When Koni Multinational Brands launched Connie Men Active Shower Gel, a product in competition with Nivea Men’s established brand and which featured an arguably similar get-up – Nivea’s parent company Beiersdorf AG sued for ‘passing off’.

Delene Bertasso, a senior associate in ENSafrica’s IP department, notes Nivea won, but with one strongly dissenting judgment.

Writing on the Daily Maverick site, she notes that Judge Ashton Schippers, who handed down the majority judgment, said the starting point is proof of a reputation: determining whether the plaintiff has, in a practical and business sense, a sufficient reputation among a substantial number of people.

Nivea Men, he said, had been around for three decades, and while its get-up has changed or been refreshed over the years, it has remained ‘constant and cohesive’.

As a result, ‘Connie Men shower gel is almost certain to deceive and confuse the public and likely to cause the respondent to suffer damages.’

Bertasso says the judge reminded us that, even though survey evidence and precedent are very important, gut feel counts for something, too: ‘Ultimately assessing the likelihood of confusion is a value judgment by the court, dictated by the overall impression created by the get-up in the light of its respective characteristics and the circumstances in which it is likely to be encountered, rather than by excessive analysis.’

Bertasso says there was a ‘long and strong’ dissenting judgment from Judge Tati Makgoka.

He said Nivea’s brand usage had been inconsistent: ‘The very fact that the get-up applied to Nivea Men products keeps changing makes it unlikely that any of those get-ups had stuck in the minds of the consumers as signifying Nivea products. It takes consistency and sufficient duration to build a reputation in get-up.’

Makgoka said that ‘the attracting force to Beiersdorf’s Nivea products, irrespective of the get-up applied to any product, is the well-known brand name and trademark Nivea… that mark is so distinctive that the notional customer is unlikely to have much regard to the colour combinations on the container and other markings or decorations, but mainly to the name Nivea.’

The defendant, on the other hand, ‘by clearly and conspicuously applying its brand name Connie to the label… clearly distinguishes it from Beiersdorf’s Nivea Men.’

According to Makgoka, ‘it would take a particularly careless purchaser to end up’ with a Connie product instead of Nivea. Bertasso says the dissenting judgment ‘highlights the subjective nature of the value judgments that judges are required to make when assessing confusing similarity between get-ups’.

Full analysis on the Daily Maverick site