is certainly apposite:
"[12] National Brands charges Blue Lion with having acted fraudulently. One of the bases for making this allegation is
the undisclosed pack design brief. This is used when a manufacturer instructs a designer to design packaging. In
it the manufacturer explains what he wishes to achieve. The design agency
Page 540 of [2006] 3 All SA 529 (T)
then prepares a 'job bag' into which the brief and accumulating information is placed. Having charged fraud,
National Brands challenged Blue Lion to disclose the job bag and give an explanation for its choice of design. In
its answer Blue Lion evaded the challenge, stating that the job bag was of no concern to National Brands. The
only question, it said, was whether the packaging did or did not constitute a passingoff. Fraud or intent were
irrelevant.
. . .
[14]
The facts that a participant in a market chooses to imitate his competitor's getup and then seeks to maintain his
imitation, suggest that he believes and has had confirmation of his belief that imitation confers on him some
advantage that an original getup would not. The inference should properly be drawn that Blue Lion had such a
belief and also knew that the job bag would reveal that it was sailing as close to the wind as it thought it could."
It is true that there are obvious discernible differences between the getup of Smirnoff Ice and Spin and Nordic Ice.
Mr Marcus in his heads of argument described in detail what those differences were. The submission was made that
these were actually "stark differences". I do not agree. My impression is that the respondent set about copying or
imitating the existing marks in an extremely smart fashion. It retained the more dominant features such as the
"eyebrow and shield" main body label being the label that immediately captures the attention. Apart from the
Smirnoff and Nordic Ice labels the other products on the market have distinctively individualised labels and nothing
that even closely resembles that of the Smirnoff products. The "sticker" foot label again is displayed only on the
Smirnoff and Nordic Ice products. The containers used by Nordic are similar in appearance to those used by Smirnoff
despite the fact that its contains 40 ml more liquid. Then again extensive use is made of the very distinctive
platinum label which was unique to the Smirnoff products. One is entitled in considering the likelihood of confusion,
to take cognisance of an applicant's own unique getup (see Flamagas SA v Dayan Gifts CC and another a n
unreported judgment of Boruchowitz J in the WLD dated 1 November 1996). There can be no doubt that before the
appearance of Nordic Ice in its present getup, there was no other competing product with a getup that even
closely resembled that of the Smirnoff brands.
One is constrained to find, I suggest, that the respondent set about in this manner not with the intent to clearly
distinguish between its product and that of the applicants but to rather "confuse and deceive" and this it achieved
by delicately retaining most of the dominant features of the Smirnoff getup. There has certainly not been a serious
attempt to clearly distinguish between its brand and that of the applicants. In applying the test in the PlasconEvans
Paints judgment (supra) and Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd (supra) at 891, I am satisfied that
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 (see also Cowbell AG v ICS Holdings Ltd (supra)).
The other requirements for interdictory relief (being no other remedy available and damages either anticipated or
real) were never in dispute.
I now turn to the relief claimed in prayer 2 of the notice of motion, ie the interdict claimed on the grounds of
unlawful competition. It is the applicants' case that the respondent simply copied and appropriated their getup of
their vodka/lemon spirit cooler and is using that appropriated performance to compete unlawfully with them.
Page 541 of [2006] 3 All SA 529 (T)
I understand passingoff to be a species of the general delict of unlawful competition. There is no numerus
clausus of acts that constitute unlawful competition: among the more wellknown are for instance as had been said,
passingoff; the unfair use of another competitor's fruits and labour (see Schultz v Butt 1986 (3) SA 667 (A),
involving the ButtCat hull designed by Butt and appropriated by Schultz); injurious falsehoods (see Stellenbosch
Wine Trust Ltd and others v Oude Meester Group Ltd and others 1977 (2) SA 221 (C) which involved the marketing of a
perlé wine as a sparkling wine knowing that it fell within the category of perlé wine which was not classifiable as a
sparkling wine in order to benefit from the goodwill attached to that class and to capture some of the trade in that
class). I mentioned the latter two instances to illustrate the point that there are a number of ways in which unfair
competition manifests itself. There does not exist an independent actionable wrong called "unlawful competition".
The relief claimed in prayer 2 of the notice of motion serves to illustrate the point clearly: that relief is exactly what
is prayed for in prayer 1, 1.1 and 1.2, the effect of which is to restrain the respondent from competing unlawfully or
unfairly by employing the applicants' getup. It is needless to order prayer 2.
For the reasons furnished I am satisfied that a case has been made out for the relief claimed in prayer 1 of the
notice of motion. An order in terms of prayer 1, 1.1 and 1.2 of the notice of motion shall accordingly issue:
1.
Interdicting and restraining the respondent from passing off its vodka cooler and any other alcoholic spirit
product as that the applicants or as being connected in the course of trade with the applicants by using in
regard thereto:
1.1
any getup which is identical to the getup used in relation to the applicants' Smirnoff Ice and Smirnoff
Spin products as illustrated in annexure "UDV1" to the affidavit of Solace Kgomoco Tseliso ("the
founding affidavit"); and
1.2
any getup which is likely to deceive or cause confusion due to its similarity with the appearance of the