Welcome to #IPThursday Good People!! The following thread tells a story of how copying got one of our stars into a hectic Intellectual Property dispute. 
The star of our story today is none other than Connie Ferguson (nee Masilo). Most of you know her as Karabo Moroka, but more on that later. For now, it’s Connie.
You guys probably know the details of her life but I’ll set them out for those that don’t. Connie was born in 1970 in Kimberly, up in the Northern Cape. When she was young, she left South Africa and was raised in Lobatse, Botswana. Her biography is quite a fascinating one.
Connie returned to South Africa, (I dont know when) and decided to pursue a career in law. However, in her 2nd year she failed criminal law and opted to pursue a career in drama. Listen, Dolus eventualis will show you flames in an exam. This book here traumatized me
In 1994, Mfundi Vundla created the show that was to make Connie famous. She was cast as the leading role of Karabo Moroka on Generations, she starred in the role for the better part of 2 decades.
Generations was a hit with the people and its 8pm slot made it the most watched TV show in South Africa, possibly Africa in general. It showed successful black people in corporate spaces. She killed the role of Karabo over the years, so much so that people still call her that.
I mean who can forget that one time she wanted to take two husbands. A Queen.
Naturally, over the years Connie became one of the highest paid actresses in the country and started developing business various business interests. This included cosmetic products, endorsements and filmmaking.
In 2001, she married her current husband and fellow actor Shona Ferguson. Over the years they would become a power couple in SA, building the Ferguson brand and making millions.
She then left Generations some years later and together, they founded Ferguson Films which has produced a handful of hit shows over the years such as The Queen, Rockville and The Imposter, amongst others.
The Fergusons haven’t been short of bad press. Over the last few years, they have been seen as the face of an industry wide problem regarding the fair payment and treatment of actors. Maybe one day I’ll give my 2 cents on this whole saga. But today we deal with other issues....
The Fergusons own/control a company known as Koni Multinational trading as Connie Body Care. In 2014, they launched a range of skin care products under the “Connie” brand name. In 2015, they introduced a Men’s range targeted at gents. With the colour scheme depicted below.
This brings us to the second party in our story, a German company known as BEIERSDORF AG, however you may know their product range, Nivea. I’ll call them Nivea going forward. The Nivea trade mark itself has been around since 1911.
In 1986, they launched a skin care range targeted at men with this stylisation. It has changed over the years but the theme remains the same. The Nivea brand has a huge reputation in SA and worldwide. It is probably the most famous skin care brand after Vaseline.
When Connie launched her product in 2015, the German company was not at all pleased with her. They felt that Connie was copying the design, colour scheme and labelling of their various Nivea products. Here’s pic of the two products below. Connie Left, Nivea on the right.
Nivea took Connie to court for imitation of their packaging in an action known in IP law as Passing Off. Passing off usually deals with unregistered trade marks or the feel of the branding, (get-up). This is the part of the thread where I ask you to pay attention, so listen up.
In simple terms, Passing off is presenting your goods to the consumer in a way that draws an association or causes confusion with another trader’s already existing product. Usually, this association would then cause the other trader financial loss. You still following?
Let me give a few examples in case some of you want to start a business and considering themes. Say I open ”Sena Garage” and use the colours yellow and red. Shell would be upset because they have a reputation with those specific colours. They could argue passing off.
If I start a mobile provider and use the colour yellow in my shops, MTN would be pissed. Why? Because they have a reputation with those colour schemes and consumers associate those colours with those brands. Even if they don’t have trade mark registrations for them.
Last one! Someone comes along and calls themselves “Your Favourite Lawyer”. Next thing all of you are calling him for IP advice instead of me because you think he’s associated with me or it’s actually me. They are trying to ride off the coattails of my reputation. Understood yea?
Lets come back to our case, Nivea said Connie had copied their packaging, mainly these 3 elements:
1. Use of the colours Deep Blue and Silver on a wave label.
2. Use of the bright green in the product description.
3. Use of the containers of a similar height and shape to Nivea’s
1. Use of the colours Deep Blue and Silver on a wave label.
2. Use of the bright green in the product description.
3. Use of the containers of a similar height and shape to Nivea’s
Connie came with arguments of her own. She said no one person can have a monopoly over a colour scheme. Also, her research said that men are more likey to buy silver and/or deep blue products. Which limits the colours you can use on Men’s products. I kinda agree with her on this.
She also had another card up her sleeve, Nivea had actually stopped producing products with that specific “wave” labeling in 2012, 3 years before Connie launched. So they were essentially fighting for a design which was no longer on the shelf.
Nivea fought back however, arguing that just because the labeling is no longer being used by them, they still have a reputation for that labeling. If Connie is allowed to sell her products, then people would believe its a Nivea brand.
The matter was heard by Fisher J in the High Court in Joburg. Nivea had a witness who swore via affidavit that they purchased the Connie product thinking it was Nivea. It was only when he got home that he saw that it was different brand name. Such evidence is very important.
In the ruling, the judge said the goods are similar just by looking at them side by side. He also said it is clear that Connie had copied Nivea’s product with the hope of piggybacking off the German company’s reputation.
The judge said that Connie had copied all three main aspects of Nivea and there was clear passing off, and the three elements had been met. 1. Unlawful act (the copying), 2. Fault (the intention to copy) and 3. Harm (some customers testified that they were genuinely confused).
Connie was forced to remove labelling from the product, interdicted to stop copying Nivea and ordered to pay Nivea’s legal costs for the lawsuit. High Court matters can cost over 250k for each party.
Initially, the narrative from Twitter Court and the media was that another black business was being bullied by a big corporation (a lot of you do this when you copy an existing brand and get sued.) However, the reality is that there are clear similarities.
Big Lesson: When adopting a product, resist the temptation of copying big brands. When they come for you, they will hit you with a lawsuit so hard it creates generational debt for your grandkids. Rumour has it Connie will appeal, I wouldn’t recommend. Stay Safe Good People!!
