On the facts the Court of Appeal held that the activities of the plaintiffs in the United Kingdom did not amount to the
carrying on of a business there.
Also in South Africa it has been held that a goodwill existing within the country is necessary to found a claim in
respect of passing off. See, for instance, Slenderella Systems Inc of America v Hawkins and Another 1959 (1) SA 519
(W) at 521A522B, Lorimar Productions Inc and Others v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3) SA 1129 (T)
at 1138H1140A and Tie Rack plc v Tie Rack Stores (Pty) Ltd and Another 1989 (4) SA 427 (T) at 442G445D. In the
last mentioned case the applicant conducted in the United Kingdom and elsewhere, but not in South Africa, either
by itself or through franchisees, a number of shops under the name "Tie
View Parallel Citation
Rack". It sought to interdict the respondents from doing likewise in this country. This attempt failed. The basic
reason was stated by Kriegler J as follows (at 445CD):
"The simple truth is that the applicant has no goodwill, no attractive force in this country. The fact that people in this country
and accepting that there may be many know of applicant's business abroad and may be misled into believing first
respondent's shops are in some way associated therewith, does not afford applicant a proprietary right in this country. Put
differently, applicant has no business of any kind in South Africa and nothing first respondent has done can or is likely to do
any harm to applicant in the patrimonial sense in this country."
For present purposes it is not necessary to determine whether these cases were correctly decided either in the
United Kingdom or in South Africa. In Australia, for instance, the Federal Court went the other way. See Conagra Inc
v McCain Foods (Aust) (Pty) Ltd 23 IPR 193. However, whether the above cases were right or wrong, they
demonstrate that the courts in this country and the United Kingdom have in fact not protected the owners of
foreign trade marks who did not have a goodwill within the country. To that extent the common law of passing off
has not been sufficient to constitute compliance with article 6bis of the Paris Convention.
It seems clear that section 35 of the new act and the corresponding provision in the United Kingdom were
intended to remedy this lack. Thus section 35(1) pertinently extends protection to the owner of a foreign mark
"whether or not such person carries on business, or has any goodwill, in the Republic". And the type of protection
which is granted by subsection (3) is typical of that which is available under the common law of passing off: a
prohibition on the use of the mark in relation to goods or services in respect of which the mark is well known and
where the use is likely to cause deception or confusion.
It is against this background that the expressions "wellknown trade mark" and "wellknown in the Republic"
must be interpreted. Counsel for McDonald's contended that the legislature intended to impose no more than the
ordinary requirement for passing off actions, namely that the reputation must extend to a substantial number of
members of the public or persons in the trade in question. See Webster and Page, South African Law of Trade Marks
3ed, 417; Kerly's Law of Trade Marks and Trade Names, supra, para 1610; John Craig (Pty) Ltd v Dupa Clothing
Industries (Pty) Ltd 1977 (3) SA 144 (T) at 150 in fin and the Conagra case, supra, at 237 lines 14 to 37.
Page 16 of [1996] 4 All SA 1 (A)
Of course, the mere fact that the legislature intended to provide some protection for a foreign trader who does not
have a goodwill or a business inside the country does not necessarily mean that such protection must be
coterminous with that afforded to local businessmen. It is accordingly conceivable that, in order to receive
protection, the foreigner might have to prove a greater public awareness of his mark than is required of a local
businessman claiming a remedy against passing off. And, indeed, the respondents argued that the legislature in
giving protection only to wellknown marks, did impose a higher standard. On the ordinary meaning of language, so
the argument went, a mark is wellknown in the Republic only when known to a large part of the population as a
whole.
View Parallel Citation
This argument raises two questions, namely
(a) must the mark be wellknown to all sectors of the population; and
(b) whatever the relevant sector of the population may be, what degree of awareness within that sector is
required before a mark can properly be described as wellknown.
The answer to question (a) is, I think, clear. Section 35 of the new act was intended to provide a practical
solution to the problems of foreign businessmen whose marks were known in South Africa but who did not have a
business here. The South African population is a diverse one in many respects. There are wide differences in
income, education, cultural values, interests, tastes, personal life styles, recreational activities, etc. This was
obviously known to the legislature when it passed the new act. If protection is granted only to marks which are
known (not to say wellknown) to every segment of the population (or even to most segments of the population)
there must be very few marks, if any, which could pass the test. The legislation would therefore not achieve its
desired purpose. Moreover, there would not appear to be any point in imposing such a rigorous requirement. In
argument we were referred as an example to a mark which might be very well known to all persons interested in
golf. Why should it be relevant, when deciding whether or not to protect such a mark, that nongolfers might never
have heard of it? I consider therefore that a mark is wellknown in the Republic if it is wellknown to persons
interested in the goods or services to which the mark relates.