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://doi.org/10.47348/SAIPL/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

ABSTRACT

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 get-up transforms into a market standard. The Supreme Court of Appeal’s

decision in Koni Multinational Brands (Pty) Ltd v Beiersdorf AG is an opportunity to

consider how these concepts operate in a market where many products share similar

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

While Koni offers much food for thought, this article seeks to explore its treatment 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: passing off; unlawful competition; delict; proof of reputation; common

trade features

 

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

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

protected by a trademark under statute, the protections and rights covered

by passing off are more nebulous, developing over time and underpinned

by goodwill and reputation.2 Thus, proving a successful passing off claim

is dependent upon the establishment of a multiplicity of factors in different

 

1 J Speres ‘Comparison creep and the conflation of trade mark infringement and passing 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