REPUBLIC OF SOUTH AFRICA
IN THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
CASE NO. 286/2000
In the matter between
Blue Lion Manufacturing (Pty) Ltd
Appellant
and
National Brands Limited                                                          Respondent
Before:
HARMS, SCHUTZ, ZULMAN, CAMERON  and
MTHIYANE  JJA
Heard:
11 May 2001
Delivered: 18 May 2001
Passing off – wrappings of coconut biscuits – similar get-ups and similarly
lettered marks Tennis and Tea Lovers – intention to take unlawful advantage
of reputation relevant – probability of deception and confusion established –
impermissibility of using unlawful competition to create a passing off out of
something less than a passing off.

______________________________________________________________
J U D G M E N T
SCHUTZ JA:
[1] A  record of 720 pages and heads of argument totalling 57 pages have
been placed before us in order to allow us to decide whether the wrapping of
its coconut biscuits used by one manufacturer passes itself off as the wrapping
of another manufacturer of similar biscuits.  I acknowledge, of course, that an
applicant in a passing off case must prove his reputation and that that may
require a considerable body of evidence, that it behoves him to prove
instances of actual deception or confusion if such evidence may be found
(one instance was raised in this case), and that the applicant sought to prove
fraudulent intent, as it was entitled to do.  But for the rest the case was
essentially one of first impression of the two wrappers.  Perhaps the main
reason why the record became unnecessarily inflated was that the applicant

(the respondent on appeal – “National Brands”) ran another case in tandem
with its passing off case, namely one based on unlawful competition.  This,
despite what was said (if not in so many words) in Payen Components SA Ltd
v Bovic CC and Others 1995 (4) SA 441(A) at 453 G – H concerning  the
illegitimacy of using some general notion of unlawful competition to create
an ersatz passing off with requirements (in the alternative) less exacting than
those required by the common law.  Some of the restraints that the common
law places on the passing off action (the one relevant to this case is the need
to prove the likelihood of deception and confusion) are important in
preventing the creation of impermissible monopolies.  That is all I have to say
on the alternative cause of action, save that it is a pity that the appellant did
not ask for a special order for costs.
[2] The simple principle in passing off is stated by Solomon J in Pasquali
Cigarette Co Ltd v Diaconicolas & Capsopolus 1905 TS 472 at 474 to be

“[N]o man is allowed to pass off his goods as the goods of
another person; no manufacturer of goods is allowed to represent to the
public that the goods which he is selling are the goods of a rival
manufacturer.”
[3] The more detailed rules have been articulated so frequently and
consistently that I need make only the briefest reference to them. When one is
concerned with alleged passing off by imitation of get-up, as is the case in the
matter before us, one postulates neither the very careful nor the very careless
buyer, but an average purchaser, who has a general idea in his mind’s eye of
what he means to get but not an exact  and accurate representation of it.  Nor
will he necessarily have the advantage of seeing the two products side by
side.  Nor will he be alerted to single out fine points of distinction or
definition.  Nor even, as pointed out by Greenberg J (from whom I have been
quoting) in Crossfield & Son Ltd v Crystallizers Ltd 1925 WLD 216 at 220,
will he have had the benefit of counsel’s opinion before going out to buy.

Nor will he necessarily be able to read simple words, as  there are
distressingly many people in South Africa who are illiterate.
[4] However, the law of passing off is not designed to grant monopolies in
successful get-ups.  A certain measure of copying is permissible.  But the
moment a party copies he is in danger and he escapes liability only if he
makes it “perfectly clear” to the public that the articles which he is  selling are
not the other manufacturer’s, but his own articles, so that there is no
probability of any ordinary purchaser being deceived: Pasquali  at 479,
Crossfield  at 221 and Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd
1977(4) SA 434 (W) at 437 F - 438 A.
[5] National Brands has been selling its “Tennis” coconut biscuits since
1911.  In 1990 it altered the shape of its package so that it measured
240x65x40 mm with a net content of 200 gm.  In July 1998 it reverted to the
size which it had used before 1990 – 140x60x60 mm, the weight being the

same, whilst the biscuits were differently packed.  Some months before July
1998 the appellant, “Blue Lion”, had commenced selling its “Tea Lovers”
coconut biscuits under their present get-up, also in a size 140x60x60 mm.  A
feature of all three sealed packets, that is those of National Brands and of
Blue Lion, is that the background is a lustrous white. Representations of the
three packets are appended to this judgment.  During argument attention was
directed to the top of the packet and not the sides, ends or bottom.
[6] On the left hand top of the Tennis packet is  a prominent quadrant of
red white and black, containing a representation of a baker and the name
Bakers in prominent black letters.  On the right hand side, in light brown there
is a representation of a scattering of Baker’s Tennis biscuits, there being more
displayed on the larger than on the smaller pack.  The weight is given at the
left hand foot as 200 g, in gold letters on the smaller pack and in black on the
larger.  The word “Tennis” occupies center stage in large red type.  The letters

are edged in gold.  In both cases the word “Original” appears in much smaller
golden italics above “Tennis”.  Beneath that word appear in even smaller
black print words indicating manufacture from butter, coconut and golden
syrup.
[7] Turning to the “Tea Lovers” packet, it also has a baker logo on the top
left hand side.  It is much smaller than the one on the Tennis packets, and
because of its small size and muted colouring (white and brown bordered in
gold against a white background) its impact is slight.  Within it appears the
word “Kwality”, which is much smaller than its prominent “Bakers”
counterpart.  There is a similar scatter of biscuits on the right hand side.  Their
colour is the same as on the Tennis packet but, of course, they are not
stamped either as “Bakers” or as “Tennis”.  The weight of 200 g is given on
the bottom right hand side in gold letters against a small white inset.  Above
the words Tea Lovers appears the word “Quality” in gold italics, similar in

size and style to the “Original” on the Tennis biscuits.  Below Tea Lovers are
words in small black type reading “Delicious, crisp coconut biscuits”.  The
red letters, again  prominent, and again gilt edged, in “Tea Lovers” are about
the same size as those on the shorter “Tennis” pack face.  The same goes for
the sides but not the face of  the longer “Tennis” pack.  The red letters on the
face of the longer pack (which has a wider face) are slightly larger than the
others.  What differs between the two manufacturers is that the letters in “Tea
Lovers” are more widely spaced than those in “Tennis”.  What is strikingly
similar is that the marks of both manufacturers commence with an identically
shaped red “T” and “e”, gilt edged,  against a lustrous white background.
[8] When one has regard to the whole get-up, including the colours, the
arrangements of matter and the letters, there is an immediate and striking
similarity between the rival packagings, whether one looks at the longer or the
shorter National Brands pack when making the comparison.  That is so if you

compare them side by side.  The same may be said if they are displayed in
quantity on a supermarket shelf.  Indeed when National Brands sent one of
their managers, Mr Pretorius, to inspect and take photographs of supermarket
shelves where the products were to be found in association, it was only after a
time that he noticed that two Tennis packs had migrated into the Tea Lovers
shelf, and one Tea Lovers pack had done the opposite.  When he had set this
right it was pointed out to him that he had overlooked a fourth pack which
was also out of place.  Being supplied with photographs of the display, I can
understand.  The hypothetical buyer will frequently not have the opportunity
of making such a comparison, and as Tea Lovers are usually sold for less than
Tennis biscuits, it is particularly at the this end of the market, where only the
cheaper biscuits may be sold, that deception or confusion may occur.  But not
only there, as this type of biscuits is popular among all classes and the danger
exists even if the two brands are displayed side by side.

[9] It has often been said (eg in Pasquali at 476) that opinion evidence as
to whether a particular packaging is likely to deceive is of little value, as that
is the very question which the court must decide.  But as the immediately
succeeding passage in the judgment of Solomon J in Pasquali shows,
evidence that persons have actually been deceived is of far greater
importance.  National Brands has presented the evidence of one such witness,
Mrs Cassim.  She was a regular purchaser of Bakers Tennis biscuits.  On 3
August 1999 she took what she thought were three  packets of Tennis biscuits
off a supermarket shelf and bought them.  Back home she opened one packet.
The biscuits looked and tasted different and had a different texture.  Only then
did she look at the packet, to see that what she had bought was Tea Lovers.
At her husband’s suggestion she telephoned Bakers.  Efforts have been made
to minimize the effect of this evidence.  It has been suggested that Mrs
Cassim is not the average purchaser postulated by the law, but an abnormally

careless one.  This despite the fact that she works as a qualified pharmacist, a
profession peculiarly alert to correct product identification.  Then it is said,
but she is only one!  Where are all the others?  The answer to this is that
relatively few persons will trouble to go back to the “innocent” manufacturer
over such a small purchase.  Much more likely is it that they will go to the
retailer to obtain satisfaction, or just learn for next time.  Alone she may be,
but I accept that Mrs Cassim did in fact fall into a trap into which many a
careful person may have fallen.
[10] A further factor in the case is that it is common cause that biscuits are
sometimes the subject of impulse buying.  Blue Lion contends that this is a
neutral factor.  I do not agree.  I consider that it enhances the chances of error.
[11] Although innocent passing off is possible, I think Wessels CJ was right
when in Policansky Bros Ltd v L & H Policansky 1935 AD 89 at 98 he said:

“Here [in the field of passing off by adopting a get-up] as a rule
the element of dolus prevails, for the get-up is 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 (13-22);
“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
do’:  see Slazenger & Sons v Feltham & Co (1889) 6 R.P.C. 531 at
page 538 per Lindley L.J.”
See also Lawsa Vol 2 Reissue par 399 footnote 62 and cases there
cited.

[14] The facts that a participant in a market chooses to imitate his
competitor’s get-up 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 get-up 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 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.

[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 EET-SUM-MOR 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 4 ed pp71 et seq), but as National Brands
may yet wish to have these matters tried out, and as they have received only
passing attention in this case, and as there is sufficient evidence to prove
fraudulent design without resort to them, I think it would be wiser for me to
say nothing further about them.
[19] Returning to Tennis and Tea Lovers biscuits, Blue Lion concedes that
there are similarities in get-up, but contends that what distinguishes the one
product is the marks Tennis, Bakers and the Bakerman logo, whilst the other
is distinguished by the marks Tea Lovers and the Kwality Chef Device.  As to

the latter I have already pointed to its apparently designed lack of
prominence, and as to Tea Lovers I think it to have been demonstrated that
there has been an attempt not to distinguish it from Tennis but rather to
confuse the two.  It is the word Tennis that particularly identifies the coconut
biscuit and it clearly forms part of National Brands’ reputation in those
biscuits.  This is not, therefore, a simple case of similar get-ups distinguished
by clear word marks, such as is discussed by Webster and Page South African
Law of Trade Marks 4 ed par 15.26.8.  The most important word mark is also
compromised. That the marks Bakers and the Bakerman logo are also
prominent and important does not detract from that fact, particularly when
one has regard to the low prominence accorded to Blue Lion’s Chef and
Kwality marks.
[20] For these reasons I conclude that the likelihood of deception and
confusion has been established.

[21] The other element of passing off, proof of reputation, does not arise
here.  Blue Lion concedes, as in the light of the evidence it had to, that
National Brands has a well-established reputation in its Tennis biscuits.
[22] Accordingly I am of the opinion that Southwood J, a quo, in the course
of a careful and comprehensive judgment, was correct both in granting the
interdict which he did and in ordering its enforcement pending the appeal.
[23] The appeal is dismissed with costs, including the costs consequent
upon the employment of two counsel.
W P SCHUTZ
JUDGE OF APPEAL
CONCUR
HARMS JA
ZULMAN JA
CAMERON JA
MTHIYANE JA