FOAM-O held to infringe famous OMO mark

South Africa
In Unilever Plc v Salma Traders (7507/2008 [2008] ZAGPHC 401, December 12 2008), the High Court of South Africa has considered whether the use of the trademark FOAM-O by Salma Traders in respect of detergents infringed Unilever Plc's OMO marks under Sections 34(1)(a) and 34(1)(c) of the Trademarks Act 1993.

Unilever was successful under Section 34(1)(a), but the court did not make a finding under Section 34(1)(c). 
 
Section 34(1)(a) is the traditional likelihood of confusion test, whereas Section 34(1)(c) is the dilution (or unfair advantage/detriment to distinctive character or repute) test.
 
The court held that it was common cause that the OMO marks enjoyed a substantial reputation in South Africa. Interestingly, despite the reputation of its OMO marks, Unilever decided not to pursue a claim based on passing off. A number of reasons for the omission could include Unilever's confidence in its registered rights and the costs associated with preparing for an additional ground. In any event, Unilever's 'sniper-like' approach paid off.
 
The judge held that:
 
"both OMO and FOAM-O are aurally similar in sound and both are washing powders. It is clear that the respondent has pitched the product at the lower end of the market. To my mind, it exacerbates the problem as unsophisticated, uneducated and rural people will be more prone to confusion than the upper end of the market. It is also more likely that these customers at the lower end of the market will be confused or deceived due to the reputation that OMO has as a washing powder amongst ordinary customers."

As a consequence, the court concluded that Salma had infringed the OMO mark under Section 34(1)(a).
 
It is regrettable that the court did not make a finding under Section 34(1)(c), because it was an opportunity to adjudicate on whether the potentially far-reaching decision of the European Court of Justice in Intel v CPM was applicable under South African law and, in particular, whether the requirement to prove the likelihood of a change in the economic behaviour of the consumer was part of the dilution test (for further details on the Intel decision please see "ECJ denies absolute trademark protection for superbrands").
 
Salma was injuncted from infringing the OMO marks and requested to remove the infringing mark from any material or deliver up such material to Unilever. The court also ordered that Salma pay the costs of the proceedings, including counsel's costs.
 
Darren Olivier, Bowman Gilfillan Inc, London

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