nationality, domicile or place of business of the mark's owner, and moreover the fact that the relevant country is a
convention country. Before us counsel were ad idem that such an interpretation could not be supported. If it were
correct the section would be a dead letter. It is difficult to imagine any mark, however well known, in respect of
which such further facts would be common knowledge. The parties accordingly accepted (I think correctly) that it
would be enough for a plaintiff to prove that the mark is well known as a mark which has its origin in some foreign
country, provided that as a fact the proprietor of the mark is a person falling within subsection (1)(a) or (b).
The essential dispute between the parties was what level of awareness in the public mind is required for a mark
to qualify as "wellknown" in terms of section 35. In this regard it is useful to look at the background to the section.
The Paris Convention, to which reference is made in section 35, is the Paris Convention on the Protection of
Industrial Property of 20 March 1883 as
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revised or amended from time to time (section 2 of the Act). For present purposes article 6bis(1) of the Convention
is apposite. Its relevant portion reads as follows:
"The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to
refuse or to cancel the registration, and to prohibit the use of a trade mark which constitutes a reproduction, an imitation, or
a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or
use to be wellknown in that country as being already the mark of a person entitled to the benefits of this Convention and
used for identical or similar goods."
Although article 6bis was inserted into the convention as far back as 1925, neither Britain nor South Africa gave
legislative effect to it until recently South Africa in section 35 of the new act, and Britain in section 56 of the Trade
Marks Act 1994 (42 & 43 Elizabeth 2 C. 26). The two sections are very similar. Section 35(1) and (2) of the new act,
in particular, is, for practical purposes, identical to section 56(1) of the British Act, save for the substitution of "the
Republic" for "the United Kingdom" wherever it appears. The reason why Britain did not legislate earlier was that
previously it claimed to be honouring the article by means of its common law of passing off. See Richard C Abnett,
AIPPI: Famous Trade Marks Require A New Legal Weapon, Trademark World, Dec 1990/Jan 1991, p 23.
The protection granted to foreign marks by the law of passing off was limited, however, by the requirement that
a plaintiff had to establish a
View Parallel Citation
goodwill in the country. In a well known passage from The Commissioners of Inland Revenue v Muller & Co's Margarine
Ltd [1901] AC 217 (HL) at 223224 Lord Macnaghten defined goodwill as follows:
"It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and
connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old
established business from a new business at its first start. The goodwill of a business must emanate from a particular centre
or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of
attraction sufficient to bring customers home to the source from which it emanates ... For my part, I think that if there is one
attribute common to all cases of goodwill it is the attribute of locality. For goodwill has no independent existence. It cannot
subsist by itself. It must be attached to a business. Destroy the business, and the goodwill perishes with it, though elements
remain which may perhaps be gathered up and be revived again." (Emphasis added)
The "attribute of locality" mentioned in this passage led to a result described as follows in Kerly's Law of Trade Marks
and Trade Names 12th ed (1986) 358 para 1618:
"... since an essential ingredient of passingoff is damage ... to goodwill, he [i.e., the plaintiff in an action founded on
passingoff in the United Kingdom] must show that he had ... in this country not merely a reputation but also a goodwill
capable of being damaged. Goodwill, however, is local: it is situated where the business is. Thus a foreign plaintiff may have
a reputation in this country from travellers on the one hand, or periodicals of international
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circulation, for instance, on the other yet still fail in an action for passingoff because he has here no business and so no
goodwill. Such cases have been not uncommon in recent years, and have caused considerable difficulty."
Examples of such cases are Alain Bernardin et Compagnie v Pavilion Properties Ltd [1967] RPC 581 (the "Crazy Horse"
case), The Athletes Foot Marketing Associates Inc v Cobra Sports Ltd and Another [1980] RPC 343 (Ch) and Anheuser
Busch Inc v Budejovicky Budvar NP (trading as Budweiser Budvar Brewery) and Others [1984] FSR 413 (CA).
In the Alain Bernardin case the plaintiff was the proprietor and operator of a bar and cabaret in Paris known as
the "Crazy Horse Saloon". The bar had been continuously and extensively publicised in the United Kingdom for
sixteen years. The defendant commenced a place of entertainment in London under the name of "Crazy Horse
Saloon" and issued an advertisement stating "Crazy Horse Saloon comes to London". The plaintiff applied for an
interlocutory injunction against the defendant on the grounds of passing off. The application was refused. The court
referred inter alia to the Muller case (supra) and stated (at 584 lines 3047)
"... that a trader cannot acquire goodwill in this country without some sort of user in this country. ... I do not think that the
mere sending into this country by a foreign trader of advertisements advertising his establishment abroad could fairly be
treated as user in this country. ... If that were so, the range of the action of passing off would be extended far beyond
anything which has hitherto been treated as its proper scope. That observation applies I think particularly to such
establishments as hotels and even more to restaurants. It may well be that the owner of a foreign hotel or restaurant
acquires in this country a reputation for the