13 October 2002.)
The applicants responded to these allegations in the replying evidence. Mr Marcus urged me not to consider these
allegations as it constituted new matter which should have been contained in the founding affidavits. I do not
agree. It was given in direct response to the allegations, albeit mostly hearsay and speculative, which are
contained in the answering affidavit.
Page 535 of [2006] 3 All SA 529 (T)
The deponent May in reply repeated that although Smirnoff Ice was extremely successful, competitors were
closing the gap. It was decided to develop a new product which would retain all the successful elements of Smirnoff
Ice and at the same time, create a broader market. At paragraph 5 of his replying affidavit May testified that:
"5.2
It [Smirnoff Spin] has been designed to appeal to all existing Smirnoff Ice consumers and attract new male
consumers.
5.3
Developed after months of extensive consumer research Smirnoff Spin builds on successful elements of its
winning predecessor.
5.4
Smirnoff Spin is a natural progression of Smirnoff Ice.
5.5
We are not giving up on Ice, merely building on its success."
The applicants also drew attention to the sales and stock figures of Smirnoff Ice during the period
August/September 2002 (at the time of the launch) to February/March 2003: sales of some five and a half million
bottles and the stock in that period decreased from almost 600 000 bottles to 94 200 bottles at the end of that
period.
On the evidence I would suggest that a finding is warranted that Smirnoff Ice retained a residual renown as
denoting the applicants' goods, sufficiently so as to warrant protection. There is no evidence to support a finding
that the applicants gave up on Smirnoff Ice or that it was abandoned and discontinued.
The position in regard to Smirnoff Spin is somewhat different. The respondent claims that Smirnoff Spin had at the
time of the launch not acquired any repute, and not having a reputation, there was nothing which warranted
protection. Although Smirnoff Spin was launched 9 days after Nordic Ice it does not necessarily follow that it was
without a reputation in its getup at its launch. Prelaunch publicity and other activities such as presentations and
introductions to the media and the trade could result in the acquisition of a reputation. The common cause or at
least undisputed evidence was to the affect that the prelaunch activities commenced as early as June 2001 and
culminated with its launch on 5 October 2004. The applicants explained in detail what these activities consisted of. I
do not intend repeating that evidence. Suffice it to say that it consisted of numerous presentations to members of
the public, identified as being representative of their target market; presentations and demonstrations with mock
ups of the products and simulated tests; presentations of the proposed product with major retailers; extensive
market research; printed advertising; training workshops for their sales force; formal trade launch functions; a
media launch function; a television advertising campaign and general but extensive advertising and promotion.
These activities were carried nationally and included all the major cities and centres. At the time of the launch of this
application the applicants had spent in excess of R10 million in promoting and advertising Smirnoff Spin.
In the case of Pepsico Inc and others v United Tobacco Co Ltd 1988 (2) SA 334 (W) Van Niekerk J endorsed the view
expressed by Webster and Page South African Law of Trade Marks at 416 (citing the judgment of My Kinda Bones Ltd
v Dr Pepper's Stove Co Ltd 1984 FSR 289 (339342):
". . . that the reputation acquired by prelaunch publicity of a business, in that case of a steak house, was enough to
found an action for passingoff even though trading had not yet commenced."
(The Pepsico judgment (supra) was referred to in Kellogg Co and another v Bokomo Cooperative Ltd 1997 (2) SA 725
(C) but neither followed nor dissented from.)
Page 536 of [2006] 3 All SA 529 (T)
Whether a reputation was acquired is a question of fact and has to be resolved with reference to the available
evidence. I have referred to the very detailed evidence which was presented by the applicants. If one has regard to
the nature, intensity and magnitude of the prelaunch activities and the scale of publicity surrounding the launch of
their product, one is almost forced to find that Smirnoff Spin acquired a reputation even before it was formally
launched, and to find also a reputation entitled to protection.
Mr Bester, on behalf of the applicants, advanced a further ground or basis for finding a reputation in Smirnoff Spin.
The argument is based on the fact of the incorporation in and the continuation of its distinctive Smirnoff Ice getup
in the getup of Smirnoff Spin in accordance with the applicants' planned extension of its Smirnoff Ice vodka/lemon
spirit cooler product. In view of the conclusion already reached it is not necessary to express an opinion one way or
the other in regard hereto.
I now turn to the question whether or not the getups are "confusingly or deceptively similar".
I should preface my discussion of this topic with reference to the learning to be found in a number of judgments
where this issue was previously considered.
The plaintiff must prove that the defendant's use of the feature concerned was likely, or calculated, to deceive,
and thus cause confusion and injury, actual or probable, to the goodwill of the plaintiff's business, as, for example,