UNILEVER PLC & ANOR V VIMCO (PVT) LTD & ANOR 2004 (2) ZLR 253 (H)

Flynote

Delict ” passing off ” requirements to establish claim ” need to show c existence of reputation and goodwill ” likelihood of deception ” similar products, sold to similar clientele, bearing similar trade names

Estoppel ” delay in instituting proceedings ” does not give rise to estoppel ” rights conferred by statute ” party cannot be estopped from enforcing statutory rights

Intellectual property ” trade mark ” infringement of ” unauthorised use of a mark so nearly resembling a registered trade mark as to be likely to deceive or cause confusion ” use of similar name in prominent place on label of similar product

Waiver ” of rights ” delay in instituting proceedings to enforce rights ” mere delay does not give rise to waiver ” rights conferred by statute ”delay not a waiver of rights

The applicants for many years had been the registered owners of the trade mark "Vim", which was the name given to a household scouring powder. That powder had been sold in this country for many years. The respondent company, Vimco (Pvt) Ltd, sold several products, among them a scouring powder. Their scouring powder had the name "Vimco" prominently featured in three places on the container, but in only one was the word joined to the words "(Pvt) Ltd". The applicants sought an order interdicting the respondent from infringing its trade mark and from passing off its goods as those of the applicants. The defendants, apart from arguing the merits, also argued that, by delaying the institution of proceedings, the applicants had waived their rights or were estopped from asserting or enforcing those rights.

Held, that if the mark "Vimco" were being used on the label merely to indicate that the product was that of the respondent, it would not be necessary to have the mark appearing prominently at the top of the label, as the name of the company and its contact details appear at the bottom of the label. Apart from the mark appearing at the top of the label, there was no other feature which was descriptive of this product and which would sufficiently differentiate the respondent's product from that of the applicants. The trade mark used by first respondent so nearly resembled the applicants' registered trade mark as to be likely to deceive or cause confusion.

Held, further, that where relief is sought on the grounds of "passing off", a party has to establish a goodwill or reputation acquired or associated with it in connection with the mark or "get-up" copied by another entity. Proof of reputation is a prerequisite to a successful passing-off action. The applicants' product had been sold in this country continuously for some 37 years, using the same name. Goodwill therefore attached to the name.

Held, further, that the products in question were both scouring powder. They were marketed at similar outlets and displayed on shelves close to each other, for sale to a wide cross-section of customers. The trade marks were similar. The product was commonly used and purchased by a wide cross-section of consumers in this country. There were no particularly distinctive features by which the general public would identify the defendant's product and distinguish it from the applicants' product. The potential for confusion would appear to be greater when the product is of a common nature, purchased by the average ordinary consumer.

Held, further, that mere delay in enforcing a contractual right, withoutanything further, does not give rise to waiver or estoppel. In the case of a right conferred upon a party by statute, the mere failure to enforce such a right cannot be regarded as a waiver of those rights. No party can be estopped from enforcing rights conferred on him by statute.