thereby constituting a pattern of unlawful conduct in terms of which a confusingly or deceptively [similar] getup and
payoff line is adopted to that of the applicant's WHITE STAR product in relation to the same fields of activity with the
clear intention of deriving benefit from the applicant's repute and goodwill in and to its getup and the business
associated therewith to the detriment of the applicant's rights. As a result the respondent's use of the STAR getup is
likely to give rise to deception or confusion amongst a substantial number of interested persons accompanied by a
reasonable apprehension of damages."
However, this is a statement of conclusions rather than evidence of how the two products are likely to be
viewed in the market place.
[16] The only tangible direct evidence adduced in support of those conclusions was in the form of affidavits by six
consumers in Stellenbosch who were interviewed by an attorney, shown the STAR package and asked for
their views as to its provenance. As they had previously been asked whether they consumed maize meal and
knew WHITE STAR super maize meal, as well as how long they had known it and how they recognised it,
there can be little surprise in learning that when they were shown the STAR package they said (with
remarkable unanimity according to their affidavits) that they initially thought it was "associated with White
Star, due to the prominent red star and the colours red, green and white appearing on the packet". Apart
from the criticism to which the use of such standard form affidavits should rightly be subjected,9 i t i s
interesting to note that none of these deponents said that they thought that the package they were shown
was a package of WHITE STAR. That suggests that even though their minds had specifically and
inappropriately been drawn to the latter product they did not think that STAR and WHITE STAR were the
same.
[17] Apart from this Pioneer lead no other evidence of the likelihood of confusion amongst the purchasing public. It
confined itself to assertions that the similarity in packaging "will no doubt result in a diversion of custom from
the applicant" and that the likelihood of deception and confusion amongst the public "is clear and apparent".
That requires an examination of the four features on which it relied. First, there was the use of the colours
red, green and white. Second, was the red star symbol. Third, was the use in bold type of the word STAR and
last the use of the strapline. I remind myself that it is the combination of these in the overall getup that must
be considered. However, it is difficult to do this if one does not examine the individual elements and identify
those that are most distinctive and have the greatest impact on potential customers.10
[18] Having done that, it seems to me that the central feature of Pioneer's getup is the elongated red star and
upper star burst with the words WHITE
Page 290 of [2014] 2 All SA 282 (SCA)
STAR superimposed upon it in green block capitals in a sans serif font. The word STAR is given additional
prominence by the fact that it is printed larger than any of the other wording on the package. It is the impact
of the star with the superimposed words that is the immediately striking feature of the getup. I am reinforced
in that impression by the fact that in many of its marketing items depicted in the papers one finds both the
star and the words WHITE STAR printed in different colours often without any reference to either super maize
meal or the strapline. Thus, there are golf shirts with a red star and blue lettering; a red bowl where the star
and the name are printed in gold and a white one where they are in red; a Tshirt where the star is red and
the printing white and a pen and notebook where both the star and the name are in white. This suggests
that for Pioneer it is the star and the name WHITE STAR that are the key features.
[19] Whilst the STAR packaging also has a red star as its central feature the star is regular in shape and
superimposed on a green circle with a large maize cob prominently printed in green and white in the centre of
the star. The word STAR is printed below the depiction of the star in red block capitals and serif type with a
green shadowing. On any footing it is markedly different from the central feature of Pioneer's getup. One can
readily imagine a customer being offered the one saying: "I want the one with the stars" or "I want the one
with the mealie". It is more difficult to imagine a customer confusing the two.
[20] Pioneer wisely does not seek to rely upon the similarity in names alone. Similarity in name alone, particularly a
descriptive name or a name consisting in a word in common use, is rarely a ground for passing off because of
the difficulty in establishing that it has become distinctive of the business or products of the person using
them and courts will not give what amounts to a monopoly in such words to one trader at the expense of
another.11 But even in the limited context within which it relies upon the use of the word STAR as part of its
overall getup there seem to me to be difficulties with its contentions. The reason is that it is clear, and this is
a central feature of its advertising and marketing, that its product is always marketed as WHITE STAR and
never as STAR alone. The word WHITE is not an inconsequential or immaterial (the words mean the same)
addition to the name. It is an integral part of it and there is no evidence that customers ask for it in an
abbreviated form.
[21] Accepting the difference in context between a trade mark and a passing off case, there are a number of cases
in which courts have had to consider whether one word mark is confusingly or deceptively similar to another.
The matter was dealt with in this Court in Century City,12 where Harms DP said:
"[13] [I]f the appellant's brand name were to be confusingly similar to the registered mark ('be likely to deceive or
cause confusion'), it infringes.
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I am satisfied that the appellant's brand name, in spite of the addition of the word 'apartments', is confusingly
similar to Century City. The point is well illustrated by the facts in Compass Publishing BV v Compass Logistics
Ltd [2004] EWHC 520 (Ch) ([2004] RPC 41). The registered mark was the word 'Compass' in relation, in
simplified terms, to computer and computerrelated services. The defendant traded in the same fields under