'global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the
overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
Compare Smithkline at 910BH and Canon paras [16][17]'"
(see also Miriam Glick Trading (Pty) Ltd v Clicks Stores (Transvaal) (Pty) Ltd and others 1979 (2) SA 290 (T) and Capital
Estate & General Agencies (Pty) Ltd and others v Holiday Inns Inc and others 1977 (2) SA 916 (A) at 929CD).
Proof of actual deception will afford very strong evidence that the resemblance the marks in question have is so
close as to be likely to deceive. Where there is a lack of cogent evidence of actual deception as is here the case, Mr
Marcus argued that it was probably fatal to the applicants' case. In this regard reference was made to Kerley's The
Law of Trade Marks and Trade Names (12ed) at 456 paragraphs [17][29] where it is stated that:
"Proof of actual deception, if the mark is in the opinion of the tribunal likely to deceive or if it has been substantially
copied from another, is unnecessary. Nevertheless, if one or more cases of actual confusion are made out to the
satisfaction of the court, this will, of course, afford very strong evidence that the resemblance the marks in question
(have) is so close as to be likely to deceive. The absence of evidence of actual deception is a circumstance which varies
greatly in weight according to the nature of the case . . . Nevertheless, where the marks have been circulating side by
side in the market where deception is alleged to be probable, the fact that no one appears to have been misled is very
material, unless satisfactorily explained" (see also Bayerishe Motoren Werke Atktiengesellschaft and another v
Individual Car Sales (Pty) Ltd and another 1997 BIP 350 (T) at 359GH and Benson & Hedges (Pty) Ltd v B&H Photo &
Video CC t/a B&H Photo/Digital 1998 BIP 358 (T)).
Although proof of confusion would certainly bolster an applicant's or plaintiff's case, it is not a requirement. A
likelihood of confusion would ordinarily suffice. Each case has to be decided on its own facts. What was said by
Corbett J in the PlasconEvans case (supra) at 643B is of importance since it explains the approach to be adopted in
matters of this nature. I quote:
"Consequently, a potential customer, with no specialised knowledge in this field and an imperfect recollection of
appellant's trade mark, would tend to recall it as 'Micasomething' or 'a word starting with mica'. At any rate, in my
view, a substantial number of such customers would probably have this type of recollection. A person with such an
imperfect recollection who went say, to a hardware store to purchase appellant's product and encountered, or was
offered, a tin of Mikacote could well, in my opinion, be deceived into thinking that this was the product he was seeking;
and it is likely that this could occur on a substantial scale."
Finally it should be borne in mind that although it is not necessary for a plaintiff to establish that the defendant
consciously intended to deceive the public the question:
". . . why the defendant chose to adopt a particular name or getup is always relevant. It is a 'question which falls to be
asked and answered': see Sodastream Ltd v Thorn Cascade Co Ltd [1982] RPC 459 at 466 per Kerr LJ. If it is shown
that the defendant deliberately sought to take the benefit of the plaintiff's goodwill for himself,
Page 539 of [2006] 3 All SA 529 (T)
the court will not 'be astute to say that he cannot succeed in doing that which he is straining every nerve to do': see
Slazenger & Sons v Feltham & Co (1889) 6 RPC 531 at 538 p e r Lindley LJ" (quoted by Schutz JA in Blue Lion
Manufacturing (Pty) Ltd v National Brands Ltd (supra) at 891).
Although the applicants did not allege fraud on the part of the respondent, they did express their surprise at the
respondent's ability to develop their new product and to introduce it to the market within a period of no more than
three to four weeks. It is common cause that the respondent undertook no prelaunch market research and hardly
any prelaunch advertising and promotion. The respondent explained that since its withdrawal of PO10C, as early
as 2001, it was looking for opportunities to enter the RTD market. It saw this opportunity when it learned about the
possible withdrawal of Smirnoff Ice as this would lead to a gap in the market which it could fill. The deponent to the
respondent's answering affidavit testified that:
"After identifying this market opportunity, the respondent instructed its marketing department to revisit the concept of a
Nordic Ice product in the RTD Market, which was a concept that the respondent already had on the drawing board
together with other RTD concepts."
The respondent went on to explain that it would have been assisted in this regard "by its own established 'mother'
brands such as Nordic Ice". I have explained that the respondent's Nordic Ice brand bore no resemblance
whatsoever to the Nordic Ice product that was subsequently launched, not in its getup, contents or appearance
and presentation.
It should be borne in mind that the respondents not only knew that Smirnoff Ice was going to be withdrawn but
knew that it was going to be replaced by another very similar product. Of course it was entitled to take advantage
of whatever opportunities then arose. I accept as I am obliged to, the evidence of the respondent's Brand Manager
that she did not see the appearance of Smirnoff Spin during September 2002, and that she saw it for the first time
on 14 October 2002 when it was launched. However, she does not say that she never saw Smirnoff Ice before
September 2002. There can be no doubt that she had, given the notoriety of the mark and the prominence of that
product in the market. The temptation to imitate, to an extent, the very appearance or the getup of its adversary's
very successful product would certainly have been extremely great. Maybe it is for this reason that the respondent
relies so heavily on the Pasquali Cigarette Co Ltd v Diaconicolas & G Capsopolus (supra). It is important to have regard
to the fact that the respondent does not explain how the getup of its product was developed. It is common cause
that this took place within something like 3 weeks. The almost indecent haste in "conceptualising and finalising the
intrinsics and extrinsics" (see the respondent's replying affidavit) of its Nordic Ice spirit cooler and the vast
difference in appearance between its own established mother brand and the new product, and the remarkable
similarity between that new product and the getup of the highly successful Smirnoff Ice and that of its expected
substitute and the development of the mark eventually decided upon, was conveniently not dealt with. The
judgment of Schutz JA in the Blue Lion Manufacturing v National Brands judgment (supra) at paragraphs [12] and [14]