Pass the salt, please!

Our courts seem to concur as noted in a recent judgment handed down by the full bench of the Eastern Cape High Court of South Africa. The court decided on a dispute spanning more than two years between the salt giants, Cerebos Limited and Swartkops Sea Salt (Pty) Limited.

In the judgment, Cerebos was interdicted and restrained from passing off its braai salt product as Swartkops’s. The interdict prevents Cerebos from using the get-up of its current Buffalo braai salt or any appearance confusingly or deceptively similar to the trade dress of Swartkops’s well-known orange bottle braai salt. The order handed down by the court also made provision for an inquiry into the damages suffered by Swartkops as a result of the unlawful conduct of Cerebos.

The battle of the salts began at the end of 2010 when Cerebos launched its Buffalo braai salt product with a noticeably similar get-up to that of the Swartkops orange bottle braai salt. Swartkops’s large orange bottle of braai salt was unique to the salt market, particularly in the braai salt arena. Following Swartkops’s failed communications with Cerebos, Swartkops instituted passing off proceedings against Cerebos in 2011.

At that stage, in response to the letter of demand, Cerebos had made slight changes to its product, such as replacing the brown lid with a black lid. This did little to appease Swartkops as the contentious orange bottle remained, along with other features shared by the two products.

This matter presented classic passing off principles that have been dealt with extensively in law. In determining whether a representation amounts to passing off, an inquiry is made as to whether a reasonable likelihood exists that members of the public may be confused into believing that the merchandise of the one is, or is connected with that of, the other.

Success in such an action requires proof of a relevant reputation. Where a product or business has acquired repute in its trade through a strong presence in the market, this attributes to the reputation and goodwill in the business of the relevant party. The goodwill built up by a business is said to be the attractive force which draws customers and the wrong of passing off accordingly causes damage.

Long standing use of its orange braai salt product since the 1950s meant Swartkops did not have difficulty in establishing a reputation in its product. The Port Elizabeth High Court (the court of first instance), found that Swartkops had set out sufficient evidence to establish the necessary reputation in its orange braai salt product, although the court ultimately dismissed the application on the basis that there was no prospect of confusion on the part of the ordinary customer.

"An immediate and striking similarity between the packaging and get-up of the rival products existed, especially since it accpeted evidence of actual confusion that had been put forward."

Although the court cited the precedent Supreme Court of Appeal authorities and their guidelines for determining confusing similarity (in particular avoiding a close “court-room” scrutiny of the two articles), it then proceeded to follow a detailed “court-room” scrutiny or analysis of the products.

This led to an appeal being lodged by Swartkops. Taking into account that an ordinary everyday buyer, especially of a relatively low-cost commodity such as salt, is a person likely to have only a general idea of what he/she is actually looking for and does not necessarily have an accurate illustration of the product, the Appeal Court in Grahamstown rejected the Port Elizabeth court’s close scrutiny of the two containers, and held that an immediate and striking similarity between the packaging and get-up of the rival products existed.

It has long been established in our law that when dealing with a likelihood of confusion arising among members of the buying public, consideration of the product as a whole, along with the surrounding circumstances of the sale, must be made.

Potential customers may have only an idea of a product or an imperfect recollection of the words appearing on the packaging and not necessarily have the opportunity to place two competing products side by side with an eye for all the details of each product and its labelling. Confusion may take place once the customer has purchased the product.

Taking these factors into account, the Appeal Court found that Swartkops had sufficiently established the necessary likelihood of deception and confusion.