of the launching of the proceedings, but counsel for the respondents initially argued that in regard to the
leasing out of motor vehicles there was no common field of activity between the parties. It is clear from the
papers that the business of the second applicant was predominantly the supplying of logistical services in the
transportation industry and that its involvement in letting motor vehicles, which was very sketchily described,
was until 2004 restricted to Gauteng. It was accordingly submitted on behalf of the respondents that since
the applicants had not carried on the business of the leasing of motor vehicles in the Western Cape, no
passingoff could have occurred there. As was pointed out in Capital Estates (supra) the absence of a common
field of activity is not a bar to a claim for passingoff if the evidence establishes that there is a reasonable
likelihood of confusion arising, but it is a factor which must be taken into account when considering whether
someone's conduct is likely to lead to confusion.
Page 481 of [2005] 4 All SA 474 (C)
[16] Although Gottschalk alleges that "Value has advertised extensively and with increasing intensity since 1980"
(the date of 1980 is presumably given in error, since the business appears to have started in 1981), he gives
virtually no details of any advertising effected before July 1998 and he certainly gives no details of any
advertising done in the Western Cape before that date. The only details supplied are:
(a)
A copy of a cautionary announcement appearing in the Business Report published by the Star
newspaper on 17 September 1997 in which it was announced that Vestacor Limited had acquired a
30% interest in "Value Truck Rental". The logo of a truck which is incorporated in the trade mark
appears on the announcement which contains no reference to the Value Group or to the mark "Value"
as such.
(b)
A report in the Citizen newspaper of 18 September 1997 to the effect that Vestacor had purchased 30%
of the equity in Value Truck Rental. There is no reference to the Value Group or to the mark "Value".
(c)
An extract from the June 1998 issue of a publication known as South African Transport in which the
business of Value Truck Rentals and its history is fully described. No details as to the target market for
or the circulation figures of the publication are furnished, but to judge from the name of the publication,
it is probably intended for a specialised market and not for general consumption. There is no reference
to the Value Group or to the mark "Value" in the extract.
[17] Gottschalk says that the second applicant advertises extensively nationwide and that its name appears on
billboards, pamphlets, advertisements placed in magazines and newspapers and on its signage across the
country. Promotional material is distributed on a regular and ongoing basis to clients and prospective clients
of Value Logistics, the clients being companies and other entities involved in some form of trade. The "Value"
mark appears on stationery, invoices and Christmas cards and many other forms of promotional material. He
says that "Value" also exhibits at various trade exhibitions. The difficulty with this is that it all relates to
advertising and publicity which occurred after the listing of the Value Group. All the articles and reports in the
newspaper which are referred to in the papers, save those mentioned in paragraph [16], are dated from
October 1998 and thereafter, with the bulk appearing from 2002 onwards. Having regard to the fact that the
onus rests on the applicants to establish their reputation in the mark "Value" as at 8 July 1998, all advertising
and publicity material after this date is, in my view, irrelevant for the purpose of establishing the applicants'
reputation in the mark.
[18] Counsel for the applicants submitted that I should infer that notice of Value Group's listing in 1998 would have
been published in 1997 and that this would have ensured wide exposure for the applicants' service. There is
no suggestion in the papers that any publicity relating to the listing occurred in 1997. Reference to the
prospective listing was published in the financial press, but the extracts attached to the founding affidavit are
all dated in October 1998. Counsel also submitted that the applicants had a countrywide reputation and
pointed to the fact that Value Trucks had a depot in Cape Town. As to this aspect, there is no indication as to
the
Page 482 of [2005] 4 All SA 474 (C)
date of the establishment of the depot in Cape Town. Whether the applicants have acquired a reputation in
the Western Cape at the time of the launching of these proceedings is not the issue. The issue is whether
they had such a reputation when the first respondent started his business in the Western Cape. It seems
clear that although the Value Group was listed some time in 1998, the change to the applicants' branding
which resulted in the emphasis being placed on the word "Value" occurred only in 2002. Counsel submitted
that the word "Value" had been used since 1981, but if by that she meant that emphasis had been placed
solely on the word "Value" since 1981, such evidence as is before me is to the contrary. The applicants' case
is that it has used the word or the mark separately and apart from the trade marks to identify not only the
group but also the separate divisions which it operates. Again, all the evidence before me is to the effect that
this occurred only after the listing of the Value Group and probably after 2002. Therefore, although Gottschalk
refers throughout to the "Value" mark as if it had been used separately and apart from the trade marks, I
conclude that the applicants have not established that as at July 1998 they had established a reputation in
the Western Cape in the mark "Value".
[19] Although I have found that the applicants have failed to establish their reputation in the mark "Value" as at
July 1998, I will nevertheless deal with the other defence to the claim based on passingoff which was raised
on behalf of the respondents. This is to the effect that since "Value" is an ordinary word having a laudatory
meaning, the applicants cannot acquire exclusive rights to the use of the word. For the applicants to succeed
they must show that "Value" has acquired a secondary meaning. In BoswellWilkie Circus v Brian Boswell Circus
(Pty) Ltd 1984 (1) SA 734 (N) Didcott J explained at 737G that: