The Shipping Corporation of India Ltd v Evdomon Corporation and another
[1994] 2 All SA 11 (1994 (1) SA 550) (A) Referred to
354
Page 350 of [2017] 2 All SA 347 (SCA)
Verimark (Pty) Ltd v Bayerische Motoren Werke Aktiengesellschaft;
Bayerische Motoren Werke Aktiengesellschaft v Verimark (Pty) Ltd
[2007] JOL 19890 (2007 (6) SA 263) (SCA) Referred to
357
Judgment
WALLIS JA:
[1] The dried and crushed extract of Tongkat Ali, 1 a root found in Malaysia and other countries in the Far East, is
believed to have aphrodisiacal properties that enhance male sexual performance. The second appellant, Mr
Hakim Herzallah, recognised that this belief could be exploited for its commercial potential and became
involved with the production by a Malaysian company, Madar Al Jawda Sdn Bhd ("MAJ"), of capsules containing
this extract. He called the product in this capsule form "Phyto Andro".2 Since 2006, after he moved to South
Africa, it has been marketed in this country under that mark as Phyto Andro for Him. Mr Herzallah is the sole
shareholder of the first appellant, Herbal Zone (Pty) Ltd, which imports Phyto Andro into South Africa. Herbal
Zone (Pty) Ltd was formerly a close corporation, Herbal Zone CC. In 2015 it was converted into a private
company. As nothing turns on the conversion I will refer to them both as Herbal Zone. He also said that he
was the majority shareholder in a Malaysian company called Herbal Zone International Sdn Bhd ("Herbal Zone
International") that he refers to as the manufacturer of Phyto Andro. He annexed a letter to his affidavit in
support of this statement and an extract from the Herbal Zone International's register of directors. These
showed that he was appointed as a director in 2008 and recorded that in 2009 he was a 51% shareholder in
Herbal Zone International. There was no documentary evidence that this remained the position when these
proceedings were commenced.
[2] From 2009 until 2014 the first respondent, Infitech Technologies (Pty) Ltd ("Infitech"), was the sole distributor
in South Africa of Phyto Andro in terms of a distribution agreement concluded with Herbal Zone. The present
dispute arose from events after the termination of that sole distributorship. The second respondent, Herbs
Oils and Co (Pty) Ltd ("Herbs Oils"), had been formed in advance of the termination by Mr and Mrs Moisane,
the shareholders of Infitech and the third and fourth respondents. Herbs Oils has since 2014 distributed a
product in South Africa, also under the name Phyto Andro for Him, in competition with the product imported by
Herbal Zone. This competing product is imported by Infitech, which says, somewhat cryptically, that it has
procured it from an unidentified manufacturing source in Malaysia.
Page 351 of [2017] 2 All SA 335 (SCA)
Although neither Herbal Zone nor Herbs Oils has secured registration of "Phyto Andro" as a trademark, the
packaging that each uses for its own product includes after the words "Phyto Andro" the standard symbol ®
used to indicate such registration.
[3] In addressing the competition from Herbs Oils product, Herbal Zone took out advertisements in a popular
newspaper, the Daily Sun, at the foot of which appeared, in fairly small print, the following statement:
"HERBAL ZONE CC WILL NOT BE RESPONSIBLE FOR THE CONTENT IN ANY OTHER PACKAGING!
LEGAL ACTION WILL BE TAKEN AGAINST SUPPLIERS SELLING/PURCHASING 'COUNTERFEIT PHYTO ANDRO
CAPSULES'
Herbal Zone is the Manufacturer and supplier of Phyto Andro Capsules".
[4] In addition, Herbal Zone distributed a circular to the pharmacies and outlets through which it was distributing
Phyto Andro containing the following warning:
"URGENT NOTICE!!!
To All Clients,
Herbal Zone CC, manufacturer of Phyto Andro Capsules would hereby like to inform ALL CLIENTS that Infitech
Technologies is NO longer our Sole Distributor.
Herbal Zone CC will not be responsible for the content in any other PACKAGING! and hereby warns any Company
purchasing Phyto Andro capsules for Him ILLEGALLY from Herbs Oils and Co (Infitech Technologies) as this is a
counterfeit product.
LEGAL ACTION WILL BE TAKEN AGAINST SUPPLIERS 'SELLING/PURCHASING' COUNTERFEIT PHYTO ANDRO
CAPSULES for HIM.
*****The Original Phyto Andro Capsules for Him has Herbal Zone printed on the Capsules*****
Please contact Herbal Zone CC directly for Phyto Andro Capsules orders and we will refer you to ONE of our
distributors in your area."
[5] The circular was on a letterhead saying it emanated from Herbal Zone International CC. On the left hand side
of the document was a spiral device logo and below that the word "Herbal". Below that in turn appeared the
slogan "For Better Health". Under the name Herbal Zone International CC Herbal Zone's contact details,
including its email address and website address, are printed. At the foot of the document were references to
another entity called Herbal Zone International, based in Twickenham in the United Kingdom, and to Herbal