34925079-Amlers

Damages: The plaintiff may recover damages for any loss suffered by means of the actio legis Aquiliae.

Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd 1981 (2) SA 173 (T) Cf Hushon SA (Pty) Ltd v Pictech (Pty) Ltd [1997] 2 All SA 672 (A); 1997 (4) SA 399 (SCA) Such loss may result from either a diversion of custom from the business of the aggrieved party or injury to the business reputation.

Lorimar Productions Inc v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3) SA 1129 (T) Account of profits: A claim for an account of profits is not competent.

See : ACCOUNTS An interim order may be granted directing the keeping of an account of sales by the defendant in order to enable the plaintiff to assess, at a later stage, the damages suffered.

John Waddington Ltd v Arthur E Harris (Pty) Ltd 1968 (1) SA 38 (T) Delivery-up: The plaintiff may be entitled to prevent further passing-off by claiming, as ancillary relief, an order for the handing over of the goods in question, so that the offending mark or name may be removed or destroyed, or the handing over, for destruction, of containers or advertising material bearing the offending mark or name.

Jafta v Minister of Law & Order 1991 (2) SA 286 (A) Alternative causes of action: A passing-off action is often brought as an alternative to a trade-mark-infringement action. An act of passing-off may also overlap with other types of unlawful competition, such as contravention of a statutory provision, as in section 7 of the Merchandise Marks Act 17 of 1941 or the Counterfeit Goods Act 37 of 1997.

Where that is the case, plaintiff may base her or his case in the alternative on a contravention of the relevant statute.

Berman Bros (Pty) Ltd v Sodastream Ltd 1986 (3) SA 209 (A) Reckitt & Colman SA (Pty) Ltd v SC Johnson & Son SA (Pty) Ltd 1993 (2) SA 307 (A) A get-up may also constitute an original artistic work protected in terms of the Copyright Act 98 of 1978. If it does, the plaintiff may base the claim on passing-off, infringement of copyright or both and may claim the remedies provided for in the Copyright Act. See : COPYRIGHT For character merchandising, see Lorimar Productions Inc v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3) SA 1129 (T) Federation Internationale de Football v Bartlett 1994 (4) SA 722 (T) SAFA v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons [2003] 1 All SA 274 (SCA) [Page 278] Nevertheless, it is not legitimate to use some general notion of unlawful competition to create an ersatz passing-off with requirements (in the alternative) less exacting than those required by the common law. Some of the restraints that the common law places on the passing-off action are important in preventing the creation of impermissible monopolies.

Payen Components SA Ltd v Bovic CC 1995 (4) SA 441 (A) at 453 Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd [2001] 4 All SA 235 (A); 2001 (3) SA 884 (SCA) Doctrine of unclean hands: A plaintiff whose own get-up contains a material, false representation may not be entitled to protection from passing-off.

Zyp Products Co Ltd v Ziman Bros Ltd 1926 TPD 224 This doctrine of unclean hands is applicable only if there was fraud, dishonesty or mala fides on the part of the plaintiff.

Volkskas Bpk v Barclays Bank (DC & O) 1952 (3) SA 343 (A) Tullen Industries Ltd v A de Sousa Costa (Pty) Ltd 1976 (4) SA 218 (T) A related principle is that passing-off cannot be used to protect a false reputation or a misapprehension.

Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd [1998] 3 All SA 175 (A); 1998 (3) SA 947 (SCA) Market-survey evidence: In order to prove reputation, a party may rely on market-survey evidence, provided the survey is properly structured.

McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd [1996] 4 All SA 1 (A); 1997 (1) SA 1 (A) PRECEDENTS Interdict – passing-off 1.

Since or about [date], plaintiff has made continuous and extensive use of a distinctive get-up in relation to toilet soap in South Africa.

2.

The aforesaid distinctive get-up consists of a white wrapper upon which is printed a device comprising the mark ACME printed in a distinctive style of lettering. Annexed hereto as Annexure “A” is an example of plaintiff’s aforesaid distinctive get-up.

3.