seldom, if ever, accidental: it is generally the result of calculated imitation."
[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 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 passing off. Fraud or intent were irrelevant.
[13] Now, while it is perfectly true that in the end the question is whether there is a passing off, an allegation of
fraud is not so lightly flicked aside. Our courts, like the English Courts have frequently pointed to the pertinence
of the enquiry. As it was recently expressed by Millett LJ in Harrods Ltd v Harrodian School Ltd [1996] RPC 697
(CA) at 706 (1322):
"Deception is the gist of the tort of passing off, but it is not necessary for a plaintiff to establish that the
defendant consciously intended to deceive the public if that is the probable result of his conduct. Nevertheless,
the question why the defendant chose to adopt a particular name or get up is always highly relevant. It is 'a
question which falls to be asked and answered': see Sodastream Ltd v Thorn Cascade Co. Ltd. [1982] R.P.C.
459 at page 466 per Kerr L.J. If it is shown that the defendant deliberately sought to take the benefit of the
plaintiff's goodwill for himself, the court will not 'be astute to say that he cannot succeed in doing what which he
is straining every nerve to
Page 240 of [2001] 4 All SA 235 (A)
do': see Slazenger & Sons v Feltham & Co (1889) 6 R.P.C. 531 at page 538 per Lindley L.J."
View Parallel Citation
See also LAWSA Vol 2 Reissue paragraph 399 footnote 62 and cases there cited.
[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.
[15] The basis for drawing this inference is strengthened by Blue Lion's explanation or lack of explanation for the
manner in which it changed the wrapping of its Tea Lovers biscuits, in 1998, from that formerly in use to the
one in issue in this case. The old packet had a white background and was extensively bedizened with mauve,
blue and yellow leaves. Biscuits appeared on the left hand side, in a row. Superimposed on them was a small
baker logo enclosing an even smaller "Kwality" mark. Two cups filled with tea were depicted on the right hand
side together with a red rose. The word "Tea" was in blue, and "Lovers" in red. There was also a small coconut
label. The print differed from what was later used. The whole impression created is totally different from that
created by the packaging before us. Mr Tayob, the managing director of Blue Lion, explains the reasons for the
change:
"It will be noted from [the old pack] that the packaging that the Respondent used was 'busy' in nature and by
this I mean that it contained a wide variety of colours. This made it very difficult to distinguish the Respondent's
KWALITY and CHEF DEVICE trade mark and also its TEA LOVERS trade mark. These trade marks 'got lost' in
the packaging. It was on the advice of Ian Oberem, the Respondent's National Sales and Trade Marketing
Manager, that it was decided to use a simple uncomplicated and bland background."
[16] This explanation is sheer evasion. It may explain why the old design was abandoned. It does not explain why
the new one identified so closely with that of National Brands. I would add that the new packet does little, if
anything, to enhance the trade marks Kwality and the Chef Device, when compared with the old. These marks
still sound pianissimo. And they still, in the words of Mr Tayob, "get lost".
[17] National Brand's case goes further. It contends that Blue Lion has been engaged in a campaign of passing off
other types of biscuit produced by it as being the corresponding products of National Brands. The dispute over
one type of biscuit (National Brands' "Romany Creams" versus Blue Lion's "Romantic Dreams") has already
passed through this Court. Judgment was given against National Brands on 16 March 2001. The case had been
based purely on trade mark infringement. When the papers in the present appeal were prepared the Romany
Creams appeal had not yet been argued, and reference was made to it as another example of Blue Lion's
alleged filching. It is not for
View Parallel Citation
me to decide the Romany Creams case, but I would have thought that passing off might have been a better
horse to ride than trade mark.
Page 241 of [2001] 4 All SA 235 (A)
[18] National Brands complains that there are further instances where Blue Lion has been passing off its products
as being those of National Brands', namely its EETSUMMOR shortbread biscuits and its Lemon Creams. It
seeks to rely on these practices as demonstrating the existence of a fraudulent design or system. Such
evidence is potentially admissible (see Hoffmann and Zeffertt The SA Law of Evidence 4ed at 71 et seq), but as