the second respondent under franchise, commenced trading
View Parallel Citation
on 6 February 1997. The first application was prompted by the opening of Nino's Internet Café Foreshore and Nino's
Cavendish Square.
[27] Nino Camps Bay was opened by the applicant on 6 August 1997. This resulted in the launch, that same day, of
the second application to restrain the applicant from infringing the trade mark and the grant of an interim interdict
to that effect the following day.
The first application: the alleged passingoff
[28] The applicant seeks a final interdict and the wellestablished requisites for the grant of a final interdict are a
clear right on the part of the applicant, an injury actually committed or reasonably apprehended and the absence of
any other adequate remedy. The applicant's claim to interdict the respondents from using the name Nino is based
on the contention that this would amount to a wrongful passingoff by the respondents
"The wrong known as passing off is constituted by a representation, express or implied, by one person that his business or
merchandise, or both, are, or are connected with, those of another . Where they are implied, such representations
Page 539 of [1998] 3 All SA 527 (C)
[concerning the wrongdoers business] are usually made by the wrongdoer adopting a name for his business which
resembles that of the aggrieved party's business; and the test then is whether in all the circumstances the resemblance is
such that there is a reasonable likelihood that ordinary members of the public, or a substantial section thereof, may be
confused or deceived into believing that the business of the alleged wrongdoer is that of the aggrieved party, or is connected
therewith. Whether there is such a reasonable likelihood of confusion or deception is a question of fact to be determined in
the light of the particular circumstances of each case."
(Brian Boswell Circus (Pty) Ltd and another v BoswellWilkie Circus (Pty) Ltd 1985 (4) SA 466 (A) at 478FI per Corbett JA as
he then was. See generally Policansky Bros Ltd v L & H Policansky 1935 AD 89 at 97 and 98; Capital Estate and General
Agencies (Pty) Ltd and others v Holiday Inns Inc and others 1977 (2) SA 916 (A) at 929CH; Williams t/a Williams &
Associates and another v Life Line Southern Transvaal 1996 (3) SA 408 (A) at 418DH.)
[29] Passingoff is a form of wrongful competition. It is unlawful because it results or is calculated to result in the
improper filching of another's trade, an improper infringement of his goodwill and/or because it may cause injury to
that other's trade reputation (Capital Estate case (supra) at 930H931C; Boswell Circus case (supra) at 478IJ). The
fact that the first respondent is the proprietor of the trade mark does not in itself provide a defence to a passingoff
action (Glenton and Mitchell v Ceylon Tea Co 1918 WLD 118 at 126; Solmike (Pty) Ltd t/a Skipper's Cabin v West Street
Trading Co (Pty) Ltd t/a Skipper Bar 1981 (4) SA 706 (D) at 710H712B; Kellogg Co and another v Bokomo Cooperative
Ltd 1997 (2) SA 725 (C) at 736J737A).
[30] In order to succeed in a claim based on an unlawful passingoff an applicant must generally establish the
following. Firstly, that he has acquired a reputation or goodwill in the sense that the name, getup or mark used by
him has become distinctive of his goods or services by
View Parallel Citation
virtue of the fact that the public associates the name, getup or mark with the goods or services he provides.
Secondly, that the respondent is by the name, getup or mark used by him representing, expressly or impliedly, and
leading the public to be confused or to be deceived into thinking, that his goods or services are those of the
applicant or that there is an association between them. Thirdly, the applicant must show that such conduct results,
or is calculated to result, in damage to the applicant as a consequence of the infringement of his goodwill,
reputation or trade.
[31] Mr Tredoux, who appeared for the applicant, argued that the evidence established the various requirements
for a passingoff and the granting of a final interdict. Mr Morrison, who appeared for the respondents, resisted the
application on several grounds.
[32] In regard to the aspect of reputation and goodwill, the respondents accept that the applicant has, in relation
to the business conducted by it at Nino Greenmarket Square, an established goodwill and reputation. The evidence,
including the research survey, does show this. The issue is the geographical extent of that goodwill and reputation.
The applicant contends that it extends to Cavendish Square while the respondents aver that it is confined to the
central business district of Cape Town. The first respondent furthermore contends that it has a national reputation
and goodwill in respect of its franchise business
Page 540 of [1998] 3 All SA 527 (C)
carried on under the name Nino's Italian Coffee and Sandwich Bar. The applicant accepts that the first respondent
does have an established reputation and goodwill but disputes that this extends to Cape Town and its
neighbouring suburbs.
[33] The question whether there is a reasonable likelihood of the public confusing the applicant's business with
that of the respondent's is not in issue. In its answering affidavit in the first application the first respondent
admitted that there is confusion between the name of the applicant's business and the name under which the
franchisees of the first respondent conduct their business. At the hearing of oral evidence the respondents also