by depriving him of the profit that he might have had by selling the goods which, ex hypothesi, the purchaser
intended to buy (see AdcockIngram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 437438).
In considering whether the getup is likely or calculated to deceive one must make allowance for the fact that a
certain amount of copying is to be tolerated. In Pasquali Cigarette Co Ltd v Diaconicolas and Capsopolus 1905 TS 472
Solomon J after stating that the defendant's label was undoubtedly to some extent copied from the plaintiff's label,
said:
"If one manufacturer sees that another manufacturer gets up his wares in a form which attracts the public, he is entitled
to some extent to take a lesson from his rival and to copy the getup provided that he 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. So long as it does that a certain amount of imitation is legitimate"
(see also Dunhill v Bartlett and Bickley, 39 (1922) RPC 426 at 438).
M r Marcus, for the respondent, to a large extent argued his case on this judgment. Although not necessarily
conceding that his client was "guilty" of copying, he urged me to find that whatever similarities might exist fell within
the parameters of permissible copying. This of course is not the sole criterion. It remains to be determined whether
the respondent has made it perfectly clear that the article it is selling is not the applicants' but its own.
Although imitation to an extent is permissible, one should be mindful of what was said by Wessels CJ in Policansky
Bros Ltd v L&H Policansky 1935 AD 89 at 98:
"Here [in the field of passingoff by adopting a getup] as a rule the element of dolus prevails, for the getup is seldom,
if ever, accidental: it is generally the result of calculated imitation."
Page 537 of [2006] 3 All SA 529 (T)
It is, however, not necessary for a plaintiff to allege or prove conscious intent to deceive on the part of a defendant
(see Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd 2001 (3) SA 884 (SCA) at 891 [also reported at [2001] 4
All SA 235 (SCA) Ed.)
The guidelines on the comparison of trade marks were summarised by Corbett J (as he then was) in Plascon
Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 642:
"The determination of these questions involves essentially a comparison between the mark used by the defendant and
the registered mark and having regard to the similarities and differences in the two marks, an assessment of the impact
which the defendant's mark would make upon the average type of customer who would be likely to purchase the kind of
goods to which the marks are applied. This notional customer must be conceived of as a person of average intelligence,
having proper eyesight and buying with ordinary caution. The comparison must be made with reference to the sense,
sound and appearance of the marks. The marks must be viewed as they would be encountered in the market place and
against the background of relevant surrounding circumstances. The marks must not only be considered side by side,
but also separately. It must be borne in mind that the ordinary purchaser may encounter goods, bearing the
defendant's mark, with an imperfect recollection of the registered mark and due allowance must be made for this. If
each of the marks contains a main or dominant feature or idea the likely impact made by this on the mind of the
customer must be taken into account. As it has been put, marks are remembered rather by general impressions or by
some significant or striking feature than by a photographic recollection of the whole. And finally consideration must be
given to the manner in which the marks are likely to be employed as, for example, the use of name marks in
conjunction with a generic description of the goods."
(I am mindful of the fact that the PlasconEvans case (supra) dealt with trade mark infringement, but the test for
confusing and deceptive similarity applies equally to the issue here under consideration.)
A person or persons will be deceived into thinking that the respondent's product is that of the applicants' where
there is a material connection between the respondent's product and the applicants' as a manufacturer and
marketer of the product in issue (see John Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd 1977 (3) SA 144 (T) at
150H, 151C; SA Breweries Ltd v Distillers Corporation (SA) Ltd 1973 (4) SA 145 (W) at 160; Juvena Produits de Beauté
SA v BLP Import & Export 1980 (3) SA 210 (T) at 217218). This issue was once more visited by the Supreme Court of
Appeal in Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) [also reported at [2001] 4 All SA 242 (SCA) Ed]
where the following was said at 947H948D:
"The decision involves a value judgment and
'[t]he ultimate test is, after all, as I have already indicated, whether on a comparison of the two marks it can
properly be said that there is a reasonable likelihood of confusion if both are to be used together in a normal and
fair manner, in the ordinary course of business'.
(Smithkline Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham South Africa (Pty) Ltd) v Unilever plc
1995 (2) SA 903 (A) at 912H.) 'Likelihood' refers to a reasonable probability (ibid at 910B), although the adjective
'reasonable' is perhaps surplusage. In considering whether the use of the respondent's mark would be likely to deceive
or cause confusion, regard must be had to the essential function of a trade mark, namely to indicate the origin of the
goods in connection with which it is used (The Upjohn Company v Merck and another 1987 (3) SA 221 (T) at 227EF;
Page 538 of [2006] 3 All SA 529 (T)
Canon Kabushiki Kaisha v MetroGoldwynMayer Inc (formerly Pathé Communications Corporation) [1999] RPC 117
(ED) para [28]). Registered trade marks do not create monopolies in relation to concepts or ideas. More recently this
Court in Bata Ltd v Face Fashion CC and another 2001 (1) SA 844 (SCA) at 850 para [9] pointed out that the approach
adopted in Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 (ECJ) at 224 accords with our case law. There it
was said that the likelihood of confusion must 'be appreciated globally' (cf Organon Laboratories Ltd v Roche Products
(Pty) Ltd 1976 (1) SA 195 (T) at 202F203A) and that the