Zone International.
[6] In addition to the advertisements and the circular, Herbal Zone employed a private investigator, a Mr Ali, to
investigate the source and origin of the competing product. Mr Ali appears to have approached his task with a
considerable measure of vigour and enthusiasm resulting in the Commercial Branch of the South African Police
Services, on 21 May 2015, obtaining a search and seizure warrant under the provisions of the Counterfeit
Goods Act 37 of 1997 (the "Counterfeit Goods Act") and executing it at the premises of Infitech and Herbs
Oils. At the end of the search Mr Mosiane and the fifth respondent, Mr Jekecha, the financial
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manager of the business, were arrested and held overnight at the Germiston Police Station. Certain stock
was removed and detained by the police for a period of about two weeks. It was released when it became
apparent that it could not be confiscated in terms of the Counterfeit Goods Act.
[7] These actions by the police, and a further incident in July 2015 involving an alleged threat by the appellants'
representatives to take legal action against a Ms Tshite of Protea Family Pharmacy for selling the Phyto Andro
products, were the last straw as far as Infitech, Herbs Oils and Mr and Mrs Mosiane were concerned. On
31 July 2015, they launched proceedings in the Western Cape Division of the High Court seeking a number of
interdicts against Herbal Zone, Mr Herzallah and two other entities, which are now undertaking the
distribution in South Africa of the Herbal Zone Phyto Andro. The proceedings were opposed and the
respondents counterapplied for an interdict restraining the applicants from marketing, selling, advertising,
promoting or presenting consumable herbal capsules using trademarks, labels or names including the words
Phyto Andro or packaging confusingly similar to that being used by Herbal Zone and its distributors. They
contended that Infitech and its associates were passing off their product as that of Herbal Zone.
[8] The application came before Bozalek J who granted certain of the interdicts sought by Infitech and its co
applicants on the basis that the statements made about Infitech and Herbs Oils in the advertisements and
circular were defamatory. He dismissed the counterapplication on the basis that Herbal Zone failed to
discharge the onus of proving that the reputation and goodwill attaching to Phyto Andro, as marketed in
South Africa, vested in Herbal Zone, as opposed to Herbal Zone International, which was not a party to the
application. The appeal is with his leave. In arguing it, the parties treated the passing off claim as the principal
issue and the defamation claim as secondary. Accordingly I will address them in that order in the judgment,
albeit that they arose in the converse order in the course of the litigation in the High Court.
Passing off
[9] There is no dispute over the relevant legal principles. Passing off occurs when A represents, whether or not
deliberately or intentionally, that its business, goods or services are those of B, or are associated therewith.
It is established when there is a reasonable likelihood that members of the public in the marketplace looking
for that type of business, goods or services may be confused into believing that the business, goods or
services of A are those of B or are associated with those of B.3 The misrepresentation on which it depends
involves deception of the public in regard to trade source or business connection and enables the offender to
trade upon and benefit from the reputation of its competitor. Misrepresentations of this kind can be committed
only in relation to a business that has established a reputation for itself or the goods and services it supplies
in the market and thereby infringe upon the
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reputational element of the goodwill of that business. Accordingly proof of passing off requires proof of
reputation, misrepresentation and damage.4 The latter two tend to go hand in hand, in that, if there is a
likelihood of confusion or deception, there is usually a likelihood of damage flowing from that.5
[10] If Herbal Zone had the requisite reputation in South Africa then the other requirements of passing off were
satisfied. The packaging of Herbs Oils' product uses the same name, Phyto Andro, to describe the product and
the packaging is very similar. The name Phyto Andro is not descriptive of the product, but is an invented mark
attached to it in order to distinguish it from other products of a similar type. By calling their product Phyto
Andro there is plainly a representation to the public that when they buy Herbs Oils' product it is the product
that enjoys a reputation in South Africa under that name. And, if customers buy Herbs Oils' product in the
belief that it is the product they have previously bought or known under the Herbal Zone mark, there will be
damage. The crucial question was therefore whether Herbal Zone enjoyed the reputation attaching to Phyto
Andro in South Africa.
[11] Given the centrality of this issue to the outcome of the claim for an interdict based on passing off, one would
have expected the parties to address it fully and ask the court to resolve it. But they did not do so, preferring
to keep their powder dry for a future battle over the registration of Phyto Andro as a trademark. Herbs Oils,
while claiming that the reputation had attached to its predecessor Infitech and had been transferred to it,
said that it was unnecessary to determine who the true proprietor of the Phyto Andro mark was. Herbal Zone
responded by saying that it had set out its case for proprietorship and it was undeniable. It added that this
would have a bearing on future proceedings before the Registrar of Trademarks, but said that in the
meantime it was entitled to enforce its common law rights. So we were faced with the curious situation that,
in a case where reputation is central, the one party has refrained from setting out in full its case on the point
and both parties appear to adopt the stance that these issues will be thrashed out more fully when the
Registrar of Trademarks deals with various pending applications for registration of a number of marks. In the
circumstances, this judgment cannot be taken to be a final determination of that issue, binding on a court in
any subsequent proceedings. All that it deals with is whether the evidence tendered in this case established
that the reputation attaching to the Phyto Andro mark vested in Herbal Zone.