Square. Korkorris testified that at that stage he had no presence in the Western Cape and that when he learnt that
the Zanasi family had opened Nino Greenmarket Square he
Page 542 of [1998] 3 All SA 527 (C)
took the view that they should be allowed to operate one family restaurant in Cape Town, even though they were
using the name Nino which he had purchased from Giorgio Zanasi. He did not regard one restaurant under that
name as posing an obstacle for whatever future developments he may have had in mind for his own business in the
Western Cape. Although he did not convey these views to the Zanasi family or expressly consent to their use of the
name Nino for Nino Greenmarket Square he did nothing about such use. In the circumstances and having regard to
the length of time during which Nino Greenmarket Square has traded any complaint by the first respondent that the
applicant was infringing its rights to use the name Nino, whether pursuant to the contract of sale or the trademark,
may have been met with the contention that the first respondent had acquiesced in such use (Policansky Bros v
Hermann and Canard 1910 TPD 1265 at 12789; Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers
View Parallel Citation
(Green Point) (Pty) Ltd 1974 (2) SA 125 (C) at 137AF; Webster & Page op cit (4ed) 12.83 para 12.49). This however
is not an aspect which requires decision in this case.
[41] It does not follow from the fact that the first respondent may have tacitly consented to the use of the name
Nino in the case of Nino Greenmarket Square that the applicant would lawfully be entitled to use that name
wherever it chose in relation to other restaurants. It was neither clearly alleged nor has it been shown that the first
respondent waived its right to use the name Nino's Italian Coffee and Sandwich Bar in the Western Cape in general
and at Cavendish Square in particular. The evidence does not establish that the first respondent, with full
knowledge of its rights, decided to abandon them (Borstlap v Spangenberg en andere 1974 (3) SA 695 (A) at 704FG).
Having spent a considerable amount of money to acquire the business and the trading name and to develop the
franchise operation it is unlikely that Korkorris and the applicant would simply abandon their rights in this regard.
[42] The Zanasi family disposed of the right to use the name Nino pursuant to the sale of the business in
Braamfontein known as Nino's Coffee and Sandwich Bar. This right was acquired by Korkorris and now vests in the
first respondent. The first respondent is entitled to continue to use the name Nino in relation to Nino's Italian Coffee
and Sandwich Bar in Cavendish Square and Nino's Internet Café Foreshore. The respondents' use of the name Nino
is lawful. In the circumstances of this case the conduct of the respondents does not amount to an unlawful passing
off, even though there may be some confusion between the businesses in the eyes of the public. The respondents
are also not competing with the applicant unlawfully. The applicant is therefore not entitled to the interdict sought
by it.
The territorial extent of the parties' reputation and goodwill
[43] In view of this conclusion it is not necessary to deal with the issues that were referred for the hearing of oral
evidence or decide the interesting question of the territorial extent of the parties' reputation and goodwill. In this
regard see: Webster & Page op cit 1521 para 15.7 and 1531 para 15.16.2; Wadlow The Law of Passing Off op cit
8889; Drysdale & Silverleaf Passing Off Law and Practice (2ed 1995) 31 para 3.10, 189 para 7.49; Williams t/a
Williams and associates and another v Life Line Southern Transvaal (supra) at 419DE; The Clock Ltd v The Clock House
Hotel Ltd (1936) 53 RPC 269; Chelsea Man Menswear Ltd
Page 543 of [1998] 3 All SA 527 (C)
v Chelsea Girl Ltd and another [1987] RPC 189 (CA) at 198200; Clouds Restaurant Ltd v Y Hotel Ltd, an unreported
decision referred to in the Chelsea Man case (supra) at 199; Blades Enterprises Ltd v Thibault et al (1975) 65 DLR (3d)
378 at 381. Even if the applicant's reputation and goodwill were to extend to Claremont, where Nino's Cavendish
Square is situated, and the Foreshore, where Nino's Internet Café is situated, the respondents are for the reasons
set out above, not conducting themselves unlawfully.
View Parallel Citation
The injury to the applicant
[44] There is in my view another reason why the first application cannot succeed even if it is assumed that the
applicant's reputation extends to the areas where the respondents are carrying on their business utilising the
name Nino. The applicant has not established that the respondents' conduct has resulted or is likely to result in any
harm to it. It does not seem to me to make any difference whether this aspect is considered from the point of view
of injury as a necessary element of a passingoff or from the point of view of harm as a requirement for the grant of
a final interdict.
[45] The applicant's case in this regard is that it has shown that the public confuse the respondents' businesses
with that of the applicant and that it follows that the applicant has suffered or will suffer harm. Confusion per se
does not give rise to an action for passing off (Hoechst Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (in
liquidation) and another 1987 (2) SA 600 (A) at 619D). Regard must also be had to the particular facts of this case.
[46] Francesco Zanasi testified that Nino Greenmarket Square has about as much business as it can handle,
particularly over certain periods. The evidence shows that it is a successful restaurant with a high turnover. There is
no indication that the applicant has lost any business to Nino's Cavendish Square. Francesco Zanasi expressed no