In the latest IP judgment to be handed down in South Africa, the Supreme Court of Appeal has dismissed an appeal by Koni Multinational Brands against a court decision ruling that its Connie men's shower gel products are confusingly similar to those of Nivea.
The products and their devices are depicted below.
Body care product supplier Koni was established in 2012 by South African celebrities Connie Ferguson and Joseph Nchabeleng. The company supplies 12 types of Connie-branded personal care products to 900 stores around the country.
Beiersdorf AG, owner of the well-known Nivea brand since 1911, brought legal proceedings against Koni in relation to its Connie men's shower gel products. In 2019 the High Court ruled in favour of Beierdorf, interdicting Koni from competing unlawfully with Nivea by passing off its Connie's men shower gel products as those of Nivea. In particular, the court found that the Connie Men Active Shower Gel was too similar to that of its competitor.
The legal matter began in 2017 when Beiersdorf wrote to Koni protesting that "it was manufacturing and offering for sale the Connie Men shower gel with a get-up confusingly similar to the respondent's products".
Koni denied this statement and argued that the different names of the products were sufficient to distinguish them.
Beiersdorf obtained an interdict from the High Court in Johannesburg, which held that there was a potential for confusion between the two products on the following grounds:
- The shower gel is often an impulse buy, wherein the consumer is less likely to be discerning.
- Parts of the appearance of a product that is distinctive in relation to a particular mark or brand are sufficient to create confusion.
The court ordered Koni to remove this get-up from all packaging, signage, printed material, websites and social media platforms under its control.
Koni appealed the judgment on the grounds that it was barred from lawfully competing with Beiersdorf. However, the majority of the appeal court found that the Connie Men Active Shower Gel was confusingly similar to Nivea's products and therefore maintained the decision.
The majority of the Supreme Court of Appeal held that Beiersdorf had established that its goods had acquired a particular reputation and that since 2010 its Nivea Men shower gel and body lotion range has led the market.
On the other hand, the majority also found that the logo on the Connie shower gel was an appropriation of the Nivea Men wave label used on the same kinds of product and that the overall appearance and format of the Connie shower gel was confusingly similar to Nivea products.
"Given the similarities between the appellant's and respondent's products, the inference is inescapable that the appellant's logo is an appropriation of the Nivea Men wave-label indicia on the same kind of product, so as to connect it to a known and established brand," the court held. It went on to state that consumers could not help but be deceived when attempting to purchase a Nivea product. This was confirmed by the majority of the judges.
However, the decision was not unanimous. One of the appeal judges did not agree with this view and believed that only a careless consumer would end up purchasing Koni shower gel rather than Nivea. Further, the judge believed that the Connie men's range was merely an extension of the already popular women's range.
Nevertheless, Koni must now remove the disputed products from all stores, including signage, printed material, websites and social media platforms.
Originally Published by World Trademark Review (WTR)
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