Plascon-Evans Paints Limited v Van Riebeeck Paints (Proprietary) Limited

The appellant was the registered proprietor of the trade mark "Micatex" in respect of paints and allied products containing mica, registered in 1971 and assigned to the appellant in 1979. The appellant marketed a texture coating under the Micatex mark through an extensive promotional campaign from mid-1978 (costing over R300 000), resulting in a dramatic increase in sales. In about October 1978 the respondent, a competing paint manufacturer, began selling a texture coating under the mark "Mikadek"; after objection, it desisted but thereafter began using "Mikacote" (alongside its housemark "Dekro") from around April 1979. The appellant instituted motion proceedings in the Cape Provincial Division for an interdict against infringement of its registered trade mark (and initially also passing off). Both products contained mica as a minor ingredient. The goods were sold in retail outlets to both trade professionals and lay purchasers. The respondent raised disputes of fact on affidavit. The court of first instance (Van Heerden J) granted the interdict. The Full Bench (Court a quo) allowed the respondent’s appeal (intending to dismiss the application), but failed formally to substitute an order. The appellant obtained leave to appeal to the Appellate Division. By the time of the appeal the respondent had ceased using the Mikacote mark, but the court nevertheless determined the matter.

• Whether the use by the respondent of the mark "Mikacote" constituted use "as a trade mark" for the purposes of s 44(1)(a) of the Trade Marks Act 62 of 1963.
• Whether the mark "Mikacote" so nearly resembled the registered mark "Micatex" as to be likely to deceive or cause confusion.
• Whether the respondent could rely on the bona fide description defence under s 46(b) of the Act.
• Whether a final interdict could be granted on affidavit despite the existence of disputes of fact, and the applicable principles for motion proceedings in such circumstances.

The appeal was allowed with costs, including the costs of two counsel. The order of the Full Bench (Court a quo) was set aside and substituted with an order dismissing the respondent’s appeal to that Court with costs. The effect was to reinstate the interdictory relief granted by the court of first instance.

1. In motion proceedings for final relief, where disputes of fact arise on the affidavits, the general rule is that the court may grant the order if the facts stated by the respondent together with admitted facts justify it. However, the court may also proceed on the applicant’s version where the respondent’s denials are not bona fide or are clearly untenable, or where the respondent does not apply for cross-examination and the court is satisfied as to the inherent credibility of the applicant’s factual averments. 2. For purposes of trade mark infringement under s 44(1)(a), the use of a mark as a “product name” can still amount to use “as a trade mark” if it functions as a badge of origin. 3. A finding of infringement requires proof of a likelihood of deception or confusion among a substantial number of average customers of the goods in question. The comparison between the registered mark and the alleged infringing mark must be made by reference to sense, sound and appearance, in the marketplace context, and with due allowance for the customer’s imperfect recollection. 4. Section 46(b) of the Trade Marks Act affords a defence only where descriptive words are used bona fide to describe the character or quality of the user’s own goods; it does not extend to the use of a fancy name that is a mere device to take advantage of the goodwill attaching to another’s registered trade mark.

The court expressed provisional views on matters that it did not need to decide finally: (a) whether the statutory definition of “trade mark” in s 2 of the Act requires adaptation when applied to s 44(1)(a) in cases where an alleged infringer uses a mark to indicate a connection with the registered proprietor rather than with himself (paras 29–31); (b) whether the “notional use” test (considering how the defendant might fairly and normally use its mark) is appropriate in infringement proceedings, with Corbett JA expressing difficulty with applying it to the defendant’s actual use (paras 38–40); and (c) the observation, without deciding the point, that the fact a person has used descriptive words as a trade mark may not necessarily preclude reliance on s 46(b) (para 50). The court also noted that the passing-off claim had wisely been abandoned (para 6) and that the dispute had become moot because the respondent had ceased using the impugned mark (para 18).

This is a leading authority in South African intellectual property and civil procedure law. It is the foundational decision on the so-called 'Plascon-Evans rule', which governs how courts should resolve disputes of fact in motion proceedings when a final order is sought on affidavit. In trade mark law, it sets out the comprehensive test for determining deceptive or confusing resemblance under s 44(1)(a) of the Trade Marks Act, emphasising a practical, marketplace-based comparison by the average consumer with imperfect recollection. It also provides the definitive interpretation of the bona fide description defence under s 46(b), holding that the defence is unavailable where a fancy mark is used to exploit the goodwill of a registered trade mark rather than to describe the character or quality of goods.