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[18] It is trite that a new case cannot be introduced in reply which was not made out in the founding affidavit.3 If
regard is had to case law, especially that emanating from foreign jurisdictions, "visual use" is considered to be
a separate cause of action from that of the use of keywords.4 Even the applicant acknowledges this by
describing visual use in the supplementary affidavit as "a new and additional infringement".
[19] The case for visual use should have been made out in the founding affidavit. It was never suggested in the
founding affidavit, or indeed in reply, that the respondent was using the mark "ClearVu" in the text of its
Google advertisement. It is not open to the applicant to raise it as an additional cause of action at a much
later stage of the proceedings. Whether a further set of affidavits should be permitted is essentially a
question of fairness to both parties.5 To admit the applicant's affidavit at a much later stage of the
proceedings would clearly be prejudicial to the respondent.
[20] Significantly, the relief sought in the notice of motion is in relation to the use of a keyword. To include visual
use would require an amendment of the notice of motion which was not sought. In any event, the respondent
denies the visual use and in a claim for final relief the PlasconEvans rule6 applies and the respondent's
version must prevail.
[21] In the circumstances, the further affidavit dealing with the visual use of "ClearVu" is not admitted into
evidence. Accordingly, the case against the respondent is confined to "keyword use" as set out in the notice
of motion.
The common law
[22] In the absence of a registered trade mark, the applicant's case is confined to unlawful competition in terms of
the common law. The applicant relies on two common law causes of action, passing off and "leaning on".
Counsel for the applicant acknowledges that the latter is not part of our law but urges the court to develop
the common law in terms of section 173 of the Constitution.7 The respondent on the other hand contends
that "leaning on", albeit under different descriptions, has been considered and specifically rejected as forming
part of our law; and that, in the absence of passing off or the infringement of a statutory right, there is no
prohibition to the appropriation of another's wellknown trade mark.
[23] Passingoff consists of a false representation made by one trader to members of the public that the goods of
a rival trader either belong to him or are connected in the course of trade with his own business. Passing off
erodes the plaintiff's goodwill. The requirements for a successful interdict
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for passing off are reputation and deception. Reputation in this context is whether the sign or mark has
become distinctive enough in the eyes of the public to denote a particular origin of the goods concerned.
Deception in this sense is whether the use of the mark is likely to deceive and cause confusion which would,
to a significant part of the buying public, cause confusion as to its origin and therefore influence their decision
to procure it. The final requirement is an injury, actual or probable, to the plaintiff's business.8
[24] A statutory infringement is a much narrower inquiry based on an infringement of another's mark whereas a
cause of action based upon passing off is a remedy for the invasion of a right in the property, not the mark.
This pertains to the business or goodwill likely to be injured by the misrepresentation made by passing off
one's own goods as the goods of another.
[25] In order to succeed the applicant will either have to prove the requirements of passing off or persuade the
court that the time has come to develop the common law to include "leaning on".
Leaning on
[26] The authority on which the applicant relies, for the proposition that "leaning on" forms part of our law, is the
textbook "Unlawful Competition" by Van Heerden and Neethling.9 The authors are of the view that where a
trader "leans on" the reputation or good name of another trader for his own profit and financial gain, this is
actionable as unlawful competition even in the absence of passing off (ie in the absence of confusion or
deception).
[27] At page 195, the learned authors describe "leaning on" thus:
"Leaning on occurs when one entrepreneur, in order to advertise his performance, and in this way promote and
expand his goodwill, uses the advertising mark of another entrepreneur. In other words, he misappropriates or
utilises the advertising value which, for example, the trade name, trade mark or service mark of the other
entrepreneur has in connection with the latter's own undertaking goods or services. Thus he leans on the reputation
or good name of the others performance for his own profit and financial gain. Leaning on may occur between
competitors as well as noncompetitors, and it may take place either openly or in a concealed ('bedekte') manner". 10
[28] "Concealed leaning on" occurs where a trader attempts to draw customers, not through the merits of its own
performance but those of his rival's wellknown brand or performance. This, it is said, generally takes place in
the context of passing off, in which case unfair advantage is taken of the distinctive value, the advertising
value and the origin value of a trade mark.11 It is acknowledged that passing off usually provides adequate
protection for these interests and therefore separate reliance on "leaning on"
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is generally unnecessary.12 However, in the absence of passing off, the proprietor of a trade mark which has
a reputation should be protected against misappropriation of that advertising value,13 particularly where