an infringer attempting to reproduce and substitute for the goods (not just the trademark) of the
trademark owner." 5 That is why the Act is concerned with trademark and copyright infringements that are
criminal in nature. The Act does not permit a rights holder to steal a march on an alleged infringer in order to
settle a bona fide dispute about the boundaries of rights. Those disputes should be litigated under either the
Trade Marks Act or the Copyright Act.6
[7] The prayer relating to an inquiry into damages flowed from the provisions of section 17(1) of the Act, which
provides that any person suffering damage or loss caused by the wrongful seizure, removal or detention of
goods alleged to be counterfeit is entitled to claim compensation from the complainant for that damage or
loss. This must be read with section 10(1)(c) which states, inter alia, that a court "in any civil or criminal
proceedings relating to counterfeit goods" may order:
"that the complainant pays damages, in an amount determined by the court, to the person from whom those goods
were seized and pays that person's costs."
[8] The court postponed this prayer sine die. For reasons that are not now germane, Cadac did not take further
formal steps in relation to the inquiry into damages until three years and two days after the judgment of
Schwartzman J when it applied by means of an interlocutory application
Page 348 of [2011] 1 All SA 343 (SCA)
for directions for the conduct of the inquiry, something not regulated by any court rule. The crux of Weber
Stephen's answer was a multifaceted reliance on prescription (in some instances somewhat of a misnomer)
and a counter application for an order declaring that Cadac's claim had become prescribed. Not all were
persisted in during the appeal.
[9] One of these arguments was based on the fact that Schwartzman J did not deal with the question whether or
not the goods were counterfeit. WeberStephen argued in the court below that the provisions of section
10(1)(c) and section 17(1) in those circumstances did not provide a cause of action for the recovery of
damages. The cause of action, according to the submission, was dependent on a finding that the goods were
not counterfeit. Brett AJ dismissed the argument and WeberStephen did not attempt to revive it in this court.
It does not appear from the papers that WeberStephen has instituted any trademark infringement
proceedings against Cadac.
Inquiry into damages: is it permitted?
[10] The first issue to decide is whether the proceedings launched by Cadac for an inquiry into damages is
competent because, as was argued by WeberStephen, it is not at all permissible to bring an illiquid claim by
means of motion proceedings. This much was said by Murray AJP in Room Hire.7 The main reason for the
statement is in general terms unobjectionable. It is that motion proceedings are not geared to deal with
factual disputes they are principally for the resolution of legal issues8 and illiquid claims by their very
nature involve the resolution of factual issues. The related reason concerns the lack of pleadings.9 The other
objection, namely that motion proceedings give the applicant a procedural advantage because the
respondent is not entitled to rely on a bald denial as is possible in trial proceedings and that it would be
unfair to deprive the respondent of this advantage, no longer holds water.10 Litigation is not a game.
[11] The fact of the matter is that Cadac does not seek to have its illiquid claim decided by means of motion
proceedings and that these objections have no bearing on the matter. What it does seek are directions as
how to proceed with the quantification of its claim for damages to which it is entitled by virtue of the statute
and the findings by Schwartzman J.11 The irony of the objection is that if it had proceeded by way of
application for an interdict based on trademark infringement, WeberStephen, if successful, would have been
entitled to an order directing an inquiry into
Page 349 of [2011] 1 All SA 343 (SCA)
damages and directions as to the procedures to be followed.12 But since the proceedings by Cadac are not
trademark infringement by a quirk of somewhat ossified procedural law the same procedure is said not to be
available.
[12] Courts have refused to make orders for an inquiry into damages because the relief, which is found in English
procedural law, is not dealt with in our court rules.13 But, as Nicholas J pointed out in Harvey Tiling,14 such
orders have been granted without objection in patent actions at a time when there was no available local
rule. And, as he showed, courts are able to craft an appropriate order for an inquiry into damages without the
need for a rule. One finds regularly that parties agree or courts order that issues concerning liability are to be
decided first and quantum thereafter. But the present rigid system requires of a plaintiff to particularise its
damages when instituting action, sometimes a costly exercise which may prove to have been unnecessary.
[13] I cannot see any objection why, as a matter of principle and in a particular case, a plaintiff who wishes to
have the issue of liability decided before embarking on quantification, may not claim a declaratory order to the
effect that the defendant is liable, and pray for an order that the quantification stand over for later
adjudication. It works in intellectual property cases albeit because of specific legislation but in the light of a
court's inherent jurisdiction to regulate its own process in the interests of justice a power derived from
common law and now entrenched in the Constitution [of the Republic of South Africa, 1996 Ed] (section 173)
I can see no justification for refusing to extend the practice to other cases. The plaintiff may run a risk if it
decides to follow this route because of the court's discretion in relation to interest orders. It might find that
interest is only to run from the date when the debtor was able to assess the quantum of the claim.15
Another risk is that a court may conclude that the issues of liability and quantum are so interlinked that it is
unable to decide the one without the other.