Policansky Bros Ltd v L & H Policansky

• Jurisdiction: South Africa
• Judge: Wessels CJ, Curlewis JA, Beyers JA and De Villiers JA
• Judgment Date: 29 October 1934
• Citation: 1935 AD 89
• Court: Appellate Division

Wessels, C.J.:

The plaintiff company alleges in its declaration that since 1899 Philip Policansky and Louis Policansky carried on the business of cigarette manufacturers as Policansky Bros until 1923 when they sold their business, good-will and trade name to Policansky Bros. Ltd., the present plaintiffs. Between 1899 and 1923 Policansky Bros advertised their cigarettes and in doing so used the name "Policansky Bros." They sold their cigarettes in containers on which was stated that the firm's name was Policansky Bros. After 1923 Policansky Bros. Ltd took the place of the name Policansky Bros. The word "Policansky," when used in relation to cigarettes, is always understood by purchasers in South Africa to mean cigarettes manufactured and sold by plaintiff. The declaration continues as follows:

"(7) Since August, 1932, defendants have advertised, manufactured and sold cigarettes in Cape Town and elsewhere in South Africa, and in such advertisements and on all containers of such cigarettes they have printed or caused to be printed the expression 'L. & H. Policansky.'

"(8) Defendants use the said expression 'L. & H. Policansky' in manner aforesaid in order to obtain for themselves the reputation acquired by plaintiff and to pass off their cigarettes as the cigarettes of plaintiff, with the intention that purchasers of cigarettes manufactured by them should believe that such cigarettes are cigarettes manufactured by plaintiff.

"(9) The use by, defendants of the expression 'L. & H. Policansky' in manner aforesaid is calculated to deceive purchasers of cigarettes into the belief that they are buying cigarettes manufactured by plaintiffs when, in fact, they are buying cigarettes manufactured by defendants, and many persons have been so deceived.

"(10) By reason of defendants' unlawful acts aforesaid, defendants have sold and passed off large quantities of cigarettes, not of plaintiff's manufacture, as and for cigarettes of plaintiff's manufacture, and plaintiff has suffered damages thereby in a sum not known to plaintiffs, and will continue to suffer damages in future unless defendants be interdicted from acting as aforesaid."

For these reason an interdict is claimed restraining defendants

Wessels, C.J.

from using the expression "L. & H. Policansky" when advertising and selling cigarettes not of plaintiffs manufacture.

The plea denies any passing off and pleads more specifically:

"(4) With regard to paragraph (8), defendants say that they use the expression 'L. & H. Policansky' in order to identify themselves as the manufacturers of the cigarettes they sell under the name of Cavalla Cigarettes and also in order to comply with sec. 27 of Act 36 of 1925."

The plaintiff called witnesses at the trial who deposed to the fact that Policansky Bros and Policansky Bros. Ltd were known in South Africa as manufacturers of brands of cigarettes called "Commando," "Saladin" and "Nassa," and that the word "Policansky" in reference to cigarettes was understood by the witnesses to refer to Policansky Bros and afterwards to Policansky Bros. Ltd as a reputable firm and company of cigarette manufacturers. The learned Judge-President in the court below came to the conclusion that it had not been proved that the defendants passed off their goods as that of plaintiffs and gave absolution from the instance. This is an appeal from that judgment.

The important facts in connection with this case are briefly as follows. In 1899, Philip and Louis Policansky, trading as Policansky Bros., started the manufacture of cigarettes and tobacco. They put various brands of cigarettes on the market under different fancy names, such as "Commando," "Saladin," "Nassa," "Mimosa," etc. The "Commando" became a very popular brand. On the containers appeared the legend "Manufactured by Policansky Bros.," and after sale to the company "Policansky Bros. Ltd." This was not found on their posters or advertisements during the Great War. They put up all over the Union huge posters featuring the word "Commando" and sometimes the picture of a Boer Commando. The other brands were also advertised, but not so extensively. Their sales of "Commando" far exceeded those of their other brands. In fact, some 80 to 90 per cent. of their sales were "Commando" Cigarettes. In 1923, The United Tobacco Companies (South) Ltd bought out Policansky Bros and succeeded to their good-will, trade marks, etc., etc., and thereafter floated a subsidiary company registered as Policansky Bros. Ltd which continued the business of Policansky Bros.

In 1932, Leon and Hyman Policansky, sons of Philip Policansky,

Wessels, C.J.

started manufacturing cigarettes under the style of L. & H. Policansky. They had previously been in the stocking trade. Philip Policansky, who had bound himself to The United Tobacco Company not to engage in the tobacco trade, knew of the venture of his sons, but there is no charge that he has broken his contract with the United Tobacco Company and he has not been made a party to this action. The case must be decided on the basis that Philip Policansky has nothing to do with the matter. We are only concerned with the two brothers, L and H. Policansky. About July, 1932, the firm of L. & H. Policansky put on the market a cigarette called "Cavalla." The containers of "Cavalla" bore the name of the firm L. & H. Policansky with their address sometimes outside and sometimes inside the boxes as is required by law. Circulars were sent by L. & H. Policansky to post boxes throughout the Union. In September, 1932, an advertisement was issued by L. & H. Policansky without their address. The get-up of the "Cavalla" cigarettes was entirely different from anything put out by Policansky Bros or Policansky Bros. Ltd. In November, 1933, Policansky Bros. Ltd put on the market a cigarette called "Policansky No 1," whereupon L. & H. Policansky advertised that they made only one brand of cigarette, viz., "Cavalla": they put their name and address on this advertisement. The "Cavalla" cigarette was on sale in Cape Town and all the towns and villages in the Union, and the plaintiffs were well aware of this, but they made no complaint for fifteen months, and raised no objection to the name of L. & H. Policansky appearing on the, advertisements or on the containers of their cigarettes. Summons was issued on 18th January, 1934. The action is therefore a passing-off action. It is an action in tort and the tort consists of a representation by the defendant that his business or his goods, or both, are those of the plaintiff. The Roman-Dutch law was well acquainted with the general principle that a person cannot, by imitating the name, marks or devices of another who had acquired a reputation for his goods, filch the former's trade (Ned. Advies Boek, vol. 1, adv. 68, p. 161). This class of tort had not reached, by the end of the eighteenth century, the importance that it has to-day. The great stream of passing-off cases in England and America only started after the remarkable commercial development of the last century and a quarter. The general principles, however, which the Civil law has laid down with regard

Wessels, C.J.

to injuria and dolus are applicable to this species of tort. As our Roman-Dutch authorities do not deal with the various aspects of passing-off actions that modern conditions have evoked, we in South Africa have followed the principles enunciated by the English and American Courts where such principles are not in conflict with either our common law or our statute law. The South African Reports contain numerous cases of passing-off actions. In most of the cases which occur it is the get-up of a manufacturer's goods by a rival which gives rise to passing-off actions. Here as a rule the element of dolus prevails, for the get-up is seldom, if ever, accidental: it is generally the result of calculated imitation. In order, however, to judge whether there has or has not been a passing-off, the get-up of the goods, even if there has not been dishonest imitation, is often an element in determining whether the defendant's acts are or are not calculated to deceive the ordinary reasonable man to believe that when buying the goods of A he is buying those of B. There are various ways in which the defendant can pass off the goods of the plaintiff. The mass of reported cases show how numerous the devices are by which a manufacturer can attempt to identify his goods and therefore how varied the circumstances are in passing-off cases. Each case must necessarily depend on its own circumstances but if we examine the decided cases we find that many of them fall into definite classes which have common features. This is important, because we have been asked to apply principles enunciated in one class of case, e.g., the Camel Hair Belting case, to the present case which falls in the class where two persons of the same name sell similar goods. It is unnecessary for the present decision to consider all the possible classes and sub-divisions into which the cases may be divided. There are, however, certain outstanding classes to which the cases cited to us refer. Sometimes the defendant may sell his goods under the same family name which the plaintiff had used for years to designate his goods. The plaintiff may have the name of Goddard, and sell his plate powder as Goddard's Plate Powder, thereby giving his name to a well known brand of plate powder known to the trade and the public as the plate powder of a particular Goddard (Goddard v Hyman & Goddard, 35 R.P.C. 21; J. Goddard & Sons v R. S. Goddard and J. Mentz & Co., 1924 TPD 290), or he may sell his goods for years by a mere descriptive name so that this descriptive name

Wessels, C.J.

has come to be recognised in the trade as the goods of a particular manufacturer. Thus goods were sold as "camel hair belting" and this belting became so popular that when one in the tradespoke of "camel hair...