Deficiencies in the tests for distinctiveness and reputation: A discussion of passing off in light of Koni Multinational Brands (Pty) Ltd v Beiersdorf Ag

• Citation: (2022) IPLJ 1
• DOI: https://doi.org/10.47348/SAIPL/v10/a1
• Published date: 23 February 2023
• Pages: 1-13
• Author: Abdool Karim, S.
• Date: 23 February 2023

https://do i.org/10.473 48/S AIPL/ v10/a1

DEFICIENCIES IN THE TESTS

FOR DISTINCTIVENESS AND

REPUTATION: A DISCUSSION OF

PASSING OFF IN LIGHT OF KONI

MULTINATIONAL BRANDS (PTY) LTD

v BEIERSDORF AG

  

PhD candidate, Unive rsity of KwaZulu-Natal; Pupil Advocate, Johann esburg

Society of Advoc ates

ABST RACT

The delict of passin g off has evolved and expanded incre mentally over time and remai ns

a powerful mea ns of protecting uniq ue aspects of one’s products. Whi le passing off seeks

to prevent unlaw ful competition, cour ts are tasked with balan cing which interests ought

to be protected b y passing off claims against th e need to allow market forces and not to

unduly const rain competitio n. The test for passing of f has consisted of proof of reput ation,

misreprese ntation and damage. A fu ndamental component of est ablishing reputation ha s

been the need to de monstrate its dis tinctiveness. Notw ithstanding th is, the law on passing

off has also developed t o exclude ‘legitimate copying’ – especia lly where a particularly

successful ge t-up transfor ms into a market st andard. The Su preme Court of Ap peal’s

decision in Koni Mult inational Bran ds (Pty) Ltd v Beiers dorf AG is an oppor tunity t o

consider how these c oncepts operat e in a market where ma ny products sha re similar

                  

While Koni offers much food for though t, this art icle seeks to explore its t reatment of

distinct iveness in the context of proving r eputation and to offer a pat hway to develop this

test in a man ner that better promot es consumer interes ts and preserves fai r competition.

KEYWORDS: passi ng off; unlawfu l competition; del ict; proof of reputat ion; common

trade features

  

The delict of passing off is the somewhat murkie r, less clear-cut cousin to

claims based on trad emark infringement.1 Unlike the clearly delineated r ights

protected by a tradem ark under statut e, the protections and right s covered

by passing off are more nebulous, developing over time and u nderpinned

by goodwill and reputation.2 T hus, proving a successfu l passing off claim

is dependent upon the establi shment of a multiplicity of factors in dif ferent

  

1 J Speres ‘Compar ison creep and t he confla tion of trade ma rk infri ngement and passi ng off’

(2015) In tellectual Proper ty Law Journal 8 7.

2 W A lberts ‘The scope of pa ssing off’ 2008 De Reb us 60 at 60.

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(2022) IPLJ 1

© Juta and Company (Pty) Ltd