BON MARCH (PVT) LTD v BRAZIER & ANOTHER 1984 (2) ZLR 50 (S)

Flynote

Delict — passing off — two businesses with similar names — businesses totally different in nature and size — whether reasonable likelihood of confusion established — whether any likelihood of injury — evidence necessary — geographical situations of two businesses — goodwill — effect on — meaning of "goodwill".

Headnote

In discussing the delict of passing off, there is one simple legal principle involved: there must be a representation by one person that his business or merchandise is that of another. In order to determine whether a representation amounts to a passing-off, one must enquire whether there is a reasonable likelihood that a member of the public may be confused into believing that the business of the one is, or is connected with, that of another. Whether there is such a likelihood is a question of fact to be determined in each case.

Factors to be considered include:

• (1) whether the two businesses operated in the same field of activity;

• (2) whether the business name of the complainant was in fact well known;

• (3) whether because of the reputation it had acquired in the area in question there was goodwill attached to its name there;

• (4) the distance between the two businesses;

• (5) whether there actually is confusion in the minds of the public.

With regard to (5), the mere fact that one business occasionally received mail or orders intended for the other would not be decisive, as it is an inconvenience to which all people and all firms carrying on business under names which may be in anyway similar to the names of other people are subject. In addition, the fact that the businesses were totally different in nature and size would reduce the risk of confusion.

"Goodwill", meaning the attractive force that brings in custom, is usually a local thing, gained within the perimeters within which a particular business operates. Wherethere is no goodwill attaching to a particular business, it is even less likely that confusion will occur. The existence or otherwise of goodwill is a question of fact.

It may also be the case that the words which apply to the complainant have acquired such a distinctive name among the public as to confer on the person who has used it a right to insist that others using those words must qualify them. Where the name is a descriptive one, the courts will be very reluctant to interfere even where the defendant has taken a name very closely resembling that of the plaintiff. Where the name is a fancy one, the name must have acquired a secondary meaning for the purposes of passing off, through the association between it and the business which bears its name, so that in the minds of the public it is distinctive of that specific business.

In any event, even if it were established that there was a reasonable likelihood of confusion, it also had to be shown that this caused the diversion of custom from the complainant's business or injury to its business reputation, or both.

Decisionof WADDINGTON J in Bon March— (Pvt) Ltd v Brazier 1984 (1) ZLR, upheld.