"We have been sued (effectively) by SAB in respect of our use of the Black Label design."
[7] It is common cause that requirements (b)(1) and (b)(2) set out in the Bata judgment (supra) have been
complied with. The use by the respondent of the mark is clearly unauthorised and the respondent makes it
clear that the mark is being used in order to promote the sale of is Tshirts.
[8] The concept of "wellknown" was considered by the Supreme Court of Appeal in McDonald's Corporation v
Joburgers DriveInn Restaurant (Pty) Ltd and another; McDonald's Corporation v Dax Prop CC and another;
McDonald's
Page 459 of [2003] 2 All SA 454 (C)
Corporation v Joburgers DriveInn Restaurant (Pty) Ltd and Dax Prop CC 2 1997 (1) SA 1 (A) at 19F et seq in
relation to the provisions of section 35 of the Act which provides protection for marks which are well known in
the Republic of South Africa under the Paris Convention. The court held that in order to be wellknown, the
reputation of the mark must extend to a substantial number of members of the public or persons in the trade
in question ie a test similar to that in the law of passingoff. This test was accepted in the Triomed case
(supra) as also being the test to establish whether a mark is wellknown for the purposes of section 34 (1)(c).
[9] As to the proof of the contention by the applicant that its mark is well known, the founding papers reveal that
·
The sale in beer products under the Black Label trade mark in South Africa is substantial. The volume of
products sold comprises millions of hectolitres per year. In the financial year 20002001 sales were in
excess of 1,4 billion 340 million bottles. Since 1966 more than 55 million hectolitres of Black Label beer
have been sold.
·
Extensive marketing and advertising campaigns have taken place to promote the Black Label trade
marks. In 1997 in excess of R17 million was spent on advertising. In 1998 in excess of R17 million; and in
each of the years from 1999 to 2001 in excess of R20 million. This has taken place in the form of
television and radio advertising, newspaper and magazine advertisements, pamphlets, brochures,
posters, Tshirts and the like. In addition, major sporting events in South Africa have been sponsored.
Since a mark's reputation may be inferred from evidence such as extensive advertising, I am satisfied that the
applicant has proved that its marks are well known. The respondent also does not dispute this.
[10] That leaves for consideration whether or not the respondent's mark is likely to take unfair advantage of or be
detrimental to the distinctive character or the repute of the applicant's registered mark. Mr Hodes, w h o
together with Mr SholtoDouglas appeared for the respondent, submitted that
(a)
no proof had been advanced by the applicant that the respondent's use of the mark was likely to take
unfair advantage of or be detrimental to its distinctive character or repute; and
(a)
in any event the respondent's conduct was not such which would probably result in an unfair advantage
being taken of the applicant's mark or probably be detrimental to him.
[11] The view generally held is that dilution of a trade mark occurs when it can be said that blurring or tarnishing of
it occurs. Blurring takes place when the uniqueness and distinctive nature of a trade mark is eroded by the
use of the mark in relation to noncompeting goods or services. See in this connection the discussion in
Webster and Page at paragraph 1224 where the example given by Frank I Schechter in an article entitled
"The rational basis of trade mark protection" is cited and in particular the following example:
Page 460 of [2003] 2 All SA 454 (C)
"If you allow Rolls Royce restaurants, Rolls Royce cafeterias, Rolls Royce pants and Rolls Royce candy, in ten
years you will not have the Rolls Royce mark any more."
In the Triomed case (supra) the court stated at 557C:
"Tarnishing occurs where unfavourable associations are created between the well known registered trade mark
and the mark of the defendant. It is an impairment of the wellknown mark's capacity to stimulate the desire to
buy. (See Premier Brands UK Ltd v Typhoon Europe Ltd and Another [2000] All ER (D) 52 at 14.)"
[12] Although no direct evidence was adduced by the applicant as to the likelihood of dilution occurring, Mr
Ginsburg, who together with Mr Michau appeared for the applicant, submitted that the irresistible inference to
be drawn from a simple comparison of the marks, coupled with certain statements or admissions made by the
deponent of the respondent, established clearly that the tarnishing of the applicant's mark was likely to occur.
In the Bata case (supra) the court held that no particulars had been furnished of the respects in which the use
of the mark would be likely to take unfair advantage of or be detrimental to the distinctive character or repute
of the appellant's trade mark and Mr Hodes submitted that some form of evidence, similar to that required in
the traditional trade mark infringement cases, ought to have been provided from members of the public in
order to bring the application home under this subsection.
[13] In a manner similar to the manner in which an innuendo is pleaded in defamation proceedings, it was
submitted on behalf of the applicant that the words used on the respondent's Tshirts will convey the
following messages to reasonable members of the public and in particular to purchasers of the applicant's
products:
13.1 That the applicant has, in the past, exploited and continues deliberately to exploit black labour and is
guilty of racial discrimination. The underlying message is likely to be racially inflammatory.
13.2 The words used conjure up South Africa's racist past by falsely attributing to the applicant the "Lusty"
and "lively exploitation of Black Labour since 1652".