a)
the PERLAN product is compared with PROMALIN product and it is indicated that PERLAN is a "better product"
than PROMALIN; and
b)
the trade marks PROMALIN and ABBOTT are used without the authority of the first applicant.
2.
Copies of the brochure were handed to the technical manager and two appointed agents of the first respondent at a
training session held at the premises of the first respondent. According to the first respondent the training session was
held for the purpose for acquainting agents and employees of the distributors of PERLAN "with the products which they
are selling, as well as other products on the market".
3.
At a second training session held for one of the retail distributors of another company, Exportos SA (Pty) Ltd, which is
the second respondent's agent in South Africa for the PERLAN product, four copies of the brochure were handed out to
the managing director of the retail distributor and three of the distributor's agents. This session took place at the
premises of the distributor.
4.
At a function held at the Stellenbosch Town Lodge by the second respondent, in respect of which function invitations to
attend had been sent out by the first respondent at the request of the second respondent, a lecture to promote the
PERLAN product was delivered by a representative of the second respondent. On this occasion one copy of the
brochure was handed to a certain Mr Hein Punt of the Agricultural Research Council by a director of the third
respondent.
There is no doubt that the PERLAN product is directly and blatantly compared to the PROMALIN product in the
brochure which the second respondent says consists of summaries and the results of trials conducted by four
independent researchers and ten trials conducted on behalf of the
View Parallel Citation
second respondent and confidential to the second respondent. The trial comprised analyses of the material used in
the PROMALIN product, the effect of these materials on russetting, fruit size, return bloom, as well as other
comparisons. Examples of the comparison between the two products include:
"Perlan compared to Promalin Fruit Weight.
Perlan tended to give larger fruit than Promalin.
Perlan compared to Promalin Quality.
The graph below shows the reduction in russet achieved by both Perlan and Promalin.
In trials Perlan has never been outperformed by Promalin."
I should make it clear that in the brochure, the second respondent in no way attempts to pass its product off as
that of the first applicant, nor does it hold out that PERLAN is identical to PROMALIN, as was the case with the first
respondent in 1997. The second respondent makes it quite clear that the mark PROMALIN is the property of the first
applicant for at the foot of the first page of the brochure the following appears:
"PROMALIN and PROVIDE are registered trade marks of Abbott Laboratories Chicago, USA."
Page 506 of [1999] 1 All SA 502 (C)
The name ABBOTT appears in a number of places in the brochure, but there is no formal acknowledgement that
ABBOTT is a registered trade mark of Abbott Laboratories of Chicago. The second respondent contends that the
brochure is a technical training document intended for internal purposes and the use of the second respondent and
its agents only, and in support thereof I was referred to the brochure, each page of which at the top and at the
foot of each page the legend:
"FAL CONFIDENTIAL For the internal use of FAL and its agents only."
"FAL" is the abbreviation of the second respondent's name.
The first applicant's case is that the mere use of the marks PROMALIN and ABBOTT in the brochure constitute a
trade mark infringement in terms of section 34(1)(a) of the Trade Marks Act 194 of 1993 ("the 1993 Act") and that
by representing that the mark PERLAN is registered in South Africa, the respondents are competing unlawfully with
the applicants. The applicants furthermore contend that the first respondent is guilty of contempt of court because
its involvement in the training sessions and the function in Stellenbosch constitutes a breach of the order of this
court dated 24 November 1997. I shall deal first with this latter contention.
Contempt of court
The first respondent's answer to the contention that it is in contempt of court is a simple one. It is to the effect that
it did not compile the brochure and that it was not responsible for handing out the brochure at the sessions. The
statement in the founding affidavit that "respondents have again compared their PERLAN product to the product
PROMALIN of the applicants" and the statement that "all of the respondents" are infringing the first applicant's
rights in the trade mark PROMALIN do not therefore apply to the first respondent.
From the affidavits filed on behalf of the respondents, it is clear that the brochure was produced by or for the
second respondent in the
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United Kingdom, that the overseas manager of the second respondent brought about ten copies of the brochure to
South Africa and that a total of eight brochures were given out (one to the technical manager and two to appointed