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[3] The packaging in both cases has white as the background colour and the writing and symbols in either green
or red. Both depict a red star. The star is larger and more prominent in the case of WHITE STAR and situated
slightly above the centre of the package, with one elongated point at the base and a burst of smaller stars
rising from it at the top. The words WHITE and STAR are printed over the star in green block capital letters
and a plain sans serif font, with STAR in larger type than WHITE. Below the star are the words "SUPER MAIZE
MEAL" in green type and block capitals, but printed in a much smaller font than the name. Below that in turn,
in red block capitals, but fairly narrow type, are the words "THE CLEVER CHOICE" and at the bottom of the
package there is a green rectangular block in which, in white block capital letters, appear the words "MOVE TO
THE TASTE".1 The package depicted above is a 10kg pack, but Pioneer also packages the product in 25kg,
5kg, 2.5kg and 1kg packs.
[4] In the case of STAR, the red star is superimposed on a green circle in the upper half of the pack. It is
symmetrical and has a maize cob (mealie) printed on it in green and white. The word STAR is printed
immediately below the star and slightly below the midpoint of the pack, in red block capitals and a slightly
fancy serif font with green shadowing. The words "SUPER MAIZE MEAL" appear below that in green block
capitals, and below that, in red block capitals, appears the slogan "THE PEOPLES CHOICE".2 At one stage the
lower portion of the pack bore a symbol in accordance with the regulations governing the marketing of maize
products, but that symbol now appears adjacent to the star. The same symbol appears in the top corner of
the WHITE STAR package. The package depicted above is a 12.5kg pack and it appears that there are also
25kg, 50kg and 80kg packages.
[5] Pioneer identifies four major aspects of this getup that it says will, in conjunction with one another, lead to
the deception of customers and confusion in the market place. First, is the use of the same three colours,
white, green and red. Second, is the prominent use of the star symbol in red. Third, is the equally prominent
use of the name STAR capitalised in red lettering. Fourth, is the use of the slogan "THE PEOPLES CHOICE" as
opposed to its own slogan "THE CLEVER CHOICE". It contended that the cumulative effect of these was to
make the two products confusingly similar and was likely to lead to confusion in the marketplace. In doing so,
it relied almost entirely on the visual impact of the respective getups asserting simply that the continued use
of the star device "will no doubt result in a diversion of custom from the Applicant" and that the likelihood of
deception and confusion among the public "is clear and apparent".
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[6] Bothaville Milling's response, substantiated by evidence, is that the combination of the colours white, green
and red in the packaging of super maize meal is commonplace and used by a number of prominent brands. So
too is the name STAR, either with or without a star symbol. As to the two slogans it says that they are
linguistically, aurally and visually different. It, accordingly, discounts any prospect of customers being deceived
or confused. In support of this it points out that it has been marketing its STAR product in this getup since at
least 2003. In that period, whilst Pioneer was on its own version aware of the STAR product and monitoring
the market closely, it failed to identify a single incident of confusion or deception. Bothaville Milling,
accordingly, attributes the present proceedings to a desire to stifle legitimate competition.
[7] There is no dispute over the relevant legal principles. Passing off occurs when A represents, whether or not
deliberately or intentionally, that its business, goods or services are those of B or are associated therewith. It
is established when there is a reasonable likelihood that members of the public in the marketplace looking for
that type of business, goods or services may be confused into believing that the business, goods or services
of A are those of B or are associated with those of B.3 The misrepresentation on which it depends involves
deception of the public in regard to trade source or business connection and enables the offender to trade
upon and benefit from the reputation of its competitor. Misrepresentations of this kind can be committed only
in relation to a business that has established a reputation for itself or the goods and services it supplies in
the market and thereby infringe upon the reputational element of the goodwill of that business. Accordingly,
proof of passing off requires proof of reputation, misrepresentation and damage.4 The latter two tend to go
hand in hand, in that, if there is a likelihood of confusion or deception, there is usually a likelihood of damage
flowing from that.
[8] As regards Pioneer's reputation in WHITE STAR, the product was introduced to the market in 1999 as a
vitamin enhanced form of maize meal. Since then it has been very successful. In volume the tonnage sold had
increased from some 16 000 tons in 1999 to a little under 400 000 tons in 2010, the year before these
proceedings were launched. In 2010, a survey of top brands in South Africa showed that it and one other
were the two topranked brands for super maize meal. However, that is not the only critical date for the
purposes of establishing its reputation in its getup. In order to show passing off it must show that it enjoyed
the reputation that is under attack both at the time when Bothaville Milling entered the market with its getup
and at the time of the misrepresentation that it seeks to interdict.5
[9] Two possible dates present themselves insofar as the first relevant date is concerned. They are March 2001,
when Bothaville Milling introduced its