"COMPARISON OF FAL AND ABBOTT PRODUCTS"
"FAL GA4/7 compared with ABBOTT FA4/7"
"FAL GA4/7 compared with ABBOTT GA4/7 Profitability"
and in respect of ABBOTT also I conclude that the requirement of the section in relation to goods has been met. The
result of my finding is accordingly that comparative advertising in the form used by the second respondent falls
within the purview of section 34(1)(a) of the 1993 Act.
Unlawful competition
The case of the applicants is somewhat novel. It is that all of the respondents are competing unlawfully with the
applicants, contrary to section 62(1)(a) read with
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section 62(2) of the 1993 Act, by representing in the brochure that trade mark PERLAN is registered. The
representation is in the form of a small letter "r" in a circle which appears next to the name PERLAN. The second
respondent admits that the PERLAN trade mark is not registered in South Africa. PERLAN is registered as a trade
mark in the United Kingdom and the representative of the second respondent says in the second respondent's
answering affidavit that the usage of the registered trade mark indication referred to above on the South African
product label was inserted into the technical training document in error. He says there was no intention to mislead
anyone and the second respondent has undertaken immediately to cease all use of this designation in South Africa
until such time as the PERLAN trade mark is registered in this country. It will be remembered that an application for
registration of the mark was filed in 1997 and is still pending.
Section 62(1) makes it an offence for any person to represent that a mark is registered if it is not so registered
and section 62(2) provides that the symbol ® shall be deemed to import a reference to registration in the register.
Ms Jansen's argument was that, given the purpose of a trade mark, the unlawful act of the second respondent in
holding out that the mark PERLAN is registered when it is not will lead to a dilution of the applicant's registration.
While an act committed in contravention of a statutory prohibition may be unlawful, unlawful competition will be
established only if the other requirements of the delict are satisfied. While it may not be necessary for the
applicants to prove the fault for the purpose for obtaining a temporary interdict, the applicant has not furnished any
evidence of
View Parallel Citation
damage which it will suffer and more importantly, the question of legal causation has not been adequately
addressed.
Having regard to the requirements for the delict of unlawful competition as set out in Atlas Organic Fertilisers v
Pikkewyn Ghwano (Pty) Ltd and others 1981 (2) SA 173 (T) at 186189 and Schultz v Butt 1986 (3) SA 667 (A), I
conclude that the applicant has failed to establish and prove the necessary requirements. Having said this, the
order which I intend to make in regard to the infringement application, coupled with the second respondent's
undertaking to cease all use of the designation ® will provide effective relief for the applicant.
I have already indicated that in my view the first applicant has succeeded in establishing that its trade mark
rights have been infringed and that consequently it has established a clear right or at the very least a prima facie
right to the relief sought. I am also satisfied that the other requirements for a temporary interdict as set out in LS
Boshoff Investments (Pty) Ltd v Cape Town Municipality 1969 (2) SA 256 (C) at 267, namely:
.
that there is a well grounded apprehension of irreparable harm if the interim interdict is not granted and the ultimate
relief is eventually granted;
.
that the "balance of convenience" favours the grant of an interim interdict; and
.
that the applicant has no other satisfactory remedy have been met.
For the sake of completeness I must deal with an application by the respondents to strike out:
1.
paragraph 11.10 and 11.11 of the founding papers on the basis that these paragraphs constitute hearsay evidence,
and
2.
the affidavits of Johan Carl Muller and Jacobus Philip Hartman filed in reply��on the basis that these constitute the
introduction of new matter which should properly have been contained in the founding affidavits.
Page 516 of [1999] 1 All SA 502 (C)
To my mind the objection to the two paragraphs and the affidavits referred to were properly taken and I order that
paragraphs 11.10 and 11.11 of the founding papers and the affidavits of John Karl Muller and Philip Hartman filed in
reply be struck out. As far as the costs are concerned, although the applicants have succeeded in only one of the
three claims, they have enjoyed substantial success and, furthermore, the greater portion of argument dealt with
the issue on which the applicants have succeeded, namely the infringement of their trade marks. I consider that this
success should be mirrored in the costs order which I propose to make. I accordingly make the following order:
1.
The application for a rule nisi calling on the first respondent to show cause why an order should not be granted
declaring the first respondent to be in contempt of this honourable court and in breach of the order granted by this