Unpacking the Sol de Janeiro fragrance fiasco - what is the brand's legal recourse?

Image source: KamranAydinov from Freepik

It was no surprise that when Dis-Chem began selling Sol de Janeiro products in South Africa, shoppers rushed to the stores to get their hands on them. According to a report by News24, the demand was so high that, after selling out, customers were put on a waiting list.

However, the excitement soon gave way to scepticism as some buyers began questioning the product’s authenticity. Complaints emerged, with customers noting that the scent differed from those sold overseas and that the scent faded rather quickly.

In response, Dis-Chem swiftly removed all Sol de Janeiro items from its shelves and is currently in the process of testing the products to determine whether their supplier had provided them with genuine goods.

Brand recourse

The question remains - what actions could Sol de Janeiro have taken against the unnamed supplier, if these products are not genuine goods and if they still appeared on shelves?

In South Africa, the proprietor of a registered trade mark is afforded the exclusive right to prevent the use of a mark by any other person, which is confusingly or deceptively similar to the proprietor’s trade mark in relation to the goods and services for which it is registered.

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Aletia Oberholster  7 Jun 2024

The mark ‘Sol de Janeiro’ has been accepted in South Africa, and is, therefore, pending registration. Sol de Janeiro is, however, a well-known mark and no doubt has a substantial reputation in South Africa. As a result, Sol de Janeiro is entitled to trade mark protection and would be able to pursue the following actions:

• Passing off: The action of the supplier in using the identical trade mark and packaging, constitutes a misrepresentation that has deceived members of the public and which will clearly cause damage to the proprietor. This amounts to passing-off and unlawful competition under common law.

• Trade mark infringement: Notably, well-known international trade marks recognised under the Paris Convention are afforded protection, even in the absence of a South African trade mark registration.

  It has been made quite clear that the Sol de Janeiro mark is well-known among the relevant skincare market in South Africa. The use of the identical mark, in relation to identical goods, in this context would undoubtedly cause deception or confusion, constituting infringement under Section 35 of the Trade Marks Act.

• Counterfeit goods: Although it is possible to proceed with anti-counterfeiting measures on the basis that a mark is well-known, this process can be more complicated if the mark is not registered.
  Of course, there are certainly circumstances that would warrant immediate steps and these further steps include filing a criminal complaint with the South African Police Service, after which the designated police officer will apply for a search and seizure warrant. If the warrant is granted by the Magistrate in the relevant jurisdiction, the South African Police Service will execute the warrant, seizing and removing all the goods to the anti-counterfeit depot.

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Andrew Dutton  21 Nov 2023

Dis-Chem deserves commendation for its proactive response in removing the questionable products from its shelves and upholding the integrity of Sol de Janeiro’s brand. This decisive action highlights the importance of vigilance in safeguarding both customer trust and the reputation of global brands and sets a strong example for other retailers.

The opinions expressed here belong to the authors and do not necessarily reflect the views of the publisher.