Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (in liquidation) and another 1987 (2) SA 600 (A), (and the
cases cited there particularly at 613D614E [also reported at [1987] 2 All SA 128 (A) Ed]).
[61] The main distinguishing feature of passingoff is that it consists of misrepresentation. (Webster and Page
South African Law of Trade Marks 4ed § 15.5ff ). The representation which is necessary to found a passingoff
claim may be express or implied. The test is whether, in all the circumstances, the similarity between the
products is to the extent that there is a reasonable likelihood that ordinary members of the public, or a
substantial sector thereof, may be confused or deceived into believing that the products of the alleged
offender is that of the party claiming passingoff or is connected therewith.
[62] A passingoff is unlawful because it is meant to cause the improper acquiring or another's trade and goodwill
which may cause harm to that other's trade or reputation. Goodwill has been described as the attractive force
which brings in custom, (see The Commissioners of Inland Revenue v Muller and Co's Margarine Ltd (1901) AC
217 244 (HL) at 223 quoted in: Horseshoe Caterers (Greenpoint) (Pty) Ltd v Burnkloof Caterers (Pty) Ltd
1975 (2) SA 189 (C) at 196C [also reported at [1975] 2 All SA 451 ( C ) E d ] a n d Lorimar Productions
Incorporated and others v Sterling Clothing Manufacturers (Pty) Limited; Lorimar Productions Incorporated and
others v OK Hyperama Limited and others; Lorimar Productions Incorporated and others v Dallas Restaurant
1981 (3) SA 1129 (T) at 1138H).
[63] In Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd 2001 (3) SA 884 (SCA) at paragraphs 24 [also
reported at [2001] 4 All SA 235 (SCA) Ed], Schutz JA described the principles of passingoff as follows:
"[2]
The simple principle in passingoff is stated by Solomon J in Pasguali Cigarette Co Ltd v Diaconicolas &
Capsopolus 1905 TS 472 at 474 to be:
'(N)o man is allowed to passoff his goods as the goods of another person; no manufacturer of goods is
allowed to represent to the public that the goods which he is selling are the goods of a rival
manufacturer.'
[3]
The more detailed rules have been articulated so frequently and consistently that I need make only the briefest
reference to them. When one is concerned with alleged passingoff by imitation of getup, as is the case in the
matter before us, one postulates neither the very careful nor the very careless buyer, but an average
purchaser, who has a general idea in his mind's eye of what he means to get but not an exact and accurate
representation of it. Nor will he necessarily have the advantage of seeing the two products side by side. Nor will
he be alerted to single out fine points of distinction or definition. Nor even, as pointed out by
Page 661 of [2012] 1 All SA 636 (WCC)
Greenberg J (from whom I have been quoting) in Crossfield & Son Ltd v Crvstallizers Ltd 1925 WLD 216 at 220,
will he have had the benefit of counsel's opinion before going out to buy. Nor will he necessarily be able to read
simple words, as there are distressingly many people in South Africa who are illiterate.
[4]
However, the law of passingoff is not designed to grant monopolies in successful getups. A certain measure of
copying is permissible. But the moment a party copies he is in danger and he escapes liability only if he makes
it 'perfectly clear1 to the public that the articles which he is selling are not the other manufacturer's, but his own
articles, so that there is no probability of any ordinary purchaser being deceived: Pasguali at 479, Crossfield at
221 and Adcock Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 437438A."
[64] The applicant must establish the following two essentials to prevail in a passingoff application:
(a)
that the applicant's name, mark, sign or getup has become distinctive, that is, that in the eyes of the
public it has acquired a significance or meaning as a symbol of a particular origin of the goods in respect
of which that feature is used; and
(b)
that the use of the feature was likely, or calculated, to deceive and thus cause confusion or injury,
actual or probable, to the goodwill of the applicant's business, for example, by causing a loss in the
profit that it might have had by selling the goods which purchasers intended to buy. (See Adcock Ingram
Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 437H438A [also reported at [1977] 4 All SA
657 ( W ) E d ] a n d Atlas Organic Fertilisers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and others
1981 (2) SA 173 (T) at 202BC).
[65] Before the likelihood or otherwise of deception or confusion between the two competing products is dealt
with, it is necessary for the applicant to establish as a prerequisite a reputation in the "getup" on which it
relies. In John Drysdale and Michael Silverleaf's work: Passingoff at page 211 paragraph 216 the following is
said:
"In order to succeed in an action for passingoff, the first essential is for the plaintiff to prove the existence of a
business in which there is a goodwill or part of it resides in the exclusive association of the name, mark or other
indicia relied upon with that business."
As Harms JA said in Caterham Car Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd and another 1998 (3) SA 938
(SCA) at 950EH [also reported at [1998] 3 All SA 175 (SCA) Ed].
"[21] The nature of the reputation that a plaintiff has to establish was well stated by Lord Oliver in a judgment
referred to at the outset of this judgment, namely Reckitt & Colman Products Ltd v Borden Inc and Others
[1990] RPC 341 (HL) ([1990] 1 All ER 873) at 406 (RPC) and 880gh (All ER):
'First, he must establish a goodwill or reputation attached to the goods or services which he supplies in
the mind of the purchasing public by association with the identifying "getup" (whether it consists simply
of a brand name or a trade description, or the individual features of labelling or packaging) under which
his particular goods or services are offered to the public, such that the getup is recognised by the public
as distinctive specifically of the plaintiff's goods or services.'"