Court of Appeal and the Constitutional Court have recognised that section 34(1)(c) of the new Act preserves
the commercial value that attaches to the reputation of the trade mark its advertising value and selling
power. The section was designed as an antidilution protection of the unique identity and reputation of a
registered trade mark rather than to prevent any form of confusion.26 It, therefore, seems to me that if the
applicant is to be afforded any protection for dilution, the remedy would lie in terms of section 34(1)(c) of the
Act rather than any claim under the common law.
[39] I, accordingly, conclude that there is no room in our law for the applicant to avail itself of "leaning on" as a
common law action independent of passing off or statutory registration. I am unpersuaded that in terms of
section 173 of the Constitution, I need develop the common law in this regard. The interests of justice and
the enjoinment to develop the common law in order to promote the spirit, purport and objects of the Bill of
Rights27 find no applicability in this instance. Moreover, the Competition Act 89 of 1998, which is post
Constitution legislation, does not list "leaning on" as one of the prohibited practices. The applicant must fail in
its attempt to base its cause of action on "leaning on".
Passing off
[40] What remains to be determined is whether the applicant meets the threshold for passing off, namely
reputation and confusion. As stated previously, the essence of an action for passing off is to protect a
business against a misrepresentation of a particular kind, namely where a party represents that the business,
goods or services of another are its own or associated therewith. Misrepresentations of this kind can be
committed only in respect of a business that has goodwill. The only component of goodwill that can be
damaged by means of passing off is its reputation. For this reason proof of reputation is an essential
component of passing off.
[41] Before determining whether the applicant has proved reputation, the question is whether the other
prerequisite for passing off, namely deception and confusion has been met. 28 The applicant is required to
prove that
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the respondent's use of the mark is likely to cause confusion amongst a substantial number of consumers as
to the origin of the mark. If the applicant cannot show that the use of "ClearVu" as a keyword causes
confusion, this will be dispositive of the applicant's case.
[42] The respondent argues that as the applicant has conceded that this is not a "getup" case, it is difficult to see
how any misrepresentation is made to the public. In the New Zealand case of InterCity Group (NZ) Ltd v
Nakedbus NZ Limited29 the advertisement of the Naked Bus company appeared when the keyword "intercity"
was typed into the Google search engine. The InterCity bus company complained of an infringement of its
trade mark. The court found that in these circumstances because the use by Nakedbus of the InterCity's trade
mark as a keyword was not seen by the consumer, merely by Google and the advertiser, it could not be taken
"as being used as a trade mark".30 Similarly, argues the respondent, the respondent's use of the keyword
"ClearVu" is invisible to the public so no representation is made to them.
[43] The applicant asserts that foreign case law is supportive of its case that keyword advertising is unlawful.
Particular reliance is placed on the decisions of the Grand Chamber of the European Court of Justice especially
Google France SARL v Louis Vuitton Malletier SA;31 Interflora Inc v Marks and Spencer Plc32 and the recent case
from the Intellectual Property division of High Court of England and Wales, Cosmetic Warriors Ltd & Lush Ltd v
Amazon.co.uk Ltd and another.33 What should be emphasised is that the decisions emanating from the
European Court of Justice do so in the context of article 5 of the directives of that court. Article 5, which is
entitled "Rights conferred by a Trade Mark", provides that a registered trade mark shall confer on the
proprietor exclusive rights therein who shall be entitled to prevent all third parties from using an identical
trade mark in the course of trade.34 The use of a sign where, because of its identity with the trade mark, is
likely to cause confusion on the part of the public is prohibited.35 The European Court of Justice in Google
France found that in this context keyword advertising by using a keyword identical with a registered trade
mark constitutes "use" in the course of trade.36
[44] However, the European and English decisions are not authority for the proposition that advertising using
another trader's trade mark as a keyword is prohibited. Nor are they authority that keyword advertising is
likely to cause confusion. Instead, the courts have held that the proprietor of a trade mark cannot oppose the
use of an identical mark unless it causes
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detriment to the functioning of the mark in that it is likely to cause confusion as to the origin.37
[45] In the one instance, Interflora Inc Plc, Interflora British Unit v Marks and Spencer Plc, Flowers Direct Online where
the court found that the use of a sign identical to a trade mark as a keyword did indeed cause confusion, it
was observed that:
". . . the starting point for assessing Interflora's claims [a keyword advertising claim involving the use of a famous
mark] in the present case is that, as is common ground, keyword advertising is not inherently or inevitably
objectionable from a trade mark perspective. On the contrary, the case law of the CJEU in this field recognises that,
as a general rule, keyword advertising promotes competition: see in particular Google France at [69] and Interflora
(CJEU) at [58]."38
[46] The European Court of Justice has deferred to the national referring courts of the member states to decide
whether the use of the mark in question affects the functioning of the mark. This is dependent on the