This blog was co-authored by Thabo Kolele, Candidate Attorney.

Passing off occurs where an individual or a business misrepresents someone else’s goods or services in order to try and pass them off as being those of their own. Passing off is a common law remedy which seeks to protect businesses from unfair competition. The act of passing off may be either intentional or unintentional, when such conduct is likely to cause damage to the goodwill or reputation of the owner of the get up or reputation in question.

The common law remedy of passing off allows a business to take legal action against third parties for misrepresentation of the claimant’s goods or services, which result in confusion among consumers and a misperception of an association between the parties in question. Three elements must be satisfied in order to sustain a passing off claim at common law, namely (i) goodwill or reputation in the business and brand, (ii) a misrepresentation, whether direct or indirect, that is likely to confuse the public, and (iii) such misrepresentation has caused, or is likely to cause, damages to the goodwill or reputation of the business. The above elements were articulated in Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc. 1977 2 SA 916 (A).

Brand reputation is one of the fundamental requirements to sustain a passing off claim. Reputation is inextricably linked to misrepresentation, in that only a brand that has a reputation, or common popularity can be misrepresented.

Registered trade marks enjoy protection in terms of the Trade Marks Act, 1993. However, the passing off remedy affords the protection at common law, and is an avenue for relief available to the owners of unregistered marks or get ups which have substantial popularity amongst the public. Proving such reputation may be a difficult and costly procedure, and it is therefore always preferable to secure registration of marks or get ups as trade marks.

In Evrigard (Pty) Ltd v ENB Import And Export (Pty) Ltd and Another (57565/2021) [2023] ZAGPJHC 1014, the High Court granted judgment against a party who sought to utilise the common law protection against passing off of a mark that was not registered. The court indicated the importance of originality of the mark in determining the applicability of the common law remedy. Like brand reputation, originality (as this concept is dealt with under copyright law, and not novelty as required for registration of a patent) is a fundamental requirement to sustain a passing off claim. The applicant in this case was unable to prove that the goods in question competed with one another. This led the Court to hold that “in the absence of competing goods, there is no substantive case of passing off.” This evidences the fact that passing off is a form of unlawful competition.  In this case, the applicant failed to establish that there was sufficient reputation of the mark amongst a substantial number of persons to prove the distinctiveness of, and the reputation in, the goods in question.

The above cases indicate the applicability and resolution of passing off as a common law remedy while highlighting the importance of reputation and originality in affording the requisite common law protection to the mark/get up in question, whether registered or not.