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[2010] ZAFSHC 45
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Tsebo Health CC v Eternal City Trading 529 CC and Others (1251/2010) [2010] ZAFSHC 45 (30 April 2010)

FREE STATE HIGH
COURT, BLOEMFONTEIN
REPUBLIC OF SOUTH
AFRICA
Case No. : 1251/2010
In
the matter between:-
TSHEBO
HEALTH CC
Applicant
and
ETERNAL CITY
TRADING 529 CC
First
Respondent
HENDRIK CHRISTOFFEL
BARNARD
Second
Respondent
LUKE SAFFY
Third
Respondent
HEARD ON:
18
MARCH 2010
JUDGMENT:
EBRAHIM,
J
DELIVERED ON:
30
APRIL 2010
[1] The
applicant applies for final relief on the basis of its common law
rights
,
arising from the
lex
Aquilia
,
which recognises a generic delict of unlawful competition which
in
casu
manifests in the form of a passing-off action. At the heart of trade
mark law in this country lies the all important criterion
of truth in
competition. The underlying rationale for this general principle was
stated by Harms ADP (as he then was) in
COMMERCIAL
AUTO GLASS (PTY) LTD v BMW AG
2007 (6) SA 637
(SCA) at par. [8]:
”
[8
] The
object of trade mark law ... is to prevent commercial 'speech' that
is misleading. Trade mark use that is not misleading (in
the sense of
suggesting provenance by the trade mark owner) is protected, not only
constitutionally but in terms of ordinary trade
mark principles. As
Justice Holmes said in
Prestonettes
Inc v Coty
263
US 359
at 369 (1924):
[1924] USSC 81
;
264
US 359
(1924) at 368. Quoted by Jonathan Moskin 'Frankenlaw: The
Supreme Court's Fair and Balanced Look at Fair Use' 95 (2005)
'When the mark
is used in a way that does not deceive the public, we see no sanctity
in the word as to prevent its being used to
tell the truth.'”
The
principles and precepts of trade mark law are abused when they are
used not for their legitimate purpose but in order to prevent
or
inhibit competition.
[2] 2.1 The
present application is one where the applicant had chosen to trade
under a name which it claims has attracted particular
celebrity
(goodwill) by virtue of having commanded large sales under that name
due to the particular branding and marketing of
its product a natural
and herbal cleansing agent known as “Hlêka”.
Applicant also trades in other products called
“Spool”
and “Tiger’s Claw”. The first respondent carries
on business in a similar product with a
similar get-up and a similar
name called “Ya Hlêkisa”. The appellant contends
that the first and second respondents’
practice in selling such
a similar article constitutes passing-off and unfair competition.
It
is necessary to understand the facts of this matter which the
applicant alleges gives rise to the delict of passing-off and
the
cardinal principles relating to such a delict before turning to the
difficult task of applying those principles to the
facts as
crystallised. The applicant is a close corporation which was duly
registered and incorporated as such in terms of
the
Close
Corporations Act, 69 of 1984
on the 13
th
of September 2004, the major membership interest of which is at
present being held by one Haneke Retief (Retief), the deponent
to
the founding papers in this application and the daughter of the
second respondent. On the 21
st
of January 2010 the second respondent’s personal estate was
sequestrated. Until that date he held a 25% membership interest
in
the applicant. On the same date the estate of a trust known as the
Bermins Trust of which the second respondent was the
principal
trustee, was also sequestrated. The third respondent was appointed
as one of the curators/trustees of both the second
respondent’s
insolvent estate as well as that of the Bermins Trust. Prior to
its sequestration the Bermins Trust had,
from date of incorporation
of the applicant until August 2009, been the manufacturer of the
applicant’s product “Hlêka”,
it was not
disputed that this product was a herbal cleansing agent intended to
be used to cleanse the body of pollutants and
assist with the
healing process. During August 2009 the applicant decided to move
the manufacturing contract relating to the
production of “Hlêka”
to a company in Johannesburg, Hersol (Pty) Ltd. In its amended
founding statement
the applicant’s principal business is
described as a marketer and distributor of medicinal products
(“bemarking
en verspreiding van mediese produkte”).
It
is undisputed that the applicant is marketing, selling and
distributing the “Hlêka” product and that in
the
five year period since the incorporation of the applicant the
product has become renowned as a beneficial product. The
applicant
alleges that it has acquired goodwill in the manufacture and sale
of the product in this way. The second respondent
alleges that he
was the original creator of “Hlêka”, being a
qualified chemical pathologist and disputes
that the product is
owned by the applicant on the basis that, as manufacturer, it was
the Bermins Trust which owned the product
and which had provided
the applicant with it at a discounted price. He seeks to
corroborate his assertion in this regard by
reference to
documentation evidencing an intention on the part of that trust to
register the name “Hlêka”
as a trade mark. This,
however, was not accomplished. The second respondent has thus
placed the applicant’s capacity
to institute these
proceedings in dispute on the grounds of not having any right and
title in and to the product. I have accepted
that it is an
undisputed fact that, at the behest of the applicant, Hersol (Pty)
Ltd has become the present manufacturer of
“Hlêka”.
I shall deal later on in this judgment with the issue relating to
the applicant’s
locus
standi
and the ownership of the “Hlêka” product.
On
the 18
th
of February 2010 it came to the applicant’s notice that a
business styled “Bermins” operating from the same

address and using the same telephone and fax numbers of the
sequestrated trust, had started marketing a product labelled

“Ematla Hlêka”, at a price cheaper than the price
charged by the applicant for “Hlêka”.
The
applicant contends that the name “Hlêka” has
become distinctive of its own brand and product and that
the first
and second respondents’ use of it in the name “Ematla
Hlêka” is confusing and calculated
to deceive in that
it creates a false impression in the minds of the public that it is
the same product as the applicant’s
“Hlêka”.
The applicant has expressed the further concern that the first and
second respondents intended
using the name “Hl
êka”
on their product to promote business for their own financial
advantage to the detriment of the applicant’s
business. The
applicant contends that the get-up of the product of the first and
second respondents is the result of calculated
imitation of its own
product. The second respondent has put all these allegations in
issue alleging that the name “Ematla
Hlêka” being
the Sotho word for “cleanse” is a descriptive term of
the type or contents of the product
as the product is being
marketed as a cleansing medium, or as he refers to it, as a Sotho
term for a strong cleanser (in Afrikaans
“die kragtige
skoonmaker”). He admits that the first respondent is the
manufacturer thereof and the product is
being marketed at a cheaper
price although no sales as yet have taken place.
The
applicant further contends that in order to prove that the first
respondent was trading unfairly in competition with it,
an employee
was asked to phone the number of the Bermins Trust and request to
purchase “Hlêka”. She was
told that there was no
stock and the product would only be on the market for sale during
the following week. She was told
that this was because Bermins was
manufacturing a new “Hlêka”, using the formula of
the old “Hlêka”,
which had been stolen by a
company called Bophelo Health. This evidence is corroborated on
affidavit by the said employee,
one Maria Bonolo Xaba. Retief
alleges that the applicant had previously traded under the name
“Bophelo Health”.
Being concerned about this state of
affairs she requested another employee, Lynette Olivier, to make
further enquiries. The
said Olivier also telephoned the telephone
numbers on the advertisement posing as a client wanting to purchase
Hlêka.
She was informed that the company was not Bermins but
the first respondent and that “Hlêka” was a
product
not known to that company. Her evidence in this regard is
also contained in an affidavit. I refrain from commenting on the
admissibility of either of these two affidavits and the evidence
contained therein.
It
is furthermore the applicant’s case that during the past five
years large sums of money have been spent in establishing
the
“Hlêka” brand on the open market. This has been
done by way of a vigorous advertising campaign on various
radio
stations as well as on the network of the South African
Broadcasting Corporation such that currently no advertising is

necessary to maintain and increase the applicant’s financial
turnover from the manufacture and sale of the “Hlêka”

product. The second respondent avers that there is no possibility
of a misrepresentation or confusion arising in the minds
of the
public that first respondent’s product is the same as that of
the applicant because the first respondent has,
since becoming
aware of the applicant’s concerns in that respect, changed
the name and labelling of its product. The
product is now called
“Ya Hlêkisa” and is contained in a significantly
different labelling/packaging and
get-up. The first respondent’s
product will be packaged in a glass bottle with a white stopper
whilst the applicant’s
product is packaged in a plastic
bottle with a blue stopper. The product is also made with a
different formula to that of
“Hlêka”.
In
its replying papers the applicant denied that second respondent had
compiled the formula for the manufacture of “Hlêka”,

alleging that it was erstwhile members of the applicant, both
pharmacists, who were responsible. The applicant also alluded
in
reply to certain information it had obtained that existing clients
of the applicant had confirmed either being solicited
by the first
respondent or having already placed and paid for orders with the
first respondent for the new “Hlêka”
(as Retief
puts it) and that the first respondent had advertised on air on the
5
th
of March 2010 on a radio station called Ukozi FM, urging listeners
to purchase the “Ematla Hlêka with the white
cap”.
On these
facts the applicant has moved this court for a final interdict
restraining and interdicting the first respondent from
unlawfully
competing with the applicant by
using
a name or names on its products which accord with or could be
confused with the product of the applicant and in particular
the
product “Hlêka”, “Spool” and
“Tiger’s Claw”;
in
any manner or fashion passing-off any of its products as being
products of the applicant or related to products of the
applicant
or which could be confused with products of the applicant in
particular the product “Hlêka”,
“Spool”
and “Tiger’s Claw”;
2.8.3 in
any manner or fashion making derogatory remarks or publishing
injurious falsehoods regarding the Applicant’s business;
unlawfully
interfering with the applicant’s contractual rights with its
clients to whom it sells and markets its products.
In particular
the products
“Hlêka”,
“Spool”
and
“Tiger’s
Claw”
;
2.9 That
the Second Respondent be similarly restrained and interdicted from in
any manner or fashion assisting the First Respondent
or contributing
to any of the actions of the First Respondent in contravention of
paragraph 2.8
supra
.
[3] Before
proceeding any further I think it well to say a few words as to the
general principles on which passing-off

actions are founded. In the early
decision of
POLICANSKY
BROS., LTD. v POLICANSKY
1935 AD at 89 at p. 97 Wessels CJ held:
“(Passing–off)
is an action in tort and the tort consists of a representation by the
defendant that his business or
his goods, or both, are those of the
plaintiff. The Roman-Dutch law was well acquainted with the general
principle that a person
cannot, by imitating the name, marks or
devices of another who had acquired a reputation for his goods, filch
the former’s
trade (
Ned.
Advies Boek,
vol.
1. adv. 68, p. 161).”
In
CAPITAL
ESTATE AND GENERAL AGENCIES (PTY) LTD AND OTHERS v HOLIDAY INNS INC
AND OTHERS
1977 (2) SA 916
(A) at 929 C Rabie JA (as he then was) defined
passing-off as follows:
“
The
wrong known as passing off consists in a representation by one person
that his business (or merchandise, as the case may be)
is that of
another, or that it is associated with that of another, and, in order
to determine whether a representation amounts
to a passing-off, one
enquires whether there is a reasonable likelihood that members of the
public may be confused into believing
that the business of the one
is, or is connected with, that of another.”
The
classic formulation in English Caselaw on passing-off was that of
Lord Kingsdown in
THE
LEATHER CLOTH CO v THE AMERICAN LEATHER CLOTH CO LTD.
(1865) 11 H.L.C. 538:
“
The
fundamental rule is that one man has no right to put off his goods
for sale as the goods of a rival trader and he cannot therefore
...
be allowed to use names, marks, letters, and other
indicia
,
by which he may induce purchasers to believe that the goods which he
is selling are the manufacture of another person.”
See
also
REDDAWAY
v BANHAM
1896 AC 199.
In
A
G SPALDING AND BROTHERS v A W GAMAGE LTD
(1915) 32 RPC 273
(H.L.). The House of Lords per Parker L.J. held
that:
“
The
proposition that no-one has the right to represent his goods as the
goods of somebody else must, I think ... involve as a corollary
the
further proposition that no-one who has in his hands the goods of
another of the particular class or quality has a right to
represent
these goods to be the goods of that other of a different quality or
belonging to a different class ... The basis of
a passing off action
being a false representation by the defendant, it must be proved in
each case as a fact the false representation
was made. It may, of
course, have been made in express words, but cases of express
misrepresentation of this sort are rare. The
more common case is
where the representation is implied in the use or imitation of a
mark, trade mark name, or get up with which
the goods of another are
associated in the minds of the public or of a particular class of the
public. In such cases the point
to be decided is whether, having
regard to all the circumstances of the case, the use by the defendant
in connection with the goods
of the mark, name, or get up in question
impliedly represent such goods to be the goods of the plaintiff or
the goods of the plaintiff
of a particular class or quality or, as it
is sometimes put, whether the defendant’s use of such mark,
name or get up is
calculated to deceive. It would, however, be
impossible to numerate or classify all the possible ways in which a
man may make
the false representation relied on.”
Although the law
relating to passing-off actions in English Law has been extended and
refined, it is unnecessary for me for the
purposes of this judgment
to reflect further on this aspect.
In
PREMIER
TRADING CO (PTY) LTD AND ANOTHER v SPORTTOPIA (PTY) LTD
2000 (3) SA 259
(SCA) at 267 A Nienaber JA held:
“
Goodwill
is the product of a cumulation of factors, the most important of
which, in the context of passing-off, is the plaintiff's
reputation.
Reputation is the opinion which the relevant section of the community
holds of the plaintiff or his product. If favourable,
it would
dispose potential customers to patronise the plaintiff or his product
and, if unfavourable, it would tend to discourage
them from doing so.
The plaintiff's reputation may be associated with the symbol under
which his product is marketed. The symbol
renders the product
distinctive of the plaintiff or his product. A false representation
by the defendant about the symbol used
by the plaintiff may encourage
or induce potential customers of the plaintiff, believing that they
were patronising him, into patronising
the defendant.”
[4] It
appears to me quite certain from this line of cases
,
that in order to enforce the most elementary principles of commercial
morality among traders, the law demands that the chief distinguishing

characteristic of a passing-off action consist of a misrepresentation
of a particular kind, depending on the circumstances of the
case at
hand and that it is the reputation component of the goodwill arising
out of the conduct of a business which is the right
protected in
passing-off matters. Put differently, the goodwill which is
protected is dependent on an existing reputation. The
mark or symbol
relied upon, must be distinctive of the protectable reputation and
the misrepresentation must give rise to actual
deception or the
likelihood of deception amongst a substantial number of interested
persons in the locality where it is made.
In examining the decided
cases on the subject of passing-off it is also apparent that they
fall into definite classes which have
common features.
[5] It
is trite from case authority that the onus of proving the legal
requirements of a passing-off rests on the party alleging
it (in this
case the applicant) on the ordinary civil standard of a balance of
probabilities. I proceed then to evaluate the various
contentions of
the parties against the background of the relevant facts and legal
principles. Before doing so, it is useful to
remind the reader that
Webster and Page on
The
South African Law of Trade
Marks,
Fourth Edition, para 15.8 emphasise that:
“
The property
protected is not property in the symbol
– be it name, mark or get-up – with which the goodwill is
associated, but in the goodwill itself which will be injured
by the
use of that symbol. As Buckley LJ put it in
HP
Bulmer and Showerings Ltd v J Bollinger SA and Champagne Lanson Pere
et fils
[1978]
RPC 79
(CA) 93:
‘
This
proprietary right recognised by the law is not a right in the name,
mark or get-up itself: it is a right in the reputation
or goodwill of
which the name, mark or get-up is the badge or vehicle: ... What is
of value to A in his trade or business is his
ability to attract
customers in the market. This depends upon the reputation of the
commodity in which he deals. It is this reputation
which in a
passing-off action he is seeking to protect ...’”
In
DISTILLEERDERIJ
VOORHEEN SIMON RIJNBENDE EN ZONEN v ROLFES NEBEL & CO
1913 WLD 3
at 9 the following was stated:
“
A trader has no monopoly in the
get-up of his goods. However great the advantage and merits of his
get-up may be over that of his
rivals, however much money, time and
thought he may have expended over the designing of his particulars,
when once he has used
and published them, they do not become his
property but a common property, which can be appropriated by his
rivals provided they
do not mislead the public but make it perfectly
clear that the goods in the get-up are not his but theirs.”
In
order for the applicant to succeed
,
its rights, if any, have first to be determined. This will depend
upon an affirmative answer to the following three questions:
1. Does
any goodwill/reputation exist in respect of the
“Hlêka”
product?
2. Have
the respondents infringed this goodwill/reputation?
3. Is
this good
will/reputation
capable of being protected by an
Acquilian
action?
(
LORIMAR
PRODUCTIONS INC AND OTHERS v STERLING CLOTHING MANUFACTURERS (PTY)
LTD;
LORIMAR PRODUCTIONS INC AND OTHERS v OK HYPERAMA LTD AND
OTHERS;
LORIMAR PRODUCTIONS INC AND OTHERS v DALLAS RESTAURANT
1981 (3) SA 1129
(T) at 1137 D.)
[6] Goodwill
is defined by Lord Macnaghten in
IRC
v
MULLER & CO.'S MARGARINE LTD.
[1901]
AC 217
(HL)
at 223 as follows:
“What
is good will? It is a thing very easy to describe very difficult to
define. It is the benefit and advantage of the
good name, reputation
and connection of a business. It is the attractive force which
brings in custom. It is the one thing which
distinguishes an old
established business from a new business at its first start. The
good will of a business must emanate from
a particular centre or
source. However widely extended or defused its influence may be,
good will is worth nothing unless it has
power of attraction
sufficient to bring customers home to the source from which it
emanates ... For my part, I think that if there
is one attribute
common to all cases of good will, it is the attribute of locality.
For good will has no independent existence.
It cannot subsist by
itself. It must be attached to a business. Destroy the business and
the good will perishes with it, though
elements remain which may
perhaps be gathered up and be revived again.”
[7] The
case for the applicant rests primarily on its contention that the
name of its product and get-up, in which it alleges that
undisputed
facts show that goodwill exists, is being used by the respondents to
falsely create the impression in the minds of the
public that there
is an association or link between its product and that of the
applicant (that is a deception as to trade provenance/source)
and/or
that it is connected in the course of trade with the applicant’s
business (that is a deception as to business connection).
In both
cases it must be established that the “
Ya
Hlêkisa” label and get-up was calculated to deceive.
(
RECKITT
& COLMAN SA (PTY) LTD v S C JOHNSON & SON SA (PTY) LTD
1993 (2) SA 307
(AD) (as it was then called).)
This
involves the consideration of the question as to whether there was an
imitation of the “Hlêka” get-up and
in deciding
this I have borne in mind that not all imitation is unlawful because
it is legitimate in business up to a point. As
Solomon J said in
PASQUALI
CIGARETTE CO., v DIACONICOLAS & CAPSOPOLOS
1905 TS 472
at 479:
“
A
certain amount of imitation in these matters is perfectly legitimate.
If one manufacturer sees that another manufacturer gets
up his wares
in a form which attracts the public he is entitled to some extent to
take a lesson from his rival and to copy the
get-up, provided that he
makes it perfectly clear 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. So long as he does that a certain
amount of imitation is
legitimate.”
[8] I turn now to
consider the question whether the applicant has shown that it has a
goodwill/reputation in the name and get-up
it wishes to protect and
whether there is a likelihood that members of the public will be
deceived by the respondents’ product.
This of course is a
question of fact which will have to be determined in the light of the
circumstances of this matter. Where
a goodwill or reputation exists,
the name of the holder or his mark or logo, should immediately
conjure up in the minds of the
public the particular class of article
for which the holder is known. It is unnecessary that the public
should be aware of the
identity of the person with whose goods they
associate the symbol in question. In
ADCOCK-INGRAM
PRODUCTS LTD v BEECHAM SA (PTY) LTD
1977 (4) SA 434
(WLD) at 436 H – 437 A Nicholas J (as he then
was) stated:
“
The
delict of passing off consists in a representation, direct or
indirect, by a manufacturer or supplier that his business or goods
or
both are those of a rival manufacturer or supplier.
In the case
of an indirect representation, the plaintiff must prove in the first
instance that the defendant has used or is using
in connection with
his own goods a name, mark, sign or get up which has become
distinctive
.
‘
...
in the sense that by the use of (the plaintiff's) name or mark, etc.,
in relation to goods they are regarded, by a substantial
number of
members of the public or in the trade, as coming from a particular
source
known
or unknown
...’.”
(Halsbury,
Laws
of England
,
3rd ed., vol. 38, p. 597). In other words, the plaintiff must prove
that the feature of his product on which he relies has acquired
a
meaning or significance, so that it indicates a single source for
goods on which that feature is used...”
(my
underlining)
The reputation/goodwill
must attach to the applicant’s business at the time the
respondents commenced the activities complained
of. In
T.
OERTLI AG v EJ BOWMAN (LONDON) LTD
1957
RPC 388
(CA) Jenkins L.J. put this principle across in the following
manner:
“
It is, of course, essential to
the success of any claim in respect of passing off based on the use
of a given mark or get-up that
the plaintiff should be able to show
that the disputed mark or get-up has become by use in this country
distinctive of the plaintiff’s
goods so that the use in
relation to any goods of the kind dealt in by the plaintiff of that
mark or get-up will be understood
by the trade and the public in this
country as meaning that the goods are the plaintiff’s goods.”
In
PASQUALI
,
supra
,
Solomon J at p. 479 continued:
“
That, however, is not
sufficient, for the plaintiffs have to prove not only that there has
been a certain amount of copying, but
they must prove that the
defendants have produced such a colourable imitation of their box or
label that the ordinary purchaser
would be deceived; and if the
defendants in what they have done have fallen short of that, even
though they have made to some extent
a copy of the plaintiffs'
labels, they would not bring themselves within the provisions of the
law.”
[9] Despite the fact that
the applicant tendered no direct customer evidence, I think that
there can be no doubt that the applicant,
on the facts of this case,
having marketed and distributed and sold its product “Hlêka”
over a period of approximately
5½ years from September 2004
until the respondent commenced manufacturing the competing product
“Ya Hlêkisa”
in March 2010, has established a
goodwill and a reputation in respect of its product, by virtue of the
name and logo thereof.
It is inherently probable moreover that that
period of time is sufficient to warrant a conclusion that it must
have become recognised
by a substantial section of the relevant
public as distinctive of the applicant’s product “Hlêka”.
Neither
party took issue with the class of consumer of their
products and I have refrained from expressing an opinion on this
aspect as
being entirely irrelevant to the issues before me.
[10] I proceed then to
the next two questions which are: Have the respondents infringed this
goodwill and reputation and if so can
the applicant claim protection
under the
lex
Aquilia
?
This involves a further two pronged enquiry. The first relates to
the precise kind of get-up used by the applicant to determine
whether
its get-up had become distinctive of its “Hlêka”
product and whether the name “Hlêka”
had acquired a
secondary signification or meaning in connection with that product;
namely that it had become the trade denomination
of the natural
medicinal product made by the applicant (I use the word “made”
in this context, in a loose sense).
The second relates to the issue
of whether the name “Hlêka” in the respondents’
get-up as well as the get-up
itself was calculated to deceive
purchasers of natural herbal medicinal products that the respondents’
product was the product
of the applicant.
[11] The applicant’s
product is bottled in a plastic container with a blue cap although
according to the replying affidavit
white caps were used in January
2010 due to a shortage of blue caps. The get-up surrounding the
bottle has a white background
with a narrow royal blue strip at the
top and a wide red strip at the bottom. Above the red strip is a
narrow shaded area in yellow
bordered by two red lines and what
appears to be an arbitrary design also in red in the yellow column.
In the centre of the label
are thin blue lines, 19 in number on
either side of a picture of a broom contained in a container outlined
in royal blue. At the
top of this picture in red and yellow upper
case letters is the name word “Hlêka” with an
accent in the same
colours on the letter “e”. On the
lefthandside of the label is a table headed “DO YOU HAVE THE
FOLLOWING SYMPTOMS?”
Then follows a description of the product
with a recommendation to try it. Under the 19 blue lines on this
side are the words
“TRUST THE ORIGINAL” in red. On the
righthandside is a table reflecting the medicinal contents of the
product and
the dosage with a child-friendly warning. Under the 19
blue lines on this side is the same message as appears on the left in
the
Sotho language “TSHEPA EO ELENG YONA”. Directly
under the broom in the red column are the words “Hope for
Life!”
The capacity of the container and the name and address
of the applicant also appear in this column,
[12] The respondents’
product is contained in a glass bottle with a white cap. Its label
is one which also has a white background
but with a narrow triangular
patterned orange and light brown column on the top and a wide solid
wine-coloured column at the bottom.
Parallel and adjacent to this
column is the same triangular design at the top of the label but in
red and yellow. As a centre-piece
the label has imprinted on it in a
brown shaded circular frame edged at the bottom in grey and in the
centre in white, a picture
of an indigenous hut with two figures in
the foreground in the act of sweeping the ground. On the right of
the circular frame
is a red seal with the words “THE BETTER
CHOICE” imprinted on it in white. In the brown space at the
bottom of the
circle the words “A BETTER LIFE” appear.
Above the circle in brown upper and lower case letters appear the
words “E
Matla Hlêka Ya Bophelo”. Above that is
the name of the product in bold orange, brown and royal blue upper
case letters
“YA HLêKISA”. The identical table to
that on the applicant’s label appears in exactly the same
position
as on the applicant’s label. The rest of the
information is similar to that contained on the applicant’s
get-up save
that the first respondent’s name and address as
well as the name “Birmans” appear on the label.
[13] In order to assist
in understanding the description of these respective get-ups, they
are reproduced below. The applicant’s
labels are in this form:
The respondents’
labels are in this form:
[14] In considering
whether
there was any distinctive feature characteristic of the applicant’s
product, I have reminded myself that the word
“Hlêka”
means to “clean” only in three of this country’s
official languages, that is Sesotho,
Sepedi and Setswana. The
remainder of the South African official languages use different words
to denote the cleaning process.
The word “Ematla” in the
same three indigenous official languages means “strong”.
Therefore translated
literally the name word “Ematla Hlêka”
means “a strong clean” or “a stronger cleanse”

(in Afrikaans “kragtige skoonmaker”). In my opinion the
respondents submission that its name-mark “Ya Hlêkisa”

and its get-up as it appears on its competing medicinal product is
merely descriptive in nature, cannot be sustained. This is
so
because only members of the public speaking Sesotho, Sepedi and
Setswana would know the literal translation and meaning of the
word
“Ematla Hlêka”. The remaining consumers of this
product would not know that and it is the applicant’s
case that
its reputation and goodwill has been established in the name “Hlêka”
even in non-Sotho, non-Sepedi
and non-Setswana speaking areas such as
in the province of KwaZulu Natal which has a predominately English
and Zulu speaking population
and in the Western Cape Province where
Afrikaans, English and Xhosa are the dominant languages. It is not
possible to escape the
name mark “Hlêka” on the
respondents’ product for it occupies a predominant position on
the respondents’
get-up. The evidence in relation to the
languages in which the words “Ematla Hlêka” and
“Hlêka”
will be understood, has not been challenged
by the respondents and must therefore stand. So what the applicant
is in effect saying
and what this court finds to be proved by the
applicant, is that when members of the public who are not necessarily
speakers of
any of the three indigenous official languages mentioned,
ask or look for “Hlêka” in the stores, they are not

looking at the type of container or the colour of the cap on the
container or the label on the container or any other indicia on
the
label, what catches their eye is the name “Hlêka”.
That is to say, and I find, that the applicant’s
product has
acquired by that description a name mark in the medicinal products
market so distinctive and prominent that whenever
that designation is
used on a product, it is understood to be that of the applicant, even
though the customer may not know the
true identity of the applicant.
This begs the question: What possible intent then could the
respondents have had in placing the
words “Ematla Hlêka”
on the get-up of their product “Ya Hlêkisa” and why
were those words “Ematla
Hlêka” placed in such a
conspicuous position on the respondents’ label? The reason
given is that it was to describe
the product “Ya Hlêkisa”,
but this argument is unsustainable for the reasons I have already
stated. Consequently
I must, as I hereby do, find that the
explanation given by the respondents is false and the reason for such
falsity? To lead members
of the public at first sight of their label
to believe that the respondents’ product “Ya Hlêkisa”
related
to or was associated with or was linked to the applicant’s
product “Hlêka”, that it was one and the same

product (the trade connection) and that it originates from the same
trade source as “Hlêka” (the business connection).

The word “Hlêka” when adopted by the applicant as
its mark, acquired that peculiar distinctive and secondary

signification as a denomination of the applicant’s medicinal
product and in this way it became the property of the applicant.
Even
though not registered as a trade mark, it served as the
applicant’s right and title in connection with its product
“Hlêka”.
I find that the respondents’ get-up
is nothing more, in this respect, than a contrivance for the purpose
of getting the
word “Hlêka” associated with its
manufacture. Kerly:
Law
of Trade Marks and Trade Name
,
10
th
Edition, p. 423 makes it clear that it is not necessary that the
get-up as a whole should be distinctive. A part of the get-up,
as in
the present application, may be shown to be so identified with the
one trader’s goods that its use for similar goods
cannot but be
said to be calculated to pass them off as those of the original
trader( that is calculated to deceive the public).
The inescapable
inference to be drawn from what the respondents have done in adopting
the name “Hlêka” as part
of their get-up is that it
has been done
malo
animo
with a view to possessing the name mark of the applicant, which is
the property of the applicant. That is more than apparent from
the
face of respondents’ label. This is the distinctive part of
its label which is in sync with the applicant’s mark.
Taken
together with the delusive explanation which the second respondent
gives in order to assign to that label some reason, independent
of
the true reason, namely that they wanted to use the word “Hlêka”
in connection with their manufacture so as
to get an increased profit
and consumer demand therefor by the unlawful use of that word, the
only conclusion I can come to is
that the applicant has demonstrated
that it was the intention of the respondents to invade its title in
and to its property in
the name “Hlêka” by availing
themselves of that name. It is therefore my finding that the
respondents have infringed
upon the applicant’s goodwill and
reputation in the “Hlêka” product. The applicants
have accordingly demonstrated
that they have a clear right to the
relief sought, that if such relief is not granted, they will suffer
irreparable injury as the
respondents will attract away from them
valuable consumer patronage and profit which they would not otherwise
be in a position
to do and that the protection afforded by the relief
sought is the only remedy the applicants have.
(
SETLOGELO
v SETLOGELO
1914 AD 221
at 227)
[15] On behalf of the
respondents, Mr. Fischer raised a point
in
limine
.
He argues that in terms of
section 56(4)
of the
Insolvency Act, No.
24 of 1936
, the curators of an insolvent estate must all be joined in
all proceedings commenced after insolvency and that because only one

of the three curators appointed in the second respondent’s
insolvent estate, namely the third respondent, has been cited,
the
application ought to be dismissed on the grounds of non-joinder.
This argument is misconceived as
section 23(10)
of the same Statute
provides specifically for matters such as the present application:
“
The insolvent may be sued in
his own name for any delict committed by him after the sequestration
of his estate and his insolvent
estate shall not be liable
therefore.”
It was also contended on
behalf of the respondents that the applicant had no
locus
standi
to bring these proceedings because it was merely a marketer and
distributor of the goods in question and not the manufacturers

thereof. This argument is short-sighted because on all the evidence
presented by both parties it is clear that the applicant is
not a
mere conduit between the manufacturer and the end user of the “Hlêka”
product. The applicant was not simply
an inactive link in the chain
of distribution but “caused to be imprinted on the product its
own imprimatur or stamp of identity,
selection and approval”.
(
PREMIER
TRADING
-case,
supra
)
It was never in dispute
that the manufacturing of “Hlêka” was done
initially by the Birmans Trust and thereafter
by Hersol (Pty) Ltd
since August 2009, that the get-up of the product was not that
thought out, designed and approved by the applicant
– it is the
applicant’s get-up, and as such it is deserving of protection.
(
RUSMARC
(SA) (PTY) LTD v HEMDON ENTERPRISES (PTY) LTD
1975 (4) SA 626
(W);
SALUSA
(PTY) LTD v EAGLE INTERNATIONAL TRADERS
1979 (4) SA 697
(C))
One
further matter remains, and that is the respondents’ contention
that the ownership of the product, being a material fact
in dispute,
the respondent-friendly test ought to be applied (
PLASCON-EVANS
PAINTS LTD v VAN RIEBEECK PAINTS (PTY) LTD
[1984] ZASCA 51
;
1984 (3) SA 623
(A) at 634 – 635 B). I have done so despite
being of the firm view that the question of ownership of the name
mark “Hlêka”
is a non-issue in these proceedings.
Even if I were to find in favour of the second respondent in this
regard, which I do not
do, that factor alone cannot be allowed to
nonsuit the applicants.
The
following order is accordingly made:
1. The
First Respondent is hereby restrained and interdicted from unlawfully
competing with the Applicant by,
inter
alia
:
1.1 using
a name or names on its products which accord with or could be
confused with the product of the Applicant, and in
particular the
products
“Hlêka”,
“Spool”
and
Tiger’s
Claw”
;
1.2 in
any manner or fashion passing-off any of its products as if being
products of the Applicant or related to products
of the Applicant
or which could be confused with products of the Applicant, in
particular the products
“Hlêka,
“Spool”
and
“Tiger’s
Claw”;
in any manner or
fashion making derogatory remarks or publishing injurious
falsehoods regarding the Applicant’s business;
unlawfully
interfering with the Applicant’s contractual rights with its
clients to whom it sells and markets its products.
In particular
the products
“Hlêka”,
“Spool”
and
“Tiger’s
Claw”
;
2. The
Second Respondent is similarly hereby restrained and interdicted from
in any manner or fashion assisting the First Respondent
or
contributing to any of the actions of the First Respondent in
contravention of paragraph 1 of this order.
3. The costs of this
application are to be paid by the first and second respondents
jointly and severally the one paying the other
to be absolved.
_____________
S. EBRAHIM, J
On
behalf of applicant: Adv. N. Davis SC
Instructed
by:
Engela
& Gibbens Attorneys
c/o Bezuidenhouts Inc
BLOEMFONTEIN
On
behalf of first and
second
respondents: Adv. P.U. Fischer
Instructed
by:
Graham
Attorneys BLOEMFONTEIN
/sp