

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shape and one face carries a rectangular shaped label. This label has a border round the edges and the word Tripldce in black appears in the upper third of the label placed diagonally across the label against the background of a diagonal gold stripe. There are other words written on the white label such as licor Seco and Alianca. Above this rectangular label on the shoulder and just below the neck is another red coloured label with the words Caves Alianca prominently written thereon. The neck which is fairly short has a gold screw top cap which is of the usual type.

The relief sought by the applicant in relation to all three of its registered trade marks is based on the provisions of section 44(1) (a) and (b) of the Trade Marks Act No. 62 of 1963 (the "Act") and the applicant has made no attempt to rely on "passing-off". The relevant part of these two sub-sections of the Act provides as follows: "44(1) ... the rights acquired by registration of a trade mark shall be infringed by -

(a) unauthorised use as a trade mark in relation to goods or services in respect of which the trade mark is registered, of a mark so nearly resembling it as to be likely to deceive or cause confusion; or

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(b) unauthorised use in the course of trade, otherwise than as a trade mark, of a mark so nearly resembling it as to be likely to deceive or cause confusion, if such use is in relation to or in connection with goods or services for which the trade mark is registered and is likely to cause injury or prejudice to the proprietor of the trade mark."

Dealing firstly with the applicant's trade mark in respect of its rectangular label the respondent admits that its label is used as a trade mark in relation to goods for which the applicant's mark is registered. It denies however that the label so nearly resembles

the applicant's trade mark as to be likely to deceive or cause confusion. In my- view the respondent is correct in that submission.

The type of person who buys liqueurs is likely to have a degree, of sophistication and intelligence. The average purchaser of these

liqueurs is not to be compared with the average purchaser of a commodity such as chewing-gum. See the comments on the latter type

of purchaser by Greenberg JA in American Chewing Products Corporation v American Chicle Company 1948(2) SA 736 AD a t 743" product in this case because of its price immediately suggests a The

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purchaser i s going t o make a closer examination of the l a b e l than i f he were buying a l e s s expensive a r t i c l e where he may not exercise the same degree of c a r e I t has been said time and time again i n

t h e Courts t h a t the average purchaser t o be considered i s n e i t h e r p a r t i c u l a r l y careful nor thoroughly c a r e l e s s . The d i s t i n c t i v e

features of the a p p l i c a n t ' s l a b e l have already been r e f e r r e d t o but I would s t r e s s t h e importance of t h e word Cointreau i n the applicant's l a b e l . The respondent on the other hand uses a s i m i l a r

s o r t of l a b e l but the main distinguishing feature i s the use of the word Trip3J.ce. Apart from the f a c t t h a t the words are q u i t e

d i f f e r e n t i n appearance and in sound, .there i s no s i m i l a r i t y i n t h e i r ideological content i f any such ideology could be derived from these words. There a r e a number of other material differences i n

the two l a b e l s but i t i s not necessary t o deal with these i n d e t a i l , I am s a t i s f i e d t h a t whether section 44(1) (a-) or section 44(1) (b) i s being considered the respondent's l a b e l does not resemble the a p p l i c a n t ' s trade mark. There i s no likelihood of i t deceiving or

causing confusion and the applicant must f a i l on t h i s i s s u e ;

Turning now t o the two r e g i s t e r e d container marks the f i r s t point t o be considered i s t o determine j u s t what has been r e g i s t e r e d . It is

an oversimplification t o say t h a t i t i s the p i c t o r i a l r e p r e s e n t a t i o n of the container annexed t o the R e g i s t r a r ' s c e r t i f i c a t e s . It

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overlooks entirely the relevant provisions of section 20 of the Act which states as follows: "10(1) In order to be registrable in Part A of the ^register a trade mark (other than a certification mark) shall contain or consist of a distinctive mark.

(2) No registration of a container in terms of sub-section (1) shall prevent the bona fide use by others of any utilitarian or functional feature embodied in such container."

It follows from these provisions that the two container marks being registered in Part A of the register are distinctive within the "ambit of the definition of that word as defined in section 12 of the Act. Although distinctive, bona fide users may use utilitarian or

functional features embodied in the container. Giving consideration to the present marks within those parameters it suggests that for a bottle per se to be distinctive the bottle should have an unusual shape or some ornamentation thereon.

Webster & Page "South African law of Trade Marks" 3rd. ed. page 56 state correctly in my view:

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"The test would appear to be whether the features claimed are in the nature of ornamentation or whether they play some role in the functional or utilitarian aspect. ...

The distinctive features claimed may be applied to the container itself ... or they may reside in the shape of the container itself and it is the latter aspect that may involve difficulty. It is for instance, in the case

of a bottle, conceivable that the particular shape may be devised to facilitate holding the bottle (it may comprise flat panels) or it may be devised to strengthen the bottle, and the Registrar's problem will always be to draw a line between those features which are intended and in fact serve only as a form of ornamentation and those which do not." Looking at all the evidence and considering for the moment 80/4468 where the rights are limited to a brown coloured container, this mark .has the following features:

(a) a brown bottle with at least one rectangular face

(b) an oval shaped glass boss placed at the junction of the neck of the bottle and the shoulders

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(c) the longitudinal sides of the face of the bottle show a flat surface extending from the shoulders of the bottle to the base and

(d) the neck has a thickeneoLxing portion half way _ up the neck. See Greenblatt v Hirschson 1958(4) SA 371 AD at 376H; AB. Hjorth & Co. v AB. Optimus 1932 TPD 177 at 185.

In my opinion the first three of these features namely' (a), (b) and (c) above must be considered as striking features of the mark. The

fourth i.e. (d) may or may not be a functional feature but whatever it is I do not consider it to be essential to the mark. If a

comparison is now made between these dominant features and the respondent's bottle, the. only feature common to both is (a) which is the brown bo'ttle with a rectangular face. The other w o are not present and I do not consider there is a likelihood of deception or confusion arising in the mind of a reasonable prospective purchaser who wishes to buy an orange based liqueur. I am reinforced in my

conclusion by the fact that in all the years these products have been marketed side by side there has been no evidence of "any actual confusion ever having arisen. See "Kerly's law of Trade Marks & Trade Names" 11th ed notes 54 and 55 page 428.

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As the learned authors state "the fact that no one appears to have been misled is very material unless satisfactorily explained". this case no satisfactory explanation has been advanced. In .

This conclusion which relates to 80/4468 would apply a fortiori with the other mark 80/5123A number of other arguments were raised but

in the circumstances it is not necessary for me to deal with them.

The consequence of this is that whether section 44(1) (a) or 1(b) is being considered there is no infringement of the applicant's two container marks and in the result the application is dismissed with costs, such costs to include the costs of two counsel.