"A passingoff action is a remedy for the invasion of a right of property not in the mark, name or getup
improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passingoff
one person's goods as the goods of another. Goodwill, as the subject of proprietary rights, is incapable of
subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in
character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each."
[12] Consequently, it has long been accepted that an unregistered trade mark is not capable of being transferred
separately from the business or goodwill to which is attached see Pinto v Badman [1891] RPC 181 (CA) 193
line 28195 line15: GE Trade Mark [1973] RPC 297 (HL) 325 line 33326 line 11; Star Industrial Co Ltd v Yap
Kwee Kor (t/a New Star Industrial Co) (supra) at 270 and 272; AL ASSAM Trade Mark [1995] RPC 511 (CA) 552
line 827. This is a vital distinguishing feature of a registered trade mark. Both the Act (section 39(1)) and the
old Act (section 49(1)) pertinently provide that a registered trade mark is assignable or transmissible either in
connection with or without the goodwill of the business concerned in the goods or services for which it has
been registered.
[13] The learned authors of Webster & Page suggest that the sale of an unregistered trade mark without goodwill
of the business concerned and goods entitles the purchaser against the seller to establish its own goodwill
through the trading use of the mark and the reputation that attaches to it. The seller is no longer entitled to
make use of the reputation which formerly attached to the mark in the course of his continuing business and
is required to establish fresh indicae of the goodwill attached to such business (paragraph 11.22). The learned
authors do not explain how this view can be reconciled with the juridical nature of an unregistered name or
trade mark (ie it is simply a mark used to identify a business and/or its merchandise and/or its services) and
the remedy of passingoff and what the remedy is designed to protect. If it is not capable of being the object
of proprietary rights (as a registered trade mark clearly is) it is not clear how
Page 595 of [2005] 2 All SA 588 (T)
"rights" in respect of an unregistered trade mark may be transferred separately from the business with which
it is associated. It may be that the agreement must be construed as a licence to use the name or mark but
this may be contrary to public policy relating to trade marks if the use of the name or mark or deceptively
similar names or marks by different traders would give rise to deception or confusion. Clearly this would be
contrary to the public interest. The first respondent made no submissions in this regard. I therefore find that
the rights in respect of the unregistered trade mark JACOBSEN'S are not capable of being transferred without
the business or goodwill to which it attaches.
[14] While not questioning the correctness of the principle that an unregistered trade mark cannot be transferred
separately from the underlying business or goodwill with which it is associated, the first respondent's counsel
submitted that the first respondent's affidavit should not be narrowly construed. He argued that whatever the
first respondent's deponent, King, called the transaction it amounted to an unequivocal consent to King and
his companies to use the trade mark and this consent could not be withdrawn. He also submitted that if the
court found that Jacobsen's Publishers (Pty) Ltd had given its consent to the use of the trade mark and that
such consent could not be withdrawn the applicant would not be entitled to relief. Such consent would
represent an obstacle under subsections 10(3), 10(7) a n d 10(12) of the Act. This argument is clearly not
based on the facts alleged by the first respondent and requires no further consideration.
[15] To evaluate the attack on the defences raised it is essential to consider them in the light of the undisputed
facts.
[16] The applicant alleges that it acquired the rights to the unregistered trade mark JACOBSEN'S pursuant to a
written Sale of Business Agreement which it entered into with Jacobsen's Publishers and Neil Jacobsen on
22 October 1998. In terms of this agreement
(1)
(2)
the applicant purchased from Jacobsen's Publishers the publishing business conducted by Jacobsen's
Publishers as a going concern under the name and style of "Jacobsen's Publishing" which business
comprised
(a)
the fixed assets;
(b)
the goodwill attaching to the business;
(c)
the contractual rights;
(d)
the right to use the name "Jacobsen's Publishers";
(e)
the intellectual property; and
(f )
the stock.
the intellectual property consisted of
(a)
all copyright and all other similar rights and interests of Jacobsen's Publishers in and to the
publications
(i) Jacobsen's Harmonised Customs and Excise Tariff Book;
(ii)
Customs and Excise Rules; and
(iii) Prohibited Goods Index,
Page 596 of [2005] 2 All SA 588 (T)
and any other publication as published by Jacobsen's Publishers as at the effective date or the