On 19 March 2021 the Supreme Court of Appeal handed down a judgment in Koni Multinational Brands (Pty) Ltd v Beiersdorf AG ((553/19) (2020) ZASCA 24).
The issue in this case was whether a shower gel product, Connie Men, passed off the long-established brand Nivea Men. The products' similarities were all in the packaging, with both featuring:
- a colour combination of blue, white and silver;
- an elongated rectangular bottle with a blue base and a silver lid;
- a wave-styled label;
- the trademark in a white font on a blue background with a silver outline; and
- the use of bright green lettering.
To prove passing off, plaintiffs must establish that their mark has a reputation. This proved to be easy for Beiersdorf, given that its Nivea brand had existed in South Africa for many years and that the brand had a 50% market share. Most of the judges (four out of five) had no difficulty in establishing passing off.
However, this case was unusual in that one judge issued a long and robust dissenting judgment. Judge Makgoka concentrated on the facts that:
- the use of the Nivea brand had been inconsistent over the years and that many different colour combinations had been used; and
- the parties' brand names (Nivea and Connie) were different.
The judge remarked that "it would take a particularly careless purchaser" to confuse the products – one who would "have to totally ignore the CONNIE trademark so clearly and prominently displayed on the Koni shower gel".
The dissenting judgment is a reminder that trademark owners should register entire product labels (as well as word marks) rather than rely on the difficult action of passing off.
