"The respondents selected a confusingly similar mark with the intention and for the purpose of deceiving potential
purchasers . . . while such an intention and purpose is not necessary to be established, it is a further indication of the
likelihood of deception and confusion."
The defendant cannot rely,
". . . upon matter extraneous to the mark itself, which he may have used in conjunction with the mark, in order to
negate the likelihood of deception or confusion. . . the wrong of infringement consists in the unauthorised use of a
registered trade mark or of a trade mark that so nearly resembles a registered mark as to be likely to deceive; once
that use has been established, it will avail the defendant nothing to show that his goods are sufficiently differentiated.
The likelihood of deception or confusion must be decided in relation to the trade mark itself and not in relation to the
label of which it forms a part."12
Therefore,
"the enquiry is confined within . to the marks themselves and no regard should be had to other features of the getup
or other indications of origin of the goods as actually marketed by the plaintiff and defendant respectively."13
[31] In Ramsay, Son & Parker (Pty) Ltd v Media 24 Ltd and another14 when coming to a decision on the claim for
trademark infringement Motala J stated that,
"when two marks are compared for infringement purposes, it is necessary to ignore extraneous factors, and that the
general getup and content of the two magazines must not be taken into account".
Only the two marks themselves would be in focus.
"Note that it is trite that, in South African trade mark law, a comparison of marks can take place on three bases
visual, phonetic and conceptual. For a number of years it has been the received wisdom that a finding of confusing
Page 61 of [2008] 2 All SA 34 (C)
similarity on any of these grounds would suffice for infringement. But recent European decisions which have been
followed in South African law point out that the likelihood of confusion must be 'appreciated globally'."
This was approved in Cowbell AG v ICS Holdings Ltd15 (W Alberts, 'Getting away and taking a break', Juta's
Business Law, 2005 Vol 12, part 2, 55. See also Value Car Group Ltd and another v Value Car Hire (Pty) Ltd and
others.16
[32] Section 34(1)(a) should and has been fairly strictly interpreted and guidelines in respect of effecting that
interpretation have been provided over the years in the case law.
"The enquiry into alleged infringement is confined to much narrower limits than the enquiry into alleged passing off,
and care must be taken to exclude from the former enquiry facts and circumstances which are germane to the latter
enquiry but irrelevant and inadmissible in the former."17
The onus is placed on the plaintiff to prove the infringement, and in determining whether a likelihood of
confusion/deception exists, a number of factors have to be considered by the court including the strength of
the mark, similarity between the marks, proximity of the goods in the marketplace, actual confusion, the intent
of the infringing user, the relatedness of the goods, and so on.
[33] It is clear from the generally stated legal principles that a fine balance has to be maintained by the court. The
danger presented by too wide an interpretation is the potential to dilute the test that has to be applied in
terms of the section. This may have consequences for trademark protection and the marketplace. However,
too narrow an interpretation by the court may serve unnecessarily to stifle healthy competition in respect of
goods and services offered, having equally serious consequences for the marketplace.
Passing off
[34] As a species of unlawful competition, passing off was defined in Policansky Bros Ltd v L&H Policansky18 as:
". . . An action in tort and the tort consists of a representation by the defendant that his business or goods, or both,
are those of the plaintiff. RomanDutch law was wellacquainted with the general principal that a person cannot, by
imitating a name, marks or devices of another who has acquired a reputation for his goods, filch the former's
trade. . ."
It was submitted on behalf of the respondents that the central issues in a passingoff case are the reputation
of the plaintiff's mark, name and trading style, a misrepresentation by the defendant, and damages. Reliance
for these submission was placed on:
Capital Estate and others (Pty) Ltd v Holiday Inns Inc and others;19
Caterham Car Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd and another;20
Premier Trading Co (Pty) Ltd and another v Sporttopia (Pty) Ltd.21
Page 62 of [2008] 2 All SA 34 (C)
[35] It was argued by Mr Morley SC that it was not enough to show that there was a reputation, a question of fact,
which is the opinion which a relevant section of the community holds of the plaintiff. It was also important to
show that in the likelihood of deception or confusion which becomes the consequence of the passingoff of
defendant's business and services as that of plaintiff's, there was also a likelihood of damage generally, in the
form of a diversion of trade, or some impact or likely damage to the respondent's goodwill or reputation.
Analysis of the evidence