Court name
Supreme Court of Zimbabwe
Case number
SC 130 of 2002
Civil Appeal 113 of 2001

Zimbabwe Gelatine (Pvt) Ltd. v Cairns Foods (Pvt) Ltd. (13/01/01) (SC 130 of 2002, Civil Appeal 113 of 2001) [2003] ZWSC 130 (19 March 2003);

Law report citations
Media neutral citation
[2003] ZWSC 130













DISTRIBUTABLE
(110)


Judgment
No. SC 130/02


Civil
Appeal No. 113/01








ZIMBABWE
GELATINE (PRIVATE) LIMITED v





CAIRNS
FOODS (PRIVATE) LIMITED








SUPREME
COURT OF ZIMBABWE


CHEDA
JA, ZIYAMBI JA & GWAUNZA AJA


HARARE,
OCTOBER 7, 2002 & MARCH 20, 2003








A
P de Bourbon SC
,
for the appellant





J
C Andersen SC
,
for the respondent





CHEDA
JA: Cairns Foods (Private) Limited, the respondent, and Zimbabwe
Gelatine (Private) Limited, the appellant, are both manufacturers
of
dog food. The respondent manufactures Wrights Kibbles Instant Mix,
while the appellant manufactures Hwau-Hwau Carnivora Kibbles
Dog
Food. Both parties pack their products in plastic bags of different
sizes and sell to the public through shops and supermarkets
throughout the country.





The
respondent applied to the High Court for an order in the following
terms:





“IT
IS ORDERED THAT:






1. The respondent (now the
appellant) is hereby interdicted from using the trade mark Kibbles or
any other mark, trading name, label
or get-up likely to result in the
goods and/or business of the respondent being taken to be those or
that of the applicant (now the
respondent) without clearly
distinguishing such goods and/or business from those or that of the
applicant.





2. The
respondent is interdicted and restrained from infringing the
applicant’s trade mark 1566/95 Kibbles or any other words which
so
nearly resembles 1566/95 Kibbles as to be likely to deceive or cause
confusion on or in relation to any of the goods for which
the mark is
registered.





3. The
respondent deliver up to the applicant for obliteration of the mark
Kibbles, all packaging, labels, wrapping, advertising matter
and
other documents in the possession of the respondent bearing the trade
mark Kibbles.





4. The
cost of this application be borne by the respondent.”









The
application was granted with costs, but the counter application by
the appellant to expunge the trade mark granted to Cairns Foods
on
13 August 1996 as number 1566/95 failed and was dismissed. The
appellant now appeals against that decision.





It
is common cause that both parties make their products for dogs in the
form of pellets. These products are often placed close
to each
other in the shops where they are displayed for sale to the public.
The packaging used by the appellant has a predominant
white colour on
a plastic bag, with a blue picture of a dog. The plastic bag is
dominated by red capital letters inside a square
of blue smaller
letters. On the upper half of the plastic bag are the words
“Hwau-Hwau Carnivora”, and below the picture of
the dog the most
prominent words are “Kibbles Dog Food”. The word “Kibbles”
appears twice on the front of the plastic bag.
The reverse side is
printed in blue letters only.





The
respondent’s packaging is also a plastic bag, mainly yellow, red
and brown against a white background. The word “Kibbles”
is
printed in large red letters on the upper part of the bag. Below it
are pictures of dogs’ heads over a square of yellow and
brown.
Below the square are the words “Instant Kibbles” in white. The
other side of the bag is blank.





The
starting point in this appeal is that the word “Kibbles” is
registered as the respondent’s trade mark. It was registered
as
number 1566/95.





It
is common cause that once a trade mark is registered it gives the
registered owner of the trade mark an exclusive right to use
it
concerning the goods for which it is registered. (See Kerly’s
Law
of Trade Marks and Trade Names

12 ed at p 261).





The
purpose of registration of a trade mark is that no other party should
use the trade mark. Kerly’s
Law
of Trade Marks and Trade Names

at p 12 para 2:08 says:





“The
function of a trade mark is to give an indication to the purchaser …
of the trade source from which the goods come or the trade
hands
through which they pass on their way to the market.”





It
follows that once a trade mark is registered, persons who purchase
goods with the registered trade mark associate those goods with
the
owner of the trade mark.





For
that reason, any use of the trade mark on goods other than those of
the owner of the trade mark is an infringement generally
referred to
as “passing off”. It amounts to a misrepresentation. I quote
once more from Kerly’s
Law
of Trade Marks and Trade Names

at p 261:





“Section 4(1)
gives to the registered proprietor of a valid mark (other than a
certification trade mark) the exclusive right to
the use of that mark
in relation to those goods or services for which it is registered.





In
addition, ‘without prejudice to the generality of’ the words in
the subsection granting the exclusive right, that right is
deemed to
be infringed by any person who, not being the proprietor or a
registered user, uses a mark identical with or nearly resembling
it
in the course of trade (or for services ‘in connection with the
provision of any services’), in relation to any goods (or
services)
in respect of which it is registered and in such manner as to render
the use of the mark likely to be taken either;






(a) as being used as a trade (or
service) mark or






(b) (for trade marks) in a case
in which the use is use upon goods or in physical relation thereto or
in an advertising circular or
other advertisement issued to the
public as importing a reference to some person having the right
either as proprietor or as registered
user to use the trade mark or
to goods with which such a person as aforesaid is connected in the
course of trade.”






Our
own Trade Marks Act [
Chapter 26:04]
(“the Act”) provides as follows in s 6:





“6. No
action for infringement of unregistered trade mark





No
person shall be entitled to institute any proceedings to prevent, or
to recover damages for, the infringement of an unregistered
trade
mark.





Provided
that nothing in this Act shall affect the right of any person, at
common law, to bring an action against any other person
for passing
off goods or services as the goods or services of another.”





This
section means that a person who believes his rights have been
infringed can either proceed in terms of the Act if he has a
registered
trade mark, or at common law in an action for passing off.
In this case the respondent complained of both passing off and
infringement
of a registered trade mark.





As
far as the trade mark in question is concerned, the appellant’s
packaging displays the word “Kibbles” in large and distinct
red
capital letters, just as the respondent does on its packaging. The
word “Kibbles” is repeated on the reverse side of the
appellant’s
packaging in blue letters. It is therefore easy for a customer to
mistake the appellant’s product as being either
the same, or
related to, or from, the same source as that of the respondent’s
product.





The
main elements of passing off are misrepresentation, damage and
goodwill. All the three were sufficiently dealt with by the
court
a quo.
Figures were given on the sales and the amount spent on advertising
the respondent’s products. Evidence was led of a customer
who was
looking for the respondent’s product but ended up buying the
appellant’s product, and then complaining to the respondent
about
what she had purchased. The above shows that the respondent has
established a certain amount of goodwill regarding its products,
and
that people are confusing the appellant’s product with that of the
respondent’s. The elements of both passing off and infringement
of a trade mark were proved.





It
was argued by the appellant that the delict of passing off is not
intended to stifle competition but unfair competition based
on
representing one’s goods as being those of another. I agree.
Competition in the manufacture of similar or almost similar
dog food
would be no problem in my view. What is wrong in this case is for
the appellant to manufacture a similar product and then
give it the
same name as that of the respondent’s product. No reason was
given for the appellant’s use of the name “Kibbles”.
Even if
the products were the same, as they are both dog food in the form of
pellets, the appellant could have used a different
name for its
product.





It
was also argued that the word “kibbles” is descriptive and no one
person should have the sole right to the use of that word.
In the
dictionary the meaning given as “to crush into fine pieces” is
not the only one. The word has several other meanings
related, for
example, to a drum and rope used in mining. It is not strictly
descriptive of the dog food manufactured by the parties.





The
argument by the appellant that the respondent’s product is more
expensive compared to that of the appellant does not assist
or change
the position. The effect will still be the same if some customers
are led to believe that there is also a cheaper type
of Kibbles on
the market and turn to buy those. That does not mean to them that
the cheaper Kibbles are from a different manufacturer.





The
appellant conceded that the term “kibbles” describes the process
rather than the end product. The fact that the appellant
has been
using the word since October 1995 is no excuse to continue the
unlawful use of a registered trade mark.





The
appellant also argued that there should have been a disclaimer in the
registration of the trade mark. That was rejected by the
Registrar
of Trade Marks.





Section 17
of the Act reads as follows:





“17 Registration
subject to a disclaimer





(1) Subject
to subsection (2) if a trade mark –





(a) …






(b) contains matter common to the
trade or otherwise of a non-distinctive character the Registrar, in
deciding whether the trade mark
shall be entered or shall remain in
the Register, may require, as a condition of its being on the
Register, that –






(1) the proprietor shall disclaim
any right to exclusive use of any part of the trade mark or to the
exclusive use of all or any portion
of such trade mark as aforesaid,
to the exclusive use of which the Registrar holds him not to be
entitled; or







(2) the proprietor shall make
such other disclaimer as the Registrar may consider necessary for the
purposes of defining his rights
under the registration.”





While
dog pellets may be common to the trade of manufacturing dog food, the
word “kibbles” cannot be said to be. Not only
is it not common
to dog food but it is also not descriptive of the end result that is
marketed.





In
my view, there was therefore no basis for the expungement of the
trade mark “Kibbles”. The word “kibbles” does not
describe
the shape or contents of the dog pellets produced by the respondent.





In
the result, I am satisfied that the appeal cannot succeed and it is
dismissed with costs.





ZIYAMBI
JA: I agree.




GWAUNZA AJA: I agree.





Dube,
Manikai & Hwacha
,
appellant's legal practitioners


Gill,
Godlonton & Gerrans
,
respondent's legal practitioners