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1985
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[1985] ZASCA 64
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Brian Boswell Circus (Pty) Ltd. and Another v Boswell Wilkie Circus (Pty) Ltd. (82/85) [1985] ZASCA 64; [1985] 2 All SA 512 (A) (22 August 1985)
81/85
IN THE SUPREME COURT OF SOUTH AFRICA
(
APPELLATE DIVISION
)
In the matter between:
BRIAN BOSWELL
CIRCUS (PROPRIETARY)
LIMITED
1st appellant
and
BRIAN STANLEY BOSWELL
2nd appellant
versus
BOSWELL WILKIE CIRC
U
S (PROPRIETARY)
LIMITED
respondent
Coram: Corbett, Miller, Van Heerden,
JJA, Galgut ct Nicholas, AJJA.
Appeal heard
: 14 May 1985
D
ate of judgment
: 22 August 1985
J U D G M E N T CORBETT
JA:
This appeal concerns the right of a person to
/ trade
2
trade under his own name. The respondent operates a circus in South Africa
under the name and style of "Boswell Wilkie Circus". First
appellant, Brian
Boswell Circus (Pty) Ltd, is the alter ego of second appellant, Brian Stanley
Boswell in that he is the sole director
of and sole shareholder in that company.
In November 1982 it was announced on behalf of first: appellant that it proposed
to commence
business in Natal as a circus under the name "Brian Boswell Circus".
Respondent thereupon brought an urgent application in the Natal
Provincial
Division claiming an order interdicting appellants from carrying on a circus
business under a name containing the word
"Boswell" or in any other way passing
off its (or his) business as that of the respondent anywhere in the Republic of
South Africa.
The application, which was opposed, came initially before THIRION
J, who granted an interim interdict pending the final determination
of the
application and gave leave to
/ the
3
the parties to file supplementary affidavits. This was done and the
application was finally heard by DIDCOTT J, who delivered a reserved
judgment on
14 October 1983. This judgment has been reported (see
Boswell-Wiikle Circus
(Pty) Ltd v Brian Boswell Circus (Pty) Ltd
and Another
1984 (1) SA 734
(N)
). DIDCOTT J granted the application and made an order in the following
terms:
"1. The respondents arc, and each of them is, interdicted from operating the
business of a circus, and from presenting or promoting
any performance by one,
under-the name Boswell or any name of which Boswell is a part.
2.
The Interdict will last
until it is lifted by this Court and, should that not happen, it will run
indefinitely.
3.
The respondents or either of
them may apply to this Court, on fresh evidence which is tendered, for the
discharge of the interdict
or for the amendment of its
terms.
4.
Such application may be brought
at
any stage, after due notice to the applicant or
to the owner or operator for the time being of the circus business
/ which
4
which the applicant now conducts.
5. The respondents are ordered jointly and severally to pay the costs of the
present proceedings, including those the applicant has
incurred by employing the
services of two counsel, but not including any of which Mr Justice Thirion has
disposed already."
On 2 December 1983 the Natal Provincial Division made an order granting
appellants leave to appeal to this Court and at the same time
directing that the
order granted by DIDCOTT J be brought into effect immediately in terms of Rule
of Court 49 (ii). Appellant's attorneys
failed, however, to prosecute the appeal
properly. The notice of appeal was defective and was not lodged timeously with
the Registrar
of this Court; nor were the two special powers of attorney
authorising the prosecution of the appeal timeously filed. An application
for
the condonation of these irregularities was heard by us at the inception of the
hearing of the appeal. Respondent did not oppose
the application and it was
granted at the hearing. Appellants must pay the costs of the application.
/ The
5
The relevant background facts are common cause and may be thus skated. The
Boswell Wilkie Circus, run by the respondent, is the product
of an amalgamation
in 1963 of two circus businesses called respectively "Boswell's Circus" and
"Wilkie's Circus". Boswell's Circus
has quite a long history. In about 1911 four
Boswell brothers, Jim, Walter, Sidney and Alfred, the sons of James Boswell, a
circus
and menagerie proprietor in Britain, came to South Africa to work for the
circus of a Madame Frank Fillis. When the Fit. Lis circus
broke up in 1913 the
Boswell brothers started their own circus under the name and style of "Bos-.well
Brothers Circus". This circus
thereafter continued to operate in South Africa in
association with the name Boswell. In 1948 a company, Boswell Brothers Circus
(Pty) Limited, was incorporated to run what was then styled the "Boswell Circus"
or, sometimes it would seem,"Boswell's Circus".
This company was "owned" by the
Boswell family. During 1953 African Consolidated Theatres (Pty) Limited
/ acquired
6
acquired a controlling interest in Boswell Brothers Circus (Pty) Limited and
by 1963 it owned the entire issued share capital in that
company.
In 1955 Whilma Howe Wilkie started operating a circus in South Africa under
the name and style of "Wilkie Circus" or "Wilkie's Circus".
The two circuses
traded in opposition to one another. Then came the amalgamation agreement of
1963. In terms thereof Boswell brothers
Circus (Pty) Limited sold the assets of
its circus business to the company under which Wilkie traded, viz. African
Entertainments
(Pty) Limited and a combined circus known as "Boswell Wilkie
Circus" came into being. This circus has operated under that name ever
since.
The 1963 agreement provided that 50 per cent of the shares in African
Entertainments (Pty) Limited were to be sold to African
Consolidated Theatres
(Pty) Limited, the other 50 per cent remaining with Wilkie. In 1978 the assets
of African
/ Entertainments
7
Entertainments (Pty) Limited were transferred to respondent; and at present
45 per cent of the shares in respondent are held by Wllkie,
45 per cent by SA
Teater Belange (the successor to African Consolidated Theatres (Pty) Limited)
and 5 per cent each by M. Carre and
T Cripsy, both directors of respondent.
Second appellant describes himself as "a fifth generation Boswell to be
involved in the circus industry". He was born "in the circus"
and spent the
first few years of his life with his father, Stanley Boswell, in the circus.
After leaving school in 1959 he joined
the Boswell Circus professionally and
remained with it until the amalgamation in 1963. In 1964 he joined a rival
circus, the Chipperfield
Circus, and was employed there as ring-master and
lion-tamer until the end of 1967, when the circus closed down. From 1973 onwards
the second appellant has managed a lion park
/ and
8
and animal farm near Pietermaritzburg. And, as I have indicated, it was in
November 1982 that second appellant announced his intention
to operate, through
first appellant, a circus under the name and style of "Brian Boswell Circus.
Respondent's claim to interdict the appellants from using the name Boswell in
this way is based upon the averment that this would
amount to a wrongful passing
off by the appellants. The wrong known as passing off is constituted by a
representation, express or
implied, by one person that his business or
merchandise, or both, are, Glare connected with, those of another. In the
present case
we are concerned with businesses which provide entertainment to the
public and which do not market merchandise. I shall, therefore,
confine my
further discussion of the legal principles involved to wrongful representations
concerning the wrongdoer's business. Where
they are implied, such
representations are usually made by the
/ wrongdoer
9
wrongdoer adopting a name Tor his business which resembles that of the
aggrieved party's business; and the test then is whether in
all the
circumstances the resemblance is such that there is a reasonable likelihood that
ordinary members of the public, or a substantial
section thereof, may be
confused or deceived into believing that the business of the alleged. wrongdoer
is that of the aggrieved
party, or is connected therewith. Whether there is such
a reasonable likelihood of confusion or deception is a question of fact to
be
determined in the light of the particular circumstances of the case. (See
generally Polic
ansky Bros Ltd v L & H Policansky
1935 AD 89
, at pp
97, 98;
Truck and Car Co Ltd v Kar-N-Truk Auctions
1954 (4) SA 552
(A),
at pp 557, 559;
Capi
tal
Estate and General Agencies (Pty) Ltd and
Others v Holiday Inns Inc and Others
1977 (2) SA 916
(A), at p 929.) Passing
off is a form of wrongful competition. It is unlawful because it results,
/ or at
10
or at any rate is calculated to result, in the improper filching of another's
trade and an improper infringement of his goodwill and/or
because it may cause
injury to that other's trade reputation (
Capital Estate case supra
at pp
930 H _ 931 C) .
In a passing off action factors of importance are: (1) whether the defendant
is engaged in the same Field of business activity as
the plaintiff, and ( 2 )
whether the plaintiff's trade or business name has acquired a reputation, ie has
become distinctive of,
or in the minds of the public is associated with, the
business carried on by the plaintiff. Engagement in the same Field of business
activity is not a pre-requisite to success (Capital
Estate
case,
supra
, at p 929 E - G), but clearly the existence of this factor would
tend to enhance the likelihood of confusion or deception as far
as the general
public is concerned. The importance
/ of
11
of the acquisition by plaintiff of a reputation in the trade name is two
fold. Firstly, whether the general public will be confused
or deceived into
thinking, because of identity or similarity of names, that the business of the
defendant is that of the plaintiff,
or is connected therewith, must, as a matter
of logic, depend on the extent to which that name is associated in the minds of
members
of the public with the business carried on by the plaintiff, ie the
extent to which plaintiff has acquired a reputation in that trade
name.
Secondly, as the rationale of the wrong of passing, off is the protection of the
plaintiff's trade and goodwill, a valid cause
of action would seem to postulate
the existence of a goodwill, ie reputation, attaching to that trade name.
Whether reputation, in
this sense, is always a sine
qua
non of a
successful passing off action need not now be decided. (See discussion in this
regard in
Lorimar Production
s
In
c and
/
Others
12
Others v Sterling
Clothing
Manufacturers (Pty) Ltd
1981 (3) SA
1129
(T), at pp 1139 E - 1140 A; 2 LAWSA 505, pp 311-12; Chowles and Webster,
SA Law of Trade Marks
, 2 ed, pp 302 - 4; Van Heerden en Neethling ,
Onregmatige Mededinging
, pp 99-100.)
In the present case the name adopted by appellants for their circus business
is second appellant's own name, Brian BoswelL. Assuming
For the moment that the
adoption of this name is likely to cause deception and/or confusion, the
question which arises is whether
the second appellant and his a alter
ego
, first appellant, are not entitled willy-nilly to trade under that
name. Generally, the courts in this and other countries have shown
a reluctance
to prevent a man trading under his own name. In England this reluctance is
evident in many of the decisions referred
to by the Court a
quo
(sec
Judgment pp 743 ff). In the United States of America the right of a man to do
business under his own name as been described
as "one of the sacred rights
known
/ to the
13
to the law" and as "part of the natural and inalienable rights guaranteed by
the very first clause of our Constitution" (see Callmann
Unfair
Com
p
etition
, S 21.28, p 114). And in Policansky's case, supra,
WESSELS CJ stated it: as a cardinal principle Chat (at p 101) —
"A person has a property right or a quasi property right to the use and
enjoyment of his own family name as well in carrying on a
business and selling
his goods as he has
to any other species of property
Consequently every person has a
prima Facie
right honestly to use his own
name in his own business and to sell his goods under his own name, and any
injury resulting therefrom
is a damnum
absque
i
nju
ria."
Whether the right to
use one's own name in business is
properly to be regarded as a property right or a quasi
property right may be open to some debate (see in this
connection the comments in Van Heerden en Neethling op. cit.,
p 105 n 2; and see
Patlansky & Co Ltd v Patlansky Bros
1914
TPD
475
, at p 491) but the right is nevertheless firmly
entrenched in our law. Moreover, Just as a person may
/ use
13(a)
use his own name where he alone conducts his business, so
may he use his
name in the name a firm or company conducting the business (
Policansky
's
case ,
supra
, at p 102) ; and this principle would particularly apply
where the company constituted his alter ego.
There are, however, Limitations upon the right of a person to trade under his
own name. These were stated by WESSELS CJ in the
Policansky
case as
Follows (at pp 103-4);
"(a) If he has contracted not to do so.
(h) If the business is started for
the fraudulent purpose of imitating another's goods and so filiching his
trade (
HolLoway v Holloway
,
[1850] EngR 828
;
13 Beav. 209
,
51 E.R. 81
;
Croft v Day
,
[1843] EngR 1231
;
7 Beav 84
,
49 E.R. 994
;
Sykes v Sykes
3 B & C 54 1, 107 E.H.
834).
(c) If the defendant has garnished
the use of another's name by imitating the
get-up of the Latter's goods (
Hollowa
y v
Holioway
(
supra
) and
Turton v Turton
(
supra
),
or by imitating his labels, etc., so as to
deceive - (
Melachrino E
g
ypt
ion
Ciga
reL.Le
Co . (4 If . P.C. 215).
/ (d)
14
(d) If a person has previously through
his advertisements and through the
quality of
his goods made his name valuable as a trade
name so that his
name has become distinctive both of his goods and of himself as the manufacturer
of those goods, and if his goods
have come to be universally known in the market
by his name then his name is said to have obtained a secondary meaning. When
this
is the case another person cannot use that name in connection with a
similar class of goods unless he makes it perfectly clear to
the public that he
is not selling the goods of the original manufacturer — 'for the plaintiff
by the reputation he has acquired
in the business has really come to denote the
goods by his own personal name just as he might denote them by some fancy name
that
he might choose to use',
per
VAUGHAN WILLIAMS in
Jamieson
's
case,
15 R.P.C. 169.
(e) If it is manifest from the adver
tisements, the get-up of the
articles, or
other acts of the later manufacturer that
he is representing
that the goods are the
goods of the earlier manufacturer, then it
does not
matter whether he is doing so with
a deliberate intention to deceive or
not.
He must not carry on his business in such a
way as to lead those who
deal with him in
that business to believe that they are buying
goods of
the earlier manufacturer of the same
name,
John Brinsmead & Sons v T E
Br
insmead
(13 T.L.R 3)
;
Teofani
's case (
supra
)."
/Having
15
Having stated that the question whether there has been a
passing off is one of fact to be decided on the particular
facts of the
case, the learned Chief Justice went on to
say (at p 104) -
"In every case the Court will enquire whether the defendant has honestly
carried on the business under his own name and whether he
has sufficiently
distinguished his goods by the manner he has affixed his name to the goods and
by the get-up of his goods, so that
an ordinary reasonably observant purchaser
can see that there is sufficient distinction on between the goods of the rival
traders
of the same name, John
Brinsmead & Sons v S.W
.
B
rinsmead
(30 R.P.C. 137)."
It is on this basis that our law seeks to reconcile the competing interests
of prior and subsequent users in business of a family
name.
I return to the facts of the present case. In the
founding affidavit it was stated :-
"12. The name 'Boswell' has since about 1913
up till now, i.e. Tor a period of about 70 years, been closely associated
with circus
/ activities
16
activities in South Africa. In fact, when the 1963 Agreement was entered into,
consideration was paid to African Consolidated Theatres
(Pty) Limited for the
goodwill which had over the years been attached in the circus world in South
Africa to the name 'Boswell'.
In this connection 1 refer to clause 4 of annexure
'B'. I respectfully submit that over the years the name 'Boswell' in association
with the word 'circus' has clearly obtained a 'secondary meaning' throughout the
Republic of South Africa and has become distinctive
and universally known in
South Africa as the name of the, circus run by the Applicant.
13. The association of the names 'Boswell' and 'Wilkie' in the name 'Boswell
Wilkie Circus' in South Africa was so important to me
that although I was one of
the purchasers of the Boswell Circus and although I still had my own circus
operating under my own name,
I nevertheless thought it prudent from a marketing
point of view to use the name 'Boswell' before the name 'Wilkie' in the new
'Boswell
Wilkie Circus' trading name. I decided on such use as I realised the
value of the Boswell name in the circus world in South Africa.
We in fact paid
goodwill for the use of the name
Boswell."
In his opposing affidavit
second appellant responded that he had no knowledge of, but did not deny the
contents of par. 12 of the
founding affidavit. This
/ admission
17
admission would cover,
int
er alia, the averment in par. 12 that over
the years the name "Boswell", in association with the word "circus", had clearly
obtained
a secondary meaning throughout the Republic of South Africa and had
become distinctive and universally known in South Africa as the
name of the
circus run by respondent. As regards par. 13, second appellant stated that he
had no knowledge of the reason why the
name "Boswell" appeared before the name
"Wilkie" and consequently could not admit the allegations contained therein.
Appellants took
this issue no further. In my view, this response docs not raise
a real dispute of fact and the Court may proceed on the basis that
the
allegations in par. 13 are correct (cf. Plascon-
Evans Paints v Van Riebeeck
Paints
[1984] ZASCA 51
;
1984 (3) SA 623
(A), at pp 634-5). In a further affidavit, filed
after the granting of the temporary interdict by THIRION J, second appellant
sought
to withdraw the admission relating to the name Boswell having acquired a
secondary meaning and to
/ change
18
change his response to a denial of respondent's averment in this regard. He
attributed his failure initially to deny this averment
relating to a secondary
meaning to inadvertence due to the haste with which his opposing affidavit way
prepared.
DIDCOTT J found that the name Boswell had indeed gathered a secondary meaning
which linked it peculiarly with the circus owned by
respondent (see judgment a
quo
at pp. 737 H - 738 A). He came to this conclusion after a full review
of the evidence (see judgment p. 738) and taking full account
of second
appellant's belated denial. This finding was challenged on appeal. Appellants'
counsel stressed that there was a difference
between proving the necessary
reputation "which is a pre-requisite to a successful passing off action" (I
quote from his heads of
argument) and establishing a secondary meaning. He also
criticized DIDCOTT J's reliance on the invoices, receipts, delivery
/ notes
19
notes, etc. as confirmation of his belief that the Boswell element in the
Boswell Wilkie name was the one "which tends to catch the
eye or ear and lodge
itself in the mind" (see judgment p. 738 G - H) and referred in this connection
to
Policonsky
's case, supra, at pp. 90 -
I agree with the Court a quo's finding as to a secondary meaning. It may well
he, as argued by appellants counsel, that there is a
diference between
establishing reputation and proving a secondary meaning, though the latter would
seem to include the former. Nevertheless,
if one adapts the definition of
secondary meaning given in
Policansky
's case, at p. 103 (quoted above) to
the case of a business name (as distinct from merchandise), it seems to me that
the evidence
docs establish as a matter of probability that the name Boswell has
become distinctive of the circus run by respondent and the circus
run by
respondent has become universally known to circus-goers as "Boswell's Circus".
it is not necessary for me to canvass
/ the
20
the facts in great detail. I would merely refer in particular to the evidence
that the circus and its predecessor have been associated
for more than seventy
years with the name Boswell; that this name has always featured prominently in
relation to the circus even
after the Boswell family ceased to be connected with
the circus; and that at the time of the amalgamation a substantial sum was paid
for the
goodwill
attaching to the name Boswell
and the Boswell name was deliberately given priority to Wilkle in the combined
name. In addition, there
is evidence from individuals, such as Buitendag.
Buitenbos and Palmer, who had business dealings with respondent and deposed to
having
always associated the name Boswell with the circus run by respondent.
As to the evidence consisting of invoices, receipts, delivery notes, etc,
this was adduced in substantiation of the averment by Whilma
Wilkie, in his
replying
/ affidavit
21
affidavit, that the public commonly refer to respondent's circus as
"Boswell's Circus". An application bo strike out: these documents
was not
proceeded with in the Court below (judgment p 738 H). I am not sure that
Policansky
's case, where the state of mind of the persons who wrote the
letters was important on the issue as to confusion, is necessarily relevant
authority in the present case where the documents are put in merely to
substantiate Wilkie's averment that respondent's business
is commonly called
"Boswell's Circus", whatever the reasons for that may be, but I shall accept in
appellants' favour that the Judge
a
quo
ought not to have had regard to
this evidence. Nevertheless, it is clear from the concluding sentence on p 738
of the judgment that
DIDCOTT J would have come to the same conclusion without
this evidence. And, in my opinion, having regard to the remaining evidence,
he
would have been justified in so doing. Appellant's argument in
/ regard
22
regard to secondary meaning must accordingly fail.
The next question is whether appellants' use of the name "Brian Boswell
Circus" is reasonably likely to confuse or deceive ordinary
members of the
public, or a substantial section thereof, into believing that appellants' circus
is that of the respondent, or is
connected with respondent's circus. DIDCOTT J
went fully into the matter and answered this question in the affirmative (see
judgment
p 739 A - 741 H). Appellants' counsel argued that ho ought to have
answered the question in the negative. I cannot agree. I do not
propose to deal
in detail with this issue. Were I to do so I would, to a large extent, simply be
repeating what was said by DIDCOTT
J. I would merely emphasize (i) that
respondent's circus is popularly known as Boswell's Circus , ( ii ) that a
circus associated
with this name (which has indeed acquired a secondary meaning)
has been operating in South Africa
/ for..
23
for about 70 years, and (iii) that appellants' circus will operate in areas
which are normally visited by respondent's circus. It
is true that appellants
have not called their circus "Boswell's Circus". Had they done so, the issue of
deception and/or confusion
would have been unarguable from appellants' point of
view. But I do not think that the prefixing of the first name "Brian"
sufficiently
distinguishes appellants circus from respondent so as to prevent
deception and/or confusion . The dominant feature of the name adopted
by
appellants is the word "Boswell" and I agree with DIDDCOTT J (see judgment, P
739 G-ll) that colloquially appellants ' circus
is likely to become known to at
least a substantial segment of the circus-going public as "Boswell's Circus", if
it is permitted
to carry on business under its present name. In support of
respondent's case on this aspect of the matter Wilkie referred in the
founding
affidavit to confusion that had already taken place between respondent's circus
and the
/ Lion
24
lion park and animal farm run by second appellant under his own name. (And
supporting affidavits were Filed in substantiation of this.)
In his opposing
affidavit second appellant stated with reference to allegations relating to
confusion, the following:
" I am unable to comment on those other
than to say that it may be possible that some confusion may take place but
that I believe that this is not sufficient ground to prevent
me from trading
under my own name, particularly where care has been taken to present different
mages of the two circuses."
This statement goes a long way towards admitting the reasonable likelihood of
confusion; and it is significant that second appellant
does not suggest that the
prefixing of the name "Brian" will clearly distinguish the two circuses. In my
opinion the respondent established
the reasonable likelihood of deception and/or
confusion.
/It
25
It was submitted by appellants' counsel that, in the event of there being a
Likelihood of deception and/or confusion, all that the
law requires appellants
to do is to take reasonable steps to avoid such deception and/or confusion
— no matter whether such
steps are successful or not — and that
appellants have taken such reasonable steps. Apart from the difference in name
(discussed
above), the steps which second appellant says have been taken are (i)
the use of different colour combinations for appellants' circus
vehicles and
circus tent and (ii) the practice of announcing at circus performances that
appellants' circus is in no way connected
with "any other circus which is
currently touring South Africa".
I agree with DIDCOTT J (see judgment p. 741 C-E) that these measures are not
likely to have much effect.
I am not convinced that the ordinary member of
the public would be so conversant with colour schemes as to notice the
difference;
nor do I see why he should not merely conclude that respondent had
changed the colours of
/ its
26
its vehicles and circus tent. The announcement seems to me to be somewhat
ambiguous, but in any event, as
DIDCOTT J rightly comments, by that stage the
spectators have bought their tickets and are seated - their custom has been
diverted.
The submission that in circumstances such as these all that the appellants
need do is to take reasonable steps to obviate deception
and/or confusion -
irrespective of the success of these steps - is in my opinion without substance
. In
Policansky
's case,
supra
, at pp 103 :in
fine
(quoted
above) VESSELS CJ stated that where a business name has acquired a secondary
meaning another person "cannot use that name
in connection with a similar class
of goods unless he makes it perfectly
clear
to the public that he is not
selling the goods of the original manufacturer" (my italics). Translated to the
Tacts of this case,
this means that appellants cannot use the name Boswell
in
/ connection
27
connection with its circus business unless they make it perfectly clear to
Che circus-going public that their circus is not that of
the respondent and is
not: connected with respondent's circus. In my opinion, any disclaimer or other
steps taken to thus enlighten
public must be sufficient to eliminate the
likelihood of deception or confusion. In England the approach is, I believe, the
same.
The usual formula used in qualified injunctions is that the defendant is
forbidden from using the disputed name or mark "without
clearly distinguishing"
his merchandise or business from that of the plaintiff (see eg.
Reddaway v
Hanham
1896 AC 199
, at; p 222;
F Reddaway & Co Ltd v Ahlers
(1902) RPC 12
, 16;
1' Reddaway & Co Ltd v Frictionless Engine Packing
Company Ltd
(1902) 19 RPC 505
;
Daniel and A
rte
r v Whitehouse and
Overall
(1898) 16 RPC 71
, 75-6;
Parker-KnoL1 Ltd v K
n
ol 1.
International Ltd
(1902) RPC 243
, at pp. 247, 248, 258). In the United
States
/of
28
of America it is established that a personal or family name may by usage,
acquire a secondary or trade meaning denoting the goods
or business of a
particular individual so as to entitle the user to protection against any unfair
or piratical use thereof by another;
and where a family name has been adopted
and become established as a trade name, a later use of the same or a similar
name must use
"such means or precautions ,-as are necessary" in order to
distinguish his goods or business from those of the former (see 74 American
Jurisprudence pp. 775-6 and supplement pp.95-6).
for these reasons I am not satisfied that the steps hitherto taken by
appellants to avoid deception and/ or confusion are likely to
be effective.
They, therefore, do not absolve appellants from legal liability.
finally , appellants counsel criticized paragraphs 2, 3 and 4 of the order of
the Court a quo and submitted
/ that
29
that the Court ought simply to have given a qualified interdict, using the
formula "without clearly distinguishing". I think that
there is substance in
this criticism. In terms of the order of the Court a quo appellants arc
interdicted in absolute terms from
using the name Boswell in relation to their
circus business. Should they hit upon a form of disclaimer or other precaution
which
would effectively distinguish their circus from that of the respondent
they will not be entitled to resume the use of the name Boswel'l
without a
further application to Court. This seems to me to place an undue burden on the
appellants. In such circumstances they should
be free to act without a fresh
court order. Naturally, if they do proceed to use the name Boswell, they run the
risk that the disclaimer
or other precaution will prove, in Law, to he
ineffective; but that is their concern. They should at least have the freedom to
devise
what they can so that second appellant can trade under his own name with
impunity.
/ I accordingly
30
I accordingly think that a qualiTied interdict would be the appropriate
order. (Cf. the Form of order granted in the English cases
referred to above.)
This alteration to the order of the Court a
quo
should not affect the
costs of the appeal. This much was conceded by appellants' counsel.
It is accordingly ordered as follows:
(1)
Subject to the alteration
to the Order of the Court a
quo
set forth in par. (2) of this order, the
appeal is dismissed.
(2)
The Order of the
Court a
quo
is altered to read:
"1. The
respondents are, and each of
them is, interdicted from operating the business of a circus, and from
presenting or promoting any circus performance, under the name
Boswell or any
name of which Boswell is a part, without clearly distinguishing their circus or
performance from the circus of the
applicant.
/ 2
31
2. The respondents are ordered jointly and severally to pay the costs of the
present proceedings, including those the applicant has
incurred by employing the
services of two counsel, but not including any of which Mr Justice Thirion has
disposed already."
(3) Appellants shall pay the costs of the appeal,
including the costs of
two counsel.
(4) It is recorded that, the application by
appellants for condonation has
been granted.
Appellants (applicants) shall pay the costs
of this
application.
M M Corbett.
MILLER JA)
VAN HEERDEN JA) CONCUR
GALUUT AJA) LONl.UH.
NICHOLAS AJA)