Boswell-Wilkie Circus (Pty) Ltd v Brian Boswell Circus (Pty) Ltd and Another

• Jurisdiction: South Africa
• Judge: Didcott J
• Judgment Date: 14 October 1983
• Hearing Date: 11 March 1983
• Court: Natal Provincial Division

Didcott J:

The applicant owns and runs a circus. The name of this is the Boswell-Wilkie Circus. It performs throughout South Africa, touring the country continually and visiting Natal at regular intervals. It has done the same for the past twenty years.

A new and competing circus has now come onto the scene, in A Natal at all events. Such belongs to and is operated by the first respondent. It is called Brian Boswell's Circus. Brian Boswell is the name of the second respondent. The first respondent is his alter ego. He holds all the shares in it and is its sole director.

The litigation I have to decide is a fight over the name B Boswell, over its inclusion in the name of the new circus. The applicant objects to that. The effect, it complains, is to pass off such separate circus as the Boswell-Wilkie Circus or as a circus connected with the Boswell-Wilkie Circus. The respondents are thus poised to trade on the reputation of the Boswell-Wilkie Circus, it fears, drawing the public from its tent to theirs by unfair means. It consequently claims an C interdict against them. This, if granted, will restrain them from continuing to call Brian Boswell's Circus by that name. They will also be prevented from running any circus under a name of which Boswell is a part.

The interdict was sought in the beginning as a matter of urgency. The application for it first came before this Court on D 30 November 1982. The respondents had been given inadequate notice of the proceedings and an insufficient opportunity to prepare their answer. THIRION J, who dealt with the case at that stage, therefore adjourned its hearing for three days. Opposing and replying affidavits were then filed, but they had been drawn in haste and the evidence remained far from E complete. As a result THIRION J adjourned the hearing once more when it was resumed on 3 December 1982, this time for a much longer spell, until 11 March 1983. He granted the parties leave to supplement their affidavits. After listening to what each side had to say, he also issued a temporary interdict along the lines of the final one claimed, but lasting only F until the application was eventually determined. Further affidavits were lodged, and on 11 March 1983 the case was at last argued. I then heard it.

The Boswell-Wilkie Circus, I learnt, was the product of a merger between two established businesses, Boswell's Circus and Wilkie's Circus. The story the affidavits tells about them and G their union is the following. None of it is in issue.

Four brothers called Boswell founded the Boswell Brothers Circus in 1913. It operated as an independent concern for fifty years. During that period its name was shortened to Boswell's Circus. A company was also formed which took it over and became its owner. This was Boswell Brothers Circus (Pty) Ltd. At first H the shares in the company were all held by members of the Boswell family. They lost control of the company during the last decade of the period, however, when African Consolidated Theatres (Pty) Ltd acquired most and then all of the shares. By 1963 the family's links with the business had been broken.

Wilkie's Circus was a good deal younger. A man named Wilkie started it in 1955. A company was floated in its case too, which owned

Didcott J

the business. The company was called African Entertainments (Pty) Ltd. Until 1963 Wilkie and his nominees held all the shares in it.

The two circuses were amalgamated in 1963. The assets of the Boswell Brothers company, including the business of Boswell's A Circus, were bought by African Entertainments. At the same time the shares in African Entertainments were divided equally between Wilkie and African Consolidated Theatres. A single circus emerged under the ownership of African Entertainments. This was the Boswell-Wilkie Circus.

B The applicant entered the picture in 1978. The business and assets of African Entertainments were then transferred to it. Its largest shareholders are Wilkie, who is its managing director, and SA Teater Belange (Edms) Bpk, the holding company of African Consolidated Theatres or, as that concern is now known through a change of name, Kinekor Theatres (Pty) Ltd.

C The second respondent's tale is briefer. It too, is to be found in the undisputed evidence. He belongs to the family of circus Boswells. He has had, however, no long career of his own in circuses. He worked for Boswell's Circus for the last three years of its separate existence. For the next three years he D was the ringmaster of and a liontamer in a different circus. That was the extent of his involvement in the circus world until, some sixteen years later, he returned to it with his current venture. He had been busy in the meantime looking after a menagerie he owned.

Such is the background to the litigation. The general E principles which govern it are clear enough. The following, according to the Appellate Division, is their gist:

"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 F confused into believing that the business of the one is, or is connected with, that of another... Whether there is a reasonable likelihood of such confusion arising is, of course, a question of fact which will have to be determined in the light of the circumstances of each case."

The quotation comes from the judgment of RABIE JA in Capital Estate and General Agencies (Pty) Ltd and Others v Holiday INNS G Inc and Others 1977 (2) SA 916 (at 292C - E). That the basic rule is straightforward, and that what gives difficulty and causes controversy when these exist is usually its alignment with the facts found in individual cases, was stressed in Durban Gift Shop (Pty) Ltd v The Gift Box (Pty) Ltd 1952 (4) SA 493 (N) H , a passing off suit which went on appeal to the Full Bench of this Division. BROOME JP said (at 496F):

"We were favoured with a reference to a great number of decided cases, but a preoccupation with decided authority in cases of this sort is apt to obscure two things: first, that they all depend upon a simple, elementary legal principle and, second, that everything else in them is fact. The legal principle is that a defendant may not falsely represent that his business is the business of the plaintiff."

Much the same point had already been made in Reddaway and Another v Banham and Another [1896] AC 199, a leading English case

Didcott J

on passing off. The speech lord HALSBURY LC delivered on that occasion began thus (at 204):

"My lords, I believe in this case that the question turns upon a question of fact. The question of law is so constantly mixed up with the various questions of fact which arise on an enquiry A of the character in which your Lordships have been engaged that it is sometimes difficult when examining former decisions to disentangle what is decided as fact and what is laid down as a principle of law. For myself, I believe the principle of law may be very plainly stated, and that is that nobody has any right to represent his goods as the goods of somebody else."

Similar remarks were passed by Lord HALSBURY LC in Birmingham Vinegar Brewery Co Ltd v Powell [1897] AC 710 (at 711). As far B as the law goes, all that remains to be mentioned at present emerges from the judgments of BROOME JP, who added (at 496H - 497A):

"The enquiry in such a case is whether the threatened representation is calculated, or likely, to deceive. If it is, the Court may interdict it... The intention of the representor is important because, if he intended the representation to deceive, the Court will not be astute to find C that it... will fail in its object. But his liability to be interdicted does not depend on proof of any such intention."

The question posed by the present proceedings, or the initial and fundamental one at any rate, is therefore this. Is the respondent's use of the Boswell name likely, in all the D circumstances of the matter, to lead the public into believing that their circus is the applicant's circus or some circus connected with the applicant's circus? If it is, it amounts to a representation that such is the case and, since it is not, to a misrepresentation. The class whose belief counts consists of "the ordinary run of persons", as Lord LANGDALE MR described E them in Croft v Day (1843) 49 ER 994 (at 996).

The first step in the enquiry is to ascertain whether in South Africa the name Boswell, when attached to a circus, has gained a secondary meaning which denotes the applicant's circus. To dub this a secondary meaning may not be quite correct semantically, but the expression is a traditional one in the F lore of passing off and, as long as its usage in that context is understood, it serves as convenient shorthand. A name has a secondary meaning for the purposes of passing off once the association between it and the business or product which bears it is so close that, in the minds of the public, it is distinctive of that specific business or product, identifying such rather than any other. The feature's importance is G obvious. Since a name without a secondary meaning suggests no business or product in particular, the public is unlikely to be misled when one is borrowed.

In its originating affidavit the applicant accordingly alleged that Boswell was a name which had acquired a secondary meaning designating its circus. The opposing affidavit filed by the H respondents stated unequivocally that they did not deny this. They contradicted it in a subsequent affidavit, however, blaming their immediate response on inadvertence. The applicant criticised the explanation. The respondents were bound by the answer first given...