VDL DLAMINI INC.
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Shoprite Checkers v Pick ‘n Pay.:
Shoprite Checkers (“Checkers”) sought an interdict restraining Pick ‘n Pay from passing off its Crafted Collection products as that of Checkers or as being connected in the course of trade with Checkers.
During 2022, Pick ‘n Pay launched a premium range of products called Crafted Collection. Pick ‘n Pay adopted the blue colour for various reasons including that there existed the market trend of using blue for premium products.
Pick ‘n Pay contended that its products, while in competition with those of Checkers, do not in any way create consumer or public misrepresentation to the detriment of Checkers. Pick ‘n Pay further contended that Checkers seeks merely to stifle competition and strengthen its monopoly in the market.
In Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc and Others (which is cited in this judgement) passing off is defined as follows: “The wrong known as passing- off consists in a representation by one person that his business (or merchandise, as the case may be) is that of another, or that it is associated with that of another, and, in order to determine whether a representation amounts to a passing off, one enquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of the one is, or is connected with, that of another.”
The requirements of passing-off are well established. In Pioneer Foods (Pty) Ltd v Bothaville Milling (Pty) Ltd (which is also cited in this judgement), the Court held passing-off requires proof of reputation, misrepresentation, and damage.
In the current case, the Court found that Checkers provided extensive evidence of the success of its marketing campaigns and that Checkers had established significant goodwill and a valued reputation following the launch of the Forage and Feast range.
The Court held that the respective products are identical or comparable. Both product lines are competing ranges in the same premium consumable market. The Court was of the view that the get-ups are visually, and conceptually similar. The products are also marketed and displayed in a similar manner. The Court confirmed that evidence of actual deception or confusion is not essential to succeed in passing-off cases
The Court held that it is highly probable that consumers will perceive both products as coming from the identical manufacturer. That it is normal for parties to stock products from third party suppliers, hence there is a reasonable inference to be made by the consumer that the two ranges could emanate from the same third party.
Given Checkers’ substantial reputation in the Forage and Feast range, and the fact that its reputation already existed at the time that Pick ‘n Pay introduced its product, the Court found that Pick ‘n Pay’s get-up, when used in relation to its range amounts to passing off.
Pick ‘n Pay has been interdicted and restrained from passing off its Crafted Collection products as those of Checkers or as being connected in the course of trade with Checkers. Pick ‘n Pay intends to appeal this decision.
If you are wondering whether the Pick ‘n Pay and Checkers core brands are not sufficient to distinguish the respective ranges, the Court found that the Pick ‘n Pay mark is given low prominence in the Crafted Collection range. The Court took the view that the lack of prominence of the Pick n Pay logo demonstrates an attempt not to distinguish its products from Forage and Feast. The name Crafted Collection is also not prominently featured on the label rather the colours and typefaces dominate the appearance on the label. Checkers’ get-up excludes the Checkers mark. So, it was not a case involving two competing core brands.
November 2023