there is a real danger of dilution of the advertising value of the trade mark.14
[29] The question is therefore whether "leaning on" as described by the authors can constitute a cause of action
in our law, independent of passing off or a statutory claim for trade mark infringement. In other words, does
the common law prohibit the use of another's good name in terms of unlawful competition?
[30] Our courts have, on several occasions, expressed their disapproval of monopolies, other than those
statutorily protected. The Constitutional Court has held that no trader has the right to be immunised from all
competition, except in instances of statutory prohibition.15 The general rule is that the mere fact that a
person has made a name famous does not give him/her a right of property in the name. He/she cannot stop
other entrepreneurs from making use of the famous name in the marketing of their goods as long as there is
no likelihood of confusion as to the origin of the goods.16
[31] In Moroka Swallows Football Club Ltd v The Birds Football Club and others, a judgment of this division, Stegmann J
said:
"Provided that he does not commit the delicts of defamation or passing off or offend against any specific statutory
prohibition, there is no reason why an entrepreneur should not take the benefit of such advantage as he may be able
to gain in the marketing of his goods and services by associating them with names that have become famous."17
[32] The court stated that the wide genus of competition law was not there to save a litigant who could not prove
the essential requirements of passing off. A similar view was expressed by the Appellate Division in Payen
Components SA Ltd v Bovic CC and others. The court cautioned that unlawful competition should not be added
as a "ragbag and often forlorn final alternative to every trade mark, copyright, design or passing off action."
18
[33] In Union Wine v Edward Snell,19 the court found that no monopoly was created in a name merely because it
had been used for so long. It went on to say:
"I am unaware of any case in which it has been held that copying of an unregistered trade mark is unlawful in the
absence of confusion. The cases of
Page 171 of [2015] 2 All SA 162 (GJ)
Adcock Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 437E F20 and authorities there quoted,
and Pasquali's case supra at 479 are illustrative of the contrary.
However great a reputation and goodwill it may have built up and however much money and energy may have been
expended to achieve its share of the market, an unregistered trade mark or name has no statutory or judicial
protection and it may be appropriated by competitors provided they do not mislead the public by passing off or
compete unlawfully in some other manner . . .
The principle of free and active competition in the market is public policy in South Africa and monopolies are regarded
with disfavour."2 1
[34] The Supreme Court of Appeal has stated in no uncertain terms that the practice of seeking to introduce a
cause of action based on what it referred to as some vague notion of unlawful competition as a tackon to
passing off should be brought to a halt. Schutz JA in the case of Blue Lion Manufacturing (Pty) Ltd v National
Brands Ltd22 frowned upon this conduct as a way in which to bypass the need to prove the likelihood of
deception and confusion. The lengthy record in that matter was attributed to the fact that the applicant had
run a case based on unlawful competition in tandem with its passing off case. The court went on to say:
"This, despite what was said (if not in so many words) in Payen Components SA Ltd v Bovic CC and Others
1995 (4) SA 441 (A) at 453G H concerning the illegitimacy of using some general notion of unlawful competition to
create an ersatz passing off with requirements (in the alternative) less exacting than those required by the common
law. Some of the restraints that the common law places on the passingoff action (the one relevant to this case is the
need to prove the likelihood of deception and confusion) are important in preventing the creation of impermissible
monopolies. That is all I have to say on the alternative cause of action, save that it is a pity that the appellant did not
ask for a special order for costs."23
[35] It is evident that "leaning on", albeit described somewhat differently, has indeed been dealt with in our law
and rejected. The courts have unanimously held that in the absence of passing off, no proprietary rights can
be enjoyed in an unregistered trade mark. Litigants have repeatedly faced criticism for attempting to
introduce causes of action based on unlawful competition when confronted with difficulties in proving passing
off.
[36] Insofar as the applicant argues dilution, this too has been dealt with by our courts. Dilution occurs when the
offending use dilutes the uniqueness and distinctive nature of the trademark. The dilution reduces the ability
of the trademark to identify and distinguish the goods and services of its proprietor from those goods which
have a different origin.
[37] The Appellate Division considered an argument based on the dilution of the advertising value of an
unregistered trade mark advanced before it in Philip Morris Inc and another v Marlboro Shirt Co SA Ltd and
another.24 The court found that in our law a trade mark per se is not protected by the law
Page 172 of [2015] 2 All SA 162 (GJ)
of passing off but rather by registration in terms of the Act. The common law protects the goodwill in a trade
mark and no more. The other rights which inhere to famous trade marks (such as the advertising value) can
only be enforced statutorily, in terms of the Trade Marks Act.25
[38] Although the old Trade Marks Act 62 of 1963 was applicable at the time of the Phillip Morris case, the Supreme