admitted, as I have recorded above, that the public confuse the name of the applicant with the names of the
respondents and as a result the public form the impression that the businesses of the applicant and the
respondents are in some way associated with each other. The first respondent argued however that it has not
been shown that the applicant's goodwill and reputation are being infringed by Nino's Cavendish Square. Related to
this is the argument that such confusion as might exist does not create any actual or reasonably apprehended
harm entitling the applicant to the grant of an interdict.
[34] Mr Morrison also submitted that the fact that the Zanasi family sold to Korkorris their former business and the
name under which it had been conducted, Nino's Coffee and Sandwich Bar, was a complete defence to the relief
sought. He argued that the first respondent, having acquired the rights to the name, was entitled to use that name
and extend its operations to the Western Cape and that the applicant could not restrain it from doing so. It is
convenient to deal with this ground of opposition first.
View Parallel Citation
The sale of the Braamfontein Nino's Coffee and Sandwich Bar and its consequences
[35] With effect from 1 March 1989 Giorgio Zanasi and Bompani, acting as sellers, sold the coffee and sandwich bar
business in Braamfontein to Korkorris. In terms of the written contract of sale the business was defined as meaning
the business conducted as a going concern under the name of Nino's Coffee and Sandwich Bar, and it included, inter
alia, the goodwill and the name thereof. What was sold therefore was the business, goodwill and name. Goodwill is
incorporeal movable property and is capable of being sold (Torf's Estate v Minister of Finance 1948 (2) SA 283 (N) at
291292; Ashby and another v Fernandes 1959 (3) SA 770 (W) at 773AB; The Commissioners for Inland Revenue v
Muller & Co's Margarine Ltd [1901] AC 217 at 223). Considerable goodwill was associated with the use of the name
Nino in that business and it was by that name that Giorgio Zanasi and the restaurant developed by him became
established with the public. Korkorris explained that the acquisition of the name was one of the factors which
influenced him to buy the business. Part of the purchase price paid by Korkorris was in respect of goodwill although
it is unclear precisely what that amount was.
[36] The legal position in regard to the sale of goodwill and name of a business is clear. In the absence of any term
to the contrary a sale and transfer of goodwill confers upon the transferee the exclusive right to carry on the
business transferred and the exclusive right to represent himself as carrying on such business. It also confers upon
him the exclusive right to use the name under
Page 541 of [1998] 3 All SA 527 (C)
which the business has been conducted (Burchell v Wilde [1900] 1 Ch 551 (CA) at 558; RJ Reuter Co Ltd v Fred
Mulhens [1953] 2 All ER 1160 (CA) at 1179de; Webster & Page South African Law of Trade Marks (4ed) 1644 para
16.24.3; Van Heerden & Neethling Unlawful Competition (1995) 169; Kerley's Law of Trade Marks and Trade Names (12
ed 1986) 419 para 1690; Wadlow The Law of Passing Off (2ed 1995) 66 para 3.50; Halsbury's Laws of England (4ed
reissue) vol 47 paras 10 to 11). In the present case both the goodwill and the name itself were sold and there is no
term in the contract of sale which reserved to the seller the right to continue to use the name. The seller is of
course in the absence of a contractual restraint to the contrary entitled lawfully to compete in the same business as
the purchaser, under a name other than the one that he has disposed of ( Anna Trego and William Wilson Smith v
George Stratford Hunt [1896] AC 7 (HL) at 2425; Ashby v Fernandes (supra) at 773E774A). This is in fact what the
Zanasi family did initially when they opened a restaurant under the name of Archangelo.
[37] The effect of the sale by Giorgio Zanasi and Bompani to Korkorris was therefore to confer upon the latter the
exclusive right to carry on the business and to use the name Nino's Coffee and Sandwich Bar. With the
incorporation of the first respondent it succeeded to this right and it has through the franchise operation
established by it continued to exercise this right.
View Parallel Citation
[38] Although Giorgio Zanasi could, in the absence of any contractual term restraining him from doing so, compete
with Korkorris in the restaurant field he was precluded from continuing with the business or using the name of the
business which he had sold. To the extent that Giorgio Zanasi may otherwise have been entitled to use his own
nickname "Nino" that right was limited as a consequence of the sale of the business which included that name
(Policansky Bros Ltd v L & H Policansky 1935 AD 89 at 103).
[39] I understood Mr Tredoux to argue at one stage that even though Giorgio Zanasi may have been precluded
from using the name Nino as a consequence of the sale there was nothing which prevented his sons and the
applicant from doing so. I do not agree. Although Giorgio Zanasi and Bompani were the sellers in terms of the
contract of sale, what was sold was essentially a family restaurant and the name by which it was known. The two
sons who are the members of the applicant were involved in that business together with their father. Giorgio
Zanasi, although not a member of the applicant, was in turn involved in the establishment and operation of the
applicant's business. According to Francesco Zanasi the reason why the applicant is interested in protecting the
name Nino is because it is his father's name and he has a long association with him in the restaurant business. In
my view the contention that although their father had disposed of the family restaurant and its name, Nino, the
sons could, with their father's assistance, continue to use that name in another restaurant, is unsound. In the
circumstances once Giorgio Zanasi had divested himself of the right to use the name Nino he could not lawfully
confer upon his sons, any entity controlled by them or anyone else, the right to use that name.
[40] What I have said above is subject to the fact that the first respondent could consent to the use of the name
Nino by another. It appears that this is what in effect occurred after the applicant opened Nino Greenmarket