From the above paraphrase of what is said in the cases there can be extracted two minimum requirements which a
plaintiff must normally prove in proceedings for an interdict, based on passingoff involving the use of a symbol,
namely (i) his own reputation in relation to the symbol which epitomises his product and (ii) deception, or at the
very least confusion, on the part of a not insignificant segment of the buying public, caused by the conduct of the
defendant, as to the origin of the product or a trade connection with the defendant, and which would likely have
had an influence on their decision to procure it."
Page 479 of [2005] 4 All SA 474 (C)
(Although the case before me concerns services and not a product and a commonlaw mark and not a symbol,
the same principles apply.)
[12] Nienaber JA went on to refer to an earlier judgment in Caterham Car Sales and Coachworks Ltd v Birkin Cars
(Pty) Ltd and another1 1998 (3) SA 938 (SCA) from which the following extracts are relevant to the matter
under consideration:
"[20] The correct question can be distilled from the judgments on passingoff of this Court mentioned earlier in
paras [15] and [16] and from Conagra Inc (especially at 234, 237 and 269 in IPR). In general terms, it
appears to me to be whether the plaintiff has, in a practical and business sense, a sufficient reputation
amongst a substantial number of persons who are either clients or potential clients of his business. As far as
the 'location' of reputation is concerned, it must subsist where the misrepresentation complained of causes
actual or potential damage to the drawing power of the plaintiff's business. Otherwise the misrepresentation
would be made in the air and be without any consequences. The locality of the plaintiff's business is not
hereby rendered irrelevant. Obviously, it must be an important consideration in determining whether the
plaintiff has potential clients and whether the alleged misrepresentation causes his business any harm.
Likewise, the extent of a business's reputation and the scope of its activities are relevant to the probability
of deception and to damages the smaller the reputation, the smaller the likelihood of deception and of
damage, and vice versa.
[21]
The nature of the reputation that a plaintiff has to establish was well stated by Lord Oliver in a judgment
referred to at the outset of this judgment, namely Reckitt & Colman Products Ltd v Borden Inc and others
[1990] RPC 341 (HL) ([1990] 1 All ER 873) at 406 (RPC) and 880gh (All ER):
'First, he must establish a goodwill or reputation attached to the goods or services which he supplies
in the mind of the purchasing public by association with the identifying "getup" (whether it consists
simply of a brand name or a trade description, or the individual features of labelling or packaging)
under which his particular goods or services are offered to the public, such that the getup is
recognised by the public as distinctive specifically of the plaintiff's goods or services' (my emphasis)
(see also Lord Jauncey at 417 (RPC).
The words emphasised are pertinent and echo those of Nicholas J that:
'the plaintiff must prove that the feature of his product on which he relies has acquired a meaning or
significance, so that it indicates a single source for goods on which that feature is used.'
(AdcockIngram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 437AB.) Put differently,
reputation is dependent upon distinctiveness (cf Van Heerden and Neethling at 169).
[22]
The reputation relied upon must have been in existence at the time the defendant entered the market, in
other words, a plaintiff cannot rely upon a reputation that overtook the business of the defendant
(AnheuserBusch Inc v Budejovicky Budvar NP (t/a Budweiser Budvar Brewery and others [1984] FSR 413
(CA) at 462). It must also exist when the misrepresentation is committed." (My underlining).
Page 480 of [2005] 4 All SA 474 (C)
[13] In order to prove its reputation, the applicants have referred to a plethora of advertising material published
by them and reports concerning them published in the financial press. With regard to these publications it
must be remembered, that as indicated in the passages from Caterham (supra) which I have quoted, it is
necessary that (i) the reputation must be shown to have been subsisted where the misrepresentation is
alleged to have caused actual or potential damage, and (ii) the reputation must have been in existence at the
time that the defendant entered the market. The reputation which the applicants seek to prove is of course
the reputation attaching to the mark "Value".
[14] An analysis of the history of the applicants and the details of the publicity relied upon reveals the following:
(a)
Until 2002 (the exact date is not furnished by Gottschalk) the branding on the second applicant's trucks
was simply Value Truck Rentals. The lettering was depicted in red on a white background. The name
appeared in capital letters of equal size.
(b)
In 2002 the branding on the trucks of Value Logistics was altered significantly with a strong emphasis
being placed on the word "Value". The word "Value", still coloured in red, but now with brown or yellow
shading for some of the letters, became the dominant feature. "Value" occupies some 50% of the side
of the truck on which the lettering appears. A telephone number in blue numerals appears above the
word "Value" and identifying words such as "Logistics", "Truck Rental", "Materials Handling" and
"Freight" appear in smaller, white lettering on a blue strip beneath the word "Value".
(c)
The consolidation of the group occurred, as I have already mentioned in 2002/3.
(d)
Gottschalk does not record the date of the listing of Value Group in his founding affidavit, saying merely
that it was listed during 1998. It is only upon a perusal of the extracts from the financial press filed with
the affidavit that one becomes aware of the fact that the listing took place as late as 26 October 1998.
[15] The respondents did not specifically deny the reputation which the applicants postulated to exist at the time