Rarely do we encounter IP judgments from the Free State so it was inevitable that we would cover this recent judgment of the Free State Division of the High Court, AkzoNobel Coatings International B.V & Another v Dumax Paints (Pty) Ltd and Others.
The facts
AkzoNobel Coatings International B.V. is a Netherlands-based conglomerate that owns the paint brand Dulux. The company, together with its South African subsidiary, AkzoNobel South Africa (Pty) Ltd, instituted legal proceedings against a Bloemfontein-based company called Dumax Paints (Pty) Ltd, a company that sells paint in South Africa under the trade mark Dumax. The proceedings were brought under Section 34 of the Trade Marks Act, covering both trade mark infringement and dilution. They also covered passing-off, as well as certain sections of the Companies Act, that deal with changes of name.
The judgment
In this article, we will cover the most important aspects of the judgment:
A well-known brand
Judge Daffue said this of Dulux, 'Its enormous reputation and goodwill as a well-known trade mark is beyond doubt.'
Many similarities
The judge said that Dumax Paints 'copied an identical image from the first applicant's website onto its website in order to promote its products'.As for Dumax's slogan, 'Painting the future", the judge remarked on the fact that this is rather reminiscent of Dulux's equally anodyne promise, "The future of paint today". As regards devices and colours, Dulux has what's described as a "Flourish device" over the word Dulux, whereas Dumax uses a "Rainbow-like device" with its name. And finally, when it comes to colours there's extraordinary similarity between the two - red, orange, yellow, green and blue.
Passing-off
Dulux alleged that there had been passing-off. The judge made a number of remarks :
- In the case of Dulux, "Reputation is not an issue... the Dulux trade mark has been in substantial use for decades."
- Get-ups count: "The use of different names in otherwise similar get-ups does not necessarily exclude the probability of deception."
- Dumax's intention was quite clear: "They (Dumax) obviously selected the name Dumax in order to sail as close as possible to the wind."
- But it's important to bear in mind that a recent SCA judgment, Dart Industries Inc and Another v Botle Buhle Brands (Pty) Ltd and Another tells us that "The law against passing off is not designed to grant monopolies in successful get-ups...a certain measure of copying is permissible."
- In the present case "The dissimilarities are obvious... I am not convinced that the applicants are entitled to relief based on passing off."
As a result, the passing-off claim failed.
Trade mark infringement
In response to the trade mark infringement claim, Dumax raised the following defence: Dumax is an emerging company, it's recently-established and it is entirely owned by a black person. Dumax went on to claim that AkzoNobel was "muzzling lawful competition", and "trying to squeeze the first respondent out of the market". Dumax described AkzoNobel's conduct as the "antithesis of transformation", and something that had "massive potential to halt the economic transformation".
But the judge wasn't buying it, saying that Dumax "did not explain convincingly why the trade mark Dumax was chosen... or why it had copied an identical image of the first applicant's (AkzoNobel Coatings) website onto its own website."
The judge ended with this:
"Although this is a borderline case, I am not satisfied that the Dumax mark so nearly resembles the registered trademark Dulux as to likely deceive or cause confusion."
Accordingly, there was no trade mark infringement under either Section 34(1)(a) or 34(1)(b).
Dilution
Dilution is dealt with in Section 34(1)(c). With dilution, no similarity in goods is required, the issue is one of blurring or tarnishment. This section aims to protect the commercial value that is attached to the reputation of a trade mark, rather than its capacity to distinguish. The judge said this:
"I am satisfied that this case falls squarely within the parameters of s 34(1)( c)', and that the owner of the company decided to 'sponge' on the well-known Dulux and Maxicover trade marks by 'pirating the product of years of invention' and 'reaping the fruits' sown by the applicants."
In coming to this finding the judge referenced several well-known mark dilution cases such as Societe Des Produits Nestle SA v International Foodstuffs Co and Others 2014 ZASCA 187; (2015) All SA 492 (SCA), and Verimark (Pty) Ltd v BMW AGB 2007 (6) SA 263 (SCA).
In short, the judge concluded that there may have been no trade mark infringement because there was no consumer confusion, but there was trade mark dilution.
Orders
The judge granted AkzoNobel an interdict under Sections 34(1)(c) of the Trade Marks Act, one that prohibits Dumax from infringing the well-known trade mark registration no. 1931/00131 Dulux in class 2, by using in relation to any goods of services an identical or confusing similar name to Dulux, including the name Dumax.
It is therefore safe to say that it's an unusual one this!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
