(Pty) Ltd v National Transport Commission 1993 (3) SA 94 (A) 107GI). Apart from this fatal objection, the evidence
simply does not support the argument.
[28] Assuming the name Seven to be capable of distinguishing, even in the hands of Lotus it was not distinctive of
the Series III. In fact, when Lotus entered into the first agreement with Caterham during 1973, Seven was the
name used for the Series IV. In the result, the name Seven had a diffuse meaning in 1972, referring to four
differently shaped cars in the Lotus series. The potential purchaser of a new car asking for a Lotus Seven would
have received a Series IV. In the secondhand market the request for a Lotus Seven simpliciter would have led to a
query.
[29] It being trite that a passingoff action does not protect a mark or getup in itself and that goodwill or
reputation cannot exist by itself (cf. Star Industrial Company Limited v Yap Kwee Kor (trading as New Star Industrial
Company) quoted in par [11] above), it is difficult to conceive of an extant goodwill in the hands of Lotus in 1988,
especially as Lotus had last made and sold a III some 18 years before. Caterham, in attempting to meet this
problem, did not argue that the legal proposition just stated should be reconsidered. The submission that Lotus
had a goodwill in 1988 as the result of Caterham's endeavours which enured to the benefit of Lotus depends on
whether Caterham had a licence from Lotus to build the III and to use the Seven in relation thereto. The facts are
clear. Caterham had no such licence. The attempt to interpret the 1973 agreement differently to its clear meaning
was rejected by Howard JP, correctly so. In any event, the agreement did not extend to this country. Before us
Caterham jettisoned this agreement. Instead, during the course of the oral argument reliance was unexpectedly
placed upon a tacit licence agreement. A party who relies on an express contract is not entitled to invoke a tacit
contract on appeal (Roos v Engineering Fabricators (Edms) Bpk 1974 (3) SA 545 (A) 550F). In addition, this line was
not foreshadowed during the trial and does not take proper account of the evidence of Monk or Nearn given on
behalf of Caterham.
[30] I am prepared to accept that Caterham had a reputation during the
View Parallel Citation
1980's in South Africa. It was reputed to be the exclusive successor to Lotus in relation to the Series III and
properly licensed. The prime cause of this was the belief that the 1973 agreement had given it those rights.
Caterham, directly and indirectly, nurtured this notion. In addition, Howard JP held that for many years Caterham
had been sedulously passing off its product as that of Lotus by the improper and unauthorised use of the trade
mark Lotus in relation to the Caterham Seven or Super Seven and that this course of conduct was deliberate and
dishonest. These factual findings have not been shown to have been incorrect.
[31] Whether a passingoff action can be used to protect a misapprehension or a false reputation appears to me to
be open to serious doubt but since it was not argued it need not be decided. However, to the extent that a
reputation is founded upon a conscious falsehood, public policy demands that legal protection should be withheld
(cf.Scott and Leisure Research and Design (Pty) Ltd v
Page 187 of [1998] 3 All SA 175 (A)
Watermaid (Pty) Ltd 1985 (1) SA 211 (C) 220G221C). Caterham cannot be permitted to benefit from its own wrong.
[32] To sum up, I am of the view that Caterham has failed to establish the reputation relied upon. As far as
deception is concerned, there can be little doubt that before 1988 Birkin did present itself to the South African public
as a Lotus licensee. This was done because Watson was brought under the impression that it was true. This kind of
representation was effective, at least among a section of the motoring fraternity. However, Caterham chose in its
pleadings to limit itself to post1988 representations and, in any event, these acts are of no consequence to
interdictory relief which is concerned with future conduct and is not a remedy for past wrongs.
[33] I have made occasional reference to Japan in the course of this judgment. The reason is that Birkin exports
cars to Japan, an important market for Caterham. Part of the relief sought is an interdict preventing Birkin from
exporting these cars, especially to Japan. The allegations in the pleadings that found this claim are similar to those
affecting the local market and they amount to the following:
1.
the use of the numeral 7 in conjunction with the car serves to identify it as emanating from Caterham or Lotus;
2.
Caterham is the owner of the relevant goodwill in Japan;
3.
the Birkin Seven is marketed in Japan by a distributor of Birkin's;
4.
use of the numeral Seven on such a the car represents to the Japanese that the car's manufacture is authorised by
Lotus;
5.
the representation is false;
6.
by exporting to Japan, Birkin is placing an instrument of deception in the hands of the distributor;
7.
the misrepresentation constitutes an actionable wrong in Japan.
[34] Howard JP dismissed the claim. All his reasons are not pertinent to the case as now argued. Postulating that
the court below had jurisdiction in regard to this claim because Birkin is an incola of that court, one has to accept
that Japanese law governs the claim. But we do not know what Japanese law in this regard is and we do not have
the facility to ascertain it readily and with sufficient certainty. What we do know is that
View Parallel Citation
Caterham alleges that the misrepresentation relied upon by it constitutes an actionable wrong in Japan. Foreign