"A name has a secondary meaning for the purposes of passing off once the association between it and the
business or product which bears it is so close that, in the minds of the public, it is distinctive of that specific
business or product, identifying such rather than any other."
[20] The law reports contain a number of cases dealing with the rights flowing from the use of descriptive words
which have been used to identify the goods or services of a trader or of a business. The dangers attendant
on the use of such words, if exclusivity for the words is sought, are obvious and are recorded as follows:
"A trader who uses a descriptive word in designating his business must ordinarily submit to the risk of some
confusion arising among the public if another trader uses the same word in relation to his business." (Link Estates
(Pty) Ltd v Rink Estates (Pty) Ltd 1979 (2) SA 276 (E) at 282B).
The same point had earlier been made in Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green Point) (Pty)
Ltd 1976 (2) SA 930 (A) at 938GH. In the Premier Motor Company (Birmingham) Ltd v Premier Driving School
(Birmingham) Ltd 79 [1962] RPC 222, the court found that the plaintiff which carried on business as a motor
company could not through the use of the word "Premier" in its name prevent the defendant, which operated
a driving school, from using the word "Premier" in its name. The following extracts from the judgment are
apposite:
"Another thing I have to bear in mind is that in a case of this sort where the name which is being used by the
defendants is not an imitation of or is not
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like some fancy name which is being used by the plaintiffs in a case such as Lawrence J mentioned in one of the
cases which was read to me. That was the case of Society of Motor Manufacturers and Traders Ltd v Motor
Manufacturers' and Traders' Mutual Insurance Company Limited [1925] Ch. 675 at page 686. Lawrence J there
says: 'Where, however, there is no fraud and where a company has adopted a purely descriptive name the onus
of proving that another company, by adopting a somewhat similar descriptive name, is exposing the credit or
business reputation of the former company to risk or probability of injury, the onus is in my opinion a very heavy
one.' It seems to be that the onus on the plaintiffs in the present case of proving confusion so as to entitle them to
relief is a heavy onus.
. . .
There may be and there may already have been some confusion in the sense that some embarrassment or
inconvenience may have been caused to the plaintiffs by a similarity of the names, but that is a matter which is
probably inevitable where two companies each with the name Premier are carrying on business near at hand. As I
have said, it does not seem to me that the plaintiffs are entitled to any monopoly of that name and if they choose
as a title for their company a word such as 'premier' which is in common use, then in one sense they are inviting a
certain amount of confusion or embarrassment or inconvenience, because it may well be that there are other
companies or firms nearby who are similarly using that name as a part of their title." (at 224).
Although counsel for the applicants submitted that I should infer that because the first defendant changed its
name to Value Car Hire in July 1998, it did so because it was aware of the activities of the applicants. I am
unable to make such an assumption. Beukes specifically denies that he had any knowledge whatsoever of the
applicants' business at the time that he changed the name of his close corporation and gives reasons as to
why he chose the new name. On the basis of the rule in PlasconEvans Paints Ltd v Van Riebeeck Paints (Pty)
Ltd 1984 (3) SA 623 (A), his version must be accepted.
[21] In the present case "value" performs a descriptive or adjectival function in the name of each of the
businesses in question. On its own it is not in any way distinctive of either of the businesses, nor is it
characteristic of the goods or services in respect of which it is used. In my view, such evidence as has been
presented on behalf of the applicants does not establish that a substantial number of people regard the word
"value" as distinctive of the applicants' business. Telephone calls to the applicants' business in 2003 from
people enquiring as to the hiring of cars from Value Car Hire, as testified to by certain employees of the
applicants do not go far enough, nor do affidavits, four in number, from employees of clients of the applicant
to the effect that if they were to see the name "Value" on a car, they would make the association with the
applicants and accept that the car was associated with the applicants' business. However, even if I should be
wrong on this score, it is quite clear that the applicants have failed to establish that as at July 1998 a
substantial number of members of the public regarded the word "Value" as distinctive of the applicants'
business either in Cape Town or at all.
Trade mark infringement
[22] I do not propose to deal with the alleged trade mark infringement in much detail, for as I have already
indicated, very little attention was paid
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to it, either in the papers or in argument on behalf of the applicants. In the founding affidavit the three trade
marks owned by Value Logistics are listed and only the following is said with regard to the alleged
infringement:
"The First Respondent is infringing these trade marks through the use of the 'Value' mark in relation to services
identical to those in respect of which the trade marks are registered, namely car hire and leasing services. In
doing so, the First Respondent is contravening the provisions of sections 34(1)(a) and (b) of the Trade Marks Act
194 of 1993." ("the Act").
Apart from these references, the rest of the founding affidavit refers to the alleged rights which the applicants
have to the "Value" mark and not to the registered trade marks.