which operates from the premises of The Incredible Connection, situated in Oswald Pirow Drive on the Cape Town
foreshore.
[4] To distinguish between these various restaurants and coffee bars they will be referred to respectively as "Nino
Greenmarket Square", "Nino Camps Bay", "Nino's Cavendish Square", "Nino's Stellenbosch" and "Nino's Internet
Café Foreshore". The chain of coffee bars franchised by the first respondent will be referred to generally as "Nino's
Italian Coffee and Sandwich Bars" and "Nino's Internet Cafes".
[5] The first respondent is the proprietor in South Africa of a registered trade mark in respect of Nino's Italian
Coffee and Sandwich Bar ("the trade mark"). This is the mark under which it conducts its franchise business.
The prior proceedings
[6] On 30 May 1997 the applicant brought the first application as a matter of urgency for an order interdicting and
restraining the first and second respondents from utilising the name "Nino" or any derivative thereof as a trading
name or in order to describe any restaurant, coffee shop or similar business conducted by them within 40 kilometres
of the centre of the city of Cape Town. The cause of action relied on was that the operation of Nino's Cavendish
Square and Nino's Internet Café Foreshore amounted to passingoff and unlawful competition. The applicant initially
sought an interim interdict pending the institution of an action wherein a final interdict was to be sought and
pending an application to be instituted by the applicant with the Registrar of Trade Marks for the registration of the
trade name "Nino's" in the Western Cape.
[7] The franchisee of Nino's Cavendish Square was not joined as a party in the first application, despite it having a
clear interest in those proceedings. Although no point of nonjoinder was taken I raised this
View Parallel Citation
aspect during the hearing of oral evidence. An undertaking was given by the first respondent that it would ensure
Page 534 of [1998] 3 All SA 527 (C)
that the franchisee would comply with any order that might be binding on it. Two persons having an interest in the
franchisee in fact testified on behalf of the first respondent. I was also advised from the bar by the first
respondent's counsel that the franchisee of Nino's Cavendish Square agreed to abide by any order that might be
issued and to comply therewith notwithstanding the fact that it was not joined as a respondent in the first
application. In the circumstances it was not necessary that the franchisee be joined.
[8] Answering affidavits were filed on 20 June 1997 and replying affidavits were filed on 25 June 1997. On the
same day that it filed its replying affidavits the applicant set the matter down for hearing the following day. On 26
June 1997 Van Zyl J postponed the matter to the semiurgent roll for hearing on 1 September 1997, the parties
were afforded an opportunity to supplement their papers and the applicant was ordered to pay the costs wasted
by the application for an urgent interim interdict.
[9] On 6 August 1997 the first respondent brought the second application as a matter of urgency for an interim
interdict, pending the final determination of that application, interdicting and restraining the applicant from infringing
the trade mark by using the trade mark Nino in Camps Bay, being a reference to the restaurant Nino Camps Bay.
[10] In the founding affidavit of Nick Korkorris ("Korkorris") in that application the first respondent, without
conceding that the applicant has a reputation which it is entitled to protect, tendered, without prejudice to its other
rights, that it would not open a Nino's store or utilise the name Nino's on any restaurant or coffee shop within the
central business district of Cape Town, as depicted on a map annexed to the affidavit, but excluding Nino's Internet
Café Foreshore. In a letter of 15 August 1997 from the first respondent's attorneys to the applicant's attorneys, the
first respondent tendered, with prejudice, to pay the applicant's taxed party and party costs in respect of the first
application up to and including 7 August 1997, exclusive of the costs order of 26 July 1997 in favour of the first
respondent. These tenders were not accepted by the applicant and were never withdrawn by the first respondent.
[11] On 7 August 1997 an order was made in the second application by Van Deventer J in the following terms:
"1.
A Rule Nisi do issue returnable on 1 September 1997 in terms whereof the Respondent is called upon to show cause
on the return day why the following order, which will operate with immediate effect as an interim interdict, should not
be made final:
1.1
The Respondent is hereby interdicted and restrained from infringing the Applicants' trade mark No 94/0918
NINO'S ITALIAN COFFEE & SANDWICH BAR AND DEVICE in class 42 in terms of the provisions of Section 34 of
the Trade Marks Act, No 194, of 1993 by using in the suburb of Camps Bay, Cape Town, in
View Parallel Citation
the course of trade in relation to any services in respect of which the aforesaid trade mark is registered, or any
similar services, the trade mark NINO, or by using any other similar trade mark, in the course of trade in
Camps Bay, in relation to other services which are so similar to the services for which the Applicant's trade
mark is registered that in use there exists the likelihood of deception or confusion;
Page 535 of [1998] 3 All SA 527 (C)
1.2
The Respondent shall remove the signs displaying the word Nino's at its Camps Bay premises before 17h00 on
8/8/97 and remove the name Nino's from all places where it appears on the Respondent's trade dress at the
Camps Bay premises including but not limited to the menus, waiter's uniforms, cutlery, crockery and the like