No. SC 130/02
Appeal No. 113/01
GELATINE (PRIVATE) LIMITED v
FOODS (PRIVATE) LIMITED
COURT OF ZIMBABWE
JA, ZIYAMBI JA & GWAUNZA AJA
OCTOBER 7, 2002 & MARCH 20, 2003
P de Bourbon SC,
for the appellant
C Andersen SC,
for the respondent
JA: Cairns Foods (Private) Limited, the respondent, and Zimbabwe
Gelatine (Private) Limited, the appellant, are both manufacturers
dog food. The respondent manufactures Wrights Kibbles Instant Mix,
while the appellant manufactures Hwau-Hwau Carnivora Kibbles
Food. Both parties pack their products in plastic bags of different
sizes and sell to the public through shops and supermarkets
throughout the country.
respondent applied to the High Court for an order in the following
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
respondent is interdicted and restrained from infringing the
applicants trade mark 1566/95 Kibbles or any other words which
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
respondent deliver up to the applicant for obliteration of the mark
Kibbles, all packaging, labels, wrapping, advertising matter
other documents in the possession of the respondent bearing the trade
cost of this application be borne by the respondent.
application was granted with costs, but the counter application by
the appellant to expunge the trade mark granted to Cairns Foods
13 August 1996 as number 1566/95 failed and was dismissed. The
appellant now appeals against that decision.
is common cause that both parties make their products for dogs in the
form of pellets. These products are often placed close
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.
respondents packaging is also a plastic bag, mainly yellow, red
and brown against a white background. The word Kibbles
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
Below the square are the words Instant Kibbles in white. The
other side of the bag is blank.
starting point in this appeal is that the word Kibbles is
registered as the respondents trade mark. It was registered
is common cause that once a trade mark is registered it gives the
registered owner of the trade mark an exclusive right to use
concerning the goods for which it is registered. (See Kerlys Law
of Trade Marks and Trade Names
12 ed at p 261).
purpose of registration of a trade mark is that no other party should
use the trade mark. Kerlys Law
of Trade Marks and Trade Names
at p 12 para 2:08 says:
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
through which they pass on their way to the market.
follows that once a trade mark is registered, persons who purchase
goods with the registered trade mark associate those goods with
owner of the trade mark.
that reason, any use of the trade mark on goods other than those of
the owner of the trade mark is an infringement generally
as passing off. It amounts to a misrepresentation. I quote
once more from Kerlys Law
of Trade Marks and Trade Names
at p 261:
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.
addition, without prejudice to the generality of the words in
the subsection granting the exclusive right, that right is
be infringed by any person who, not being the proprietor or a
registered user, uses a mark identical with or nearly resembling
in the course of trade (or for services in connection with the
provision of any services), in relation to any goods (or
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.
own Trade Marks Act [Chapter 26:04]
(the Act) provides as follows in s 6:
action for infringement of unregistered trade mark
person shall be entitled to institute any proceedings to prevent, or
to recover damages for, the infringement of an unregistered
that nothing in this Act shall affect the right of any person, at
common law, to bring an action against any other person
off goods or services as the goods or services of another.
section means that a person who believes his rights have been
infringed can either proceed in terms of the Act if he has a
trade mark, or at common law in an action for passing off.
In this case the respondent complained of both passing off and
of a registered trade mark.
far as the trade mark in question is concerned, the appellants
packaging displays the word Kibbles in large and distinct
capital letters, just as the respondent does on its packaging. The
word Kibbles is repeated on the reverse side of the
packaging in blue letters. It is therefore easy for a customer to
mistake the appellants product as being either
the same, or
related to, or from, the same source as that of the respondents
main elements of passing off are misrepresentation, damage and
goodwill. All the three were sufficiently dealt with by the
Figures were given on the sales and the amount spent on advertising
the respondents products. Evidence was led of a customer
looking for the respondents product but ended up buying the
appellants product, and then complaining to the respondent
what she had purchased. The above shows that the respondent has
established a certain amount of goodwill regarding its products,
that people are confusing the appellants product with that of the
respondents. The elements of both passing off and infringement
of a trade mark were proved.
was argued by the appellant that the delict of passing off is not
intended to stifle competition but unfair competition based
representing ones goods as being those of another. I agree.
Competition in the manufacture of similar or almost similar
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 respondents product. No reason was
given for the appellants use of the name Kibbles.
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
was also argued that the word kibbles is descriptive and no one
person should have the sole right to the use of that word.
dictionary the meaning given as to crush into fine pieces is
not the only one. The word has several other meanings
example, to a drum and rope used in mining. It is not strictly
descriptive of the dog food manufactured by the parties.
argument by the appellant that the respondents product is more
expensive compared to that of the appellant does not assist
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.
appellant conceded that the term kibbles describes the process
rather than the end product. The fact that the appellant
using the word since October 1995 is no excuse to continue the
unlawful use of a registered trade mark.
appellant also argued that there should have been a disclaimer in the
registration of the trade mark. That was rejected by the
of Trade Marks.
of the Act reads as follows:
subject to a disclaimer
to subsection (2) if a trade mark
(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
(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
(2) the proprietor shall make
such other disclaimer as the Registrar may consider necessary for the
purposes of defining his rights
under the registration.
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
my view, there was therefore no basis for the expungement of the
trade mark Kibbles. The word kibbles does not
the shape or contents of the dog pellets produced by the respondent.
the result, I am satisfied that the appeal cannot succeed and it is
dismissed with costs.
JA: I agree.
GWAUNZA AJA: I agree.
Manikai & Hwacha,
appellant's legal practitioners
Godlonton & Gerrans,
respondent's legal practitioners