bona fides of the respondent as to entitle the applicant to an order, whatever undertaking may be given. . . It
may be argued that it does not necessarily follow the
Page 283 of [2006] 2 All SA 260 (T)
fact of imitation that the imitator should be distrusted when not to repeat the offence. He has had a warning and
might perhaps be expected, if only in his own interests, to keep within the law in future. The inadvertent infringer
may, owing to his carelessness, be more likely to break his undertaking than the man who has acted advisedly.
But there seems to be practical justification for holding that the deliberate copier should be interdicted even
though he has given an apparently adequate undertaking."
And at 454:
"In Glenton & Mitchell v French Tea & Coffee Works Ltd at p 276, it is suggested that the absence of admission on
affidavit that the user of the marks complained of would be wrongful is a reason for not attaching importance to
the wrongdoer's undertaking, but it is not clear to me why a confession of guilt should be regarded as materially
strengthening a full and unequivocal undertaking. In my view of this case, however, it is unnecessary to consider
this feature more closely" (emphasis added.)
In Juta & Co v De Koker and another 1994 (3) SA 499 (T) at 503 McCreath J said the following:
"It was argued, firstly, on behalf of the respondents that the applicants had failed to make out a prima facie case
against any of the respondents in the founding affidavits, Insofar as relief in respect of the affected work is
concerned, it was contended that the undertaking given on behalf of the second and third respondents (which I
shall accept would be effective against the first respondent as well even though no specific undertaking had been
given on his behalf) rendered it unnecessary for the applicants to approach the court for any relief. However, it is
clear that the applicants, in seeking relief in respect of unlawful competition in regard to the new work, rely in the
founding affidavits on an infringement of copyright in respect of the affected work and an allegation that
substantial parts of the alleged infringing matter would be repeated in the new work. To that extent the
undertaking in respect of the old work was irrelevant. In the correspondence between the attorneys it had also
been indicated that there was no intention of copying all or any part of the copyright work in the new work and
an undertaking had been given that the new work would not infringe the copyright in the copyright work.
However, nowhere in the correspondence preceding the launching of the application is there any admission on
behalf of the respondents that the passages in the text of the affected work in respect whereof the applicants
complained as infringing copyright did in fact constitute such infringement. Indeed the contrary is indicated. The
undertaking and the expression of intent in regard to the new work did therefore not settle the dispute as to
whether there had been any copying in the sense of an infringement of copyright and constituted no assurance
that the new work would not contain the same or similar 'offending' material. The applicants would accordingly be
entitled to approach the court if a prima facie case of infringement of copyright in respect of the affected work
and of anticipated unlawful competition in respect of the new work had been made out. In that event relief could
properly be sought against the first respondent as author and the third respondent as publisher of the new work.
In addition thereto the applicants would be entitled, in the light of the allegation of deliberate copying by the first
respondent, to an interdict against him in respect of the affected work. (See the dictum of Schreiner J in Peter
Jackson (Overseas) Ltd v Rand Tobacco Co (1936) Ltd 1938 TPD 450 at 4534. Insofar as the second respondent
is concerned, in the event of the applicants showing a breach of the copyright in the affected work, I considered
that prima facie they would be entitled to an order requiring the second respondent to recognise the second and
third applicants' authorship in the affected work
Page 284 of [2006] 2 All SA 260 (T)
as provided in s 20 of the Copyright Act 98 of 1978 ('the Act')" (emphasis added).
In Abdulhay M Mayet Group (Pty) Ltd v Renasa Insurance Co Ltd and another 1999 (4) SA 1039 (T) at 10445
Van Dijkhorst J said:
"The applicant therefore, submits that it cannot be expected to accept or be content with the first respondent's
statement of intent to which I have referred, particularly in view of the deliberate disregard of the applicant's
rights. In this respect the applicant relies on the authority of Glenton & Mitchell v French Tea & Coffee Works Ltd
1927 WLD 272 at 2756; Juta & Co Ltd and others v De Koker and others 1994 (3) SA 499 (T) at 503EI and
Stellenbosch Wine Trust Ltd and another v Oude Meester Group Ltd; Oude Meester Group Ltd v Stellenbosch Wine
Trust Ltd and another 1972 (3) SA 152 (C) at 164E" (emphasis added)
[63] I agree with the obiter dictum of Schreiner J in the Peter Jackson matter (supra) that a confession of guilt
(unlawfulness) is not a requirement for the successful wardingoff of an interdict. The main question in
interdict proceedings is, as Schreiner J stated in the Peter Jackson matter, the risk of recurrence. Deliberate
infringement would tend towards the granting of an interdict. I am, however, not convinced that the website
and tax invoice emphasised use of shatterproof can be regarded as a deliberate disregard of the respondent's
rights. That it amounts to trade mark infringement is clear, but the undertaking is sufficient. There was also
no evidence of continued, infringement after the undertaking had been given.
[64] The mere fact that the applicant has applied for a trade mark shatterproof, should not be held against it and
be used as material from which an inference may be drawn that infringement will continue. Applicant indeed
has a right to apply for registration. The present challenge of the trade mark should also not be held against
the applicant; it has the constitutional right to challenge in court what it regards as an unfair limitation to its
rights. Lastly, I have considered the words on a laminated glass pane which the respondent regards as an
infringement. The following words are used:
Commercial
Autoglass
Laminated