confused or deceived into thinking that a boat with the name "Sovereign" was the same as, or was associated
with, the second applicant's "Falcon". In the event the applicants had not, it was argued, suffered any injury as a
result of any alleged unlawful competition or passing off attributable to the first respondent.
Held In order to succeed in an action based on passing off as a form of unlawful competition, the plaintiff must
prove that the defendant committed an unlawful act in the sense of a breach of the plaintiff's goodwill. This means
that there must be proof of all the essentials of delictual (Aquilian) liability, namely an act, wrongfulness, fault
(intent or negligence), prejudice (injury or damage) and causation (legal and factual). The act complained of must be
a competitive act or competitive conduct directed at attracting the custom of the same clients. Such act or conduct
will be wrongful if it breaches or infringes upon the competitor's right to the goodwill of his business.
The issue on which the matter turned was whether or not there was a (reasonable) probability or likelihood that
the public would be misled. It was not a requirement that anyone should have been subjectively misled, although
proof of actual deception would assist in discharging the plaintiff's burden of proof in this regard.
Page 384 of [2005] 2 All SA 382 (C)
Much reliance was placed by the applicants on the alleged copying of the Falcon boat getup. In order to protect
getup from passing off, the plaintiff must prove that it has acquired a reputation in connection with his business or
goods and has consequently become distinctive thereof. If no such reputation has been acquired, any competitor
may with impunity copy or imitate the getup of his rival. But even if such reputation has been established, the
competitor may still make use of it provided he makes it clear that the end product is his and not that of the original
user of the getup.
In the present matter it was clear that the applicants had expended much time, money, labour, energy and effort
into designing and developing their Falcon range of rigid inflatable boats, as well as the logo, distinguishing
features and general aesthetic appearance of such models. There was no doubt that the boats had developed a
reputation as being of outstanding quality and a leader in their class. On the other hand, there was no indication
that the applicants had acquired any reputation relating to any aspect of the design, shape, form or getup of the
boats in question. There had been no attempt to seek protection by registration of the design, shape, form or get
up of any of the boats, as rigid inflatable boats were, for the most part, similar in design, shape, form and getup,
the differences relating to cosmetic rather than functional aspects thereof. From the day the second applicant
produced and sold its first Falcon, it became part of the public domain and would enjoy protection only if a
competitor should pass off its boat as a Falcon product.
Although the two ranges of boats were similar in many respects, they were not identical or "almost identical", as
suggested by the applicants. There were obvious and substantial differences between them and the respondents'
boats were, indeed, an improvement on the Falcon.
Even if the respondents had copied the Falcon boats in detail, this would still not constitute unlawful competition.
Only if it could be said that the respondents were attempting to pass off their range of boats as those of the
applicants', could it be said that there was any question of wrongfulness.
In this regard, the Court was satisfied that a reasonably cautious and discerning purchaser, who had at least
some knowledge of boats, would not be misled by the design, shape, form or getup of the respondents' boats into
thinking that he was purchasing a Falcon.
Application dismissed with costs.
Notes
For Passing Off (Competition) see:
· LAWSA Second Edition (Vol 2(2), paras 232273)
Cases referred to in judgment
Agriplas (Pty) Ltd and others v Andrag & Sons (Pty) Ltd 1981 (4) SA 873
(C)
400
Aruba Construction (Pty) Ltd and others v Aruba Holdings (Pty) Ltd and
others 2003 (2) SA 155 (C)
400
Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and others
1981 (2) SA 173 (T)
398
Page 385 of [2005] 2 All SA 382 (C)
Bress Designs (Pty) Ltd v GY Lounge Suite Manufacturers (Pty) Ltd and
another 1991 (2) SA 455 (W)
401
Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd and another
[1998] 3 All SA 175 (1998 (3) SA 938) (SCA)
399
Cerebos Food Corporation Ltd v Diverse Foods SA (Pty) Ltd and another
1984 (4) SA 149 (T)
396