A judge says actress Connie Ferguson’s beauty products company set out to deceive customers by making a product look like Nivea’s.
Ferguson’s company, Koni International Brands, has been ordered to change the packaging of its Connie Bodycare Men Shower Gel and do everything in its power to delete images of the copycat product from signage, websites and social media platforms.
In her Johannesburg high court ruling, Judge Denise Fisher said the Connie packaging was calculated to pass off the shower gel as a Nivea product.
Even though there were “manifest differences” in the details of the Connie and Nivea packaging, the potential for confusion remained, Fisher said in her judgment last week.
“A shower gel is of the nature of products that are often the subject of an impulse buy, which … has the effect that the chances of error are enhanced,” she said.
“In grabbing at a relatively small purchase, a consumer would be less likely to be overly exacting or discerning in relation to brand, and more likely to succumb to immediate impressions.”
Nivea owners Beiersdorf sued Koni in December 2017, saying the company was passing off some of its products as Nivea’s. It said in court papers that it was the SA market leader and had chalked up turnover of more than R8.7bn since 2012, with R258m from shower gels alone.
At the centre of the row were the use of blue containers, silver and yellow/green fonts, logos and designs.
In an answering affidavit, Ferguson and her business partner Groovin Nchabeleng accused the German multinational of bullying.
“[Koni] is bringing healthy competition to the men’s shower gel market, and the applicant, being an international company, is trying to bully and intimidate the respondent by bringing this baseless application,” they said.
Beiersdorf said Nivea’s blue-and-white livery had been used since 1925. In 2008, it added silver to Nivea Men packaging.
When the Connie brand launched its men’s range in 2015, it chose blue, silver, yellow and white for its packaging.
Ferguson and Nchabeleng told the court that their market research found “men rotated more towards the colour blue and that blue is furthermore regarded as a universal colour for men”. In any case, they said, products such as Vaseline, Protex, Clere and Renew also used blue livery.
But Fisher said a comparison between the two products showed close similarities, including:
A wave label with a deep blue background, a silver border and a name in white capital letters;
The prominent use of blue, white and silver, especially a deep-blue plastic container and a silver lid;
Prominent use of bright green lettering; and
Containers of similar height, width and volume.
Fisher said the strength of Nivea’s brand operated against Koni. “The hallmarks in get-up and logo have the potential to retain reputation through changes and rebrands,” she said.
“Indeed, it is not unusual for historical brandings to be revisited in the market in order to invoke nostalgia and a sense of staying power.
“This device is currently being employed by [Nivea] in the retrospective reference to its round, blue, flat Nivea tin creme container, which was one of its first brandings.”
Deconstructing the two sets of packaging served little purpose in this case, said the judge.
“The memory in the marketplace of past get-ups can, in some circumstances, create associations which endure and which can outlive changes in get-up and rebranding.
“To my mind, the get-up of [Connie] exhibits all the signs of ‘straining every nerve’ to evoke [Nivea].”
Fisher also awarded costs against Koni.