Court interdicts company from copying its competitor

By 11th Apr 2019 May 2nd, 2019 Commercial Law

On 12 February 2019, the Gauteng Division of the High Court, Johannesburg, interdicted Koni Multinational Brands (Pty) Ltd from competing unlawfully with the Applicant, a German company that operates worldwide, in the manufacture and distribution of personal care products.

Background

The Applicant, Beiersdorf AG is a German company that manufactures and distributes personal care products. In the 1980s it launched a skincare range for men, under the trademark Nivea Men. The range includes a number of products such as shampoos, shower products and facial products.

The Connie brand, that of the Respondent, was launched in 2014 and also includes a men’s skincare range.

Both the Applicant and the Respondent supply shower gel for men. These competing products were the basis of the dispute, with the Applicant alleging that the Respondent was passing off its Connie Body Care Men Active Shower Gel as being that of the Applicant or associated with the Applicant.

Similar looking products

In particular, the Applicant complained that the Respondent was making use of a get-up for Connie shower gel which was likely to cause confusion in the market or confusion regarding the relationship of the product to the Applicant.

Both products had similar colour schemes. On this score, the Respondent claimed that it had undertaken market research when designing the packaging for Connie Men’s Shower Gel and found that men gravitated towards the colour blue – which it found to be the universal colour for men.

The Respondent claimed that its choice of colour had nothing to do with Nivea’s colour scheme and get-up, which colour scheme it argued is used by many other men’s products including Clere, Protex and Vaseline.

The Applicant argued that over time, it had used various logos and get-ups for its men’s shower gel range, and all had used a distinctive blue, white and silver colour scheme. It argued that all the get-ups have common features which have become associated with the Applicant and its products.

Overall, the Applicant complained that the Connie get-up borrowed from the Applicant’s range of distinctive logos and features from both past and present to create a composite which is deceptive to the average consumer.

In South African law, when dealing with allegations of passing off, one uses the test of the ‘average consumer’, who is neither overly careful nor overly cautious when selecting products.

To bolster the Applicant’s argument, it included an affidavit from a consumer who purchased the Connie shower gel thinking that it was a Nivea product. The Applicant alleged that the passing off was deliberate.

The legal issue

The Court held that a measure of copying is permissible but that in such a case it must be made perfectly clear to the consumer that what is being sold are one’s own products and not those of a competitor, this was not the case with Connie shower gel.

The Court considered the strength of the Nivea brand and found the composite created by the Respondent from aspects of the get-ups of the Applicant over time to be deceiving.

Although it is not necessary to establish dolus for passing off, the Court drew the conclusion that the get-up was calculated for the purposes of passing off the Respondent’s shower gel as belonging to the Applicant’s range of products.

Sanction

The Court interdicted the Respondent from competing unlawfully with the Applicant, by passing off its products as being those of the Applicant or associated with the Applicant.

It further directed the Respondent to remove the get-up from all packaging, signage, printed material and websites under its control.

The Respondent was also ordered to bear the costs of the case.