Diageo North America Inc and another v DGB (Pty) Ltd
 3 All SA 529 (T)
Transvaal Provincial Division
25 February 2004
H Daniels J
M Snyman and D Cloete
. Editor's Summary . Cases Referred to . Judgment .
 Intellectual property Passing off Requirements for interdict based on passing off set out by court.
 Intellectual property Passing off Proof of reputation Applicant must prove a reputation attached to the particular
product so that consumers identified its product's getup as distinctive of applicant's goods The reputation relied upon
must have been in existence at the time the respondent entered the market.
The first applicant was the owner of all the rights in and to the getup of its "spirit cooler" beverages sold under the
trade marks "Smirnoff Ice" and "Smirnoff Spin". The second applicant was licensed by the first applicant to use the
getup and trade marks in South Africa in relation to the said spirit coolers. The respondent manufactured and
marketed a similar product, sold under the name "Nordic Ice".
In the present application, the applicants sought to interdict the respondent from passing off its alcoholic
beverage products as those of the applicants.
Held The principles governing passing off were common cause, and the requirements for the relief sought in an
action based on passing off were: proof of a reputation; proof of a direct or indirect representation by the
respondent, whether intentionally, negligently or even innocently made, that its product was that of the applicants;
proof that the representation was made by the respondent to prospective customers or the ultimate consumers of
those goods in the course of trade; and proof of a threat of actual or prospective damage to the applicants'
In the present case, the applicants had to prove their reputation and the representation amounting to a passing
off as set out above.
With regard to reputation, the applicant had to prove a reputation attached to the particular product so that
consumers identified its product's getup as distinctive of applicant's goods. The reputation relied upon must have
been in existence at the time the respondent entered the market. Whether a reputation was acquired is a question
of fact and has to be resolved with reference to the available evidence. The Court accepted the detailed evidence
adduced by the applicant, and found that the applicant had established a reputation which it was entitled to
The next question was whether the parties' products' getups were deceptively similar. It was not necessary for
the applicant to allege or prove conscious intent to deceive on the part of the respondent. Comparing the getups
of the competing products, the Court was satisfied that there was a reasonable
Page 530 of  3 All SA 529 (T)
likelihood of confusion if both were to be used together in a normal and fair manner, in the ordinary course of
The interdict sought by the applicant was granted, and the respondent was prevented from passing off its
product as that of the applicants'.
For Intellectual property see:
· LAWSA First reissue Vol 29
Cases referred to in judgment
AdcockIngram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W)
Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd  4 All SA 235
(2001 (3) SA 884) (SCA)
Capital Estate & General Agencies (Pty) Ltd and��others v Holiday Inns Inc
and others 1977 (2) SA 916 (A)