Paint maker takes on newcomer with ‘similar’ name. Picture: File
Two rival traders in the paint industry are at loggerheads. The one is the well-established Dulux paints and the other a newcomer in the paint market, calling its paint products Dumax.
The one is a renowned trader whose registered trademark, Dulux, has been established internationally and nationally over many decades. The other trader is a new entrant into the market, having been established in the beginning of 2021.
The owners of the Dulux trademark turned to the Bloemfontein High Court, where they complained that the rival company’s Dumax paints infringed on their trademark as the name sounds similar to their product.
The Dulux camp said because of the similarities in pronunciation, the opposing camp was pirating the product of years of invention to reap the fruits sown by the applicants (the Dulux team).
The first applicant is Akzonobel Coatings International BV, a Dutch company and wholly owned subsidiary of Akzonobel NV, a Dutch multinational company which creates and manufactures paints and performance coatings for industry and consumers worldwide, with its headquarters in Amsterdam.
The second applicant is Akzonobel South Africa (Pty) Ltd, which is engaged in the manufacturing, marketing and distribution in South Africa of paints, varnishes and related products primarily under the Dulux trade name.
They brought the application against Dumax Paints Ltd, a South African company. It also manufactures, sells and distributes paints and varnishes in South Africa under the trade name Dumax.
The second respondent is Boinko Trading & Investments (Pty) Ltd, which also claims rights to the Dumax trade mark in South Africa.
The applicants are the owners of several trademarks and trademark registrations with the name Dulux.
Judge Johannes Daffue said the success of the Dulux brand internationally and in South Africa, as well and its enormous reputation and goodwill as a well-known trade mark, was beyond doubt.
The first respondent, as a company, was incorporated in January 2021 where after it started selling paint products under the trade name Dumax. The court was told that the first respondent copied an identical image from the Dulux website onto its website in order to promote its products. But following a demand from the Dulux team, it removed the image from its website.
Dulux’s slogan on its products is “The future of paint today”, while the respondent’s slogan is “Painting the future”.
Although the first respondent is using the trademark Dumax, the second respondent has filed a trademark application in respect of the name.
With regard to the second respondent’s application for a trademark, the respondents now use the sign “TM”. The applicants, meanwhile, filed a caveat against the trademark application and intend to oppose the application, once it is advertised.
On the applicants’ get-up is a flourish device on top of the word “Dulux”, while the first respondent is using a rainbow-like device in conjunction with the Dumax trademark.
The respondents denied that the applicants were entitled to any relief, either based on passing-off of or infringement of the Dulux trademarks. They argued that the application was premature.
They relied on the conditional approval of the second respondent’s trademark by the Registrar of Trademarks and the pending procedure.
The respondents submitted that if an interdict was granted, the court would effectively hamstring the Registrar of Trademarks to consider the pending trademark application. Consequently, they said, the applicants should lodge their objections against the trademark application, once it was advertised.
Judge Daffue said the respondents’ sole director of both companies had decided to “sponge” off the well-known Dulux and Maxicover trademarks by “pirating the product of years of invention” and “reaping the fruits” sown by the applicants.
The judge added that it was ironic that when counsel for the respondents pronounced the words “Dulux” and “Dumax” in one particular sentence during his oral argument, his pronunciation of the two words was so remarkably the same that he (the judge) commented about it at the time.
The judge remarked that it is fair to say that, save for the identical first syllable, “Du”, the second syllable in both words might often be pronounced the same.
He subsequently interdicted and restrained the respondents from infringing the second applicant’s well-known trademark registration Dulux. This included the use of the word “Dumax”.
Pretoria News
zelda.venter@inl.co.za
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