THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Reportable
Case no:  204/2016

In the matter between:
HERBAL ZONE (PTY) LIMITED                             FIRST APPELLANT
HAKIM HERZALLAH                                           SECOND APPELLANT
MOLATENG TRADING &
PROJECTS CC                                                            THIRD APPELLANT
HS FOOD INDUSTRIES (PTY) LIMITED          FOURTH APPELLANT
and
INFITECH TECHNOLOGIES (PTY)
LIMITED                                                                    FIRST RESPONDENT
HERBS OILS & CO (PTY) LIMITED               SECOND RESPONDENT
NKATE HUTCHISON MOSIANE

THIRD RESPONDENT
NOZIPHO SHEILA MOSIANE                         FOURTH RESPONDENT
DAVID JEKECHA                                                    FIFTH RESPONDENT

Neutral citation: Herbal Zone v Infitech Technologies (204/2016) [2017]
ZASCA 8 (10 March 2017)
Coram:
Cachalia, Shongwe, Wallis and Mbha JJA and Schippers AJA
Heard:
22 February 2017
Delivered:  10 March 2017
Summary: Passing off – requirement of reputation – failure to prove source
of goods and that the reputation vested in the applicant – claim for interdict
dismissed.
Defamation – trading corporation – interdict against future publication of
defamatory matter – such not lightly granted – dispute of fact on the papers
whether statements were justified – such a genuine dispute – applicant failing
to show a clear right – interdict refused.

ORDER

On appeal from: Western Cape Division, Cape Town (Bozalek J sitting
as court of first instance):
The appeal succeeds in part and the order of the high court is
amended to read as follows:
„(a)
The application is dismissed with costs.
(b)
The counter application is dismissed with costs.‟
Each party is to pay their own costs of the appeal.

JUDGMENT

Wallis JA (Cachalia, Shongwe and Mbha JJA and Schippers AJA
concurring)
[1] The dried and crushed extract of Tongkat Ali,1 a root found in
Malaysia and other countries in the Far East, is believed to have
aphrodisiacal properties that enhance male sexual performance. The
second appellant, Mr Hakim Herzallah, recognised that this belief could
be exploited for its commercial potential and became involved with the
production by a Malaysian company, Madar Al Jawda Sdn Bhd (MAJ),
of capsules containing this extract. He called the product in this capsule
form „Phyto Andro‟.2 Since 2006, after he moved to South Africa, it has
been marketed in this country under that mark as Phyto Andro for Him.
Mr Herzallah is the sole shareholder of the first appellant, Herbal Zone

1 Sometimes spelled „Tongat Ali‟ in the papers.
2 There appear to be several products using the Phyto Andro mark, but the one with which this case is
concerned is the male potency version referred to as Phyto Andro Capsules for Him♂.

(Pty) Ltd, which imports Phyto Andro into South Africa. Herbal Zone
(Pty) Ltd was formerly a close corporation, Herbal Zone CC. In 2015 it
was converted into a private company. As nothing turns on the
conversion I will refer to them both as Herbal Zone. He also said that he
was the majority shareholder in a Malaysian company called Herbal Zone
International Sdn Bhd (Herbal Zone International) that he refers to as the
manufacturer of Phyto Andro. He annexed a letter to his affidavit in
support of this statement and an extract from the Herbal Zone
International‟s register of directors. These showed that he was appointed
as a director in 2008 and recorded that in 2009 he was a 51% shareholder
in Herbal Zone International. There was no documentary evidence that
this remained the position when these proceedings were commenced.

[2] From 2009 until 2014 the first respondent, Infitech Technologies
(Pty) Ltd (Infitech), was the sole distributor in South Africa of Phyto
Andro in terms of a distribution agreement concluded with Herbal Zone.
The present dispute arose from events after the termination of that sole
distributorship. The second respondent, Herbs Oils and Co (Pty) Ltd
(Herbs Oils), had been formed in advance of the termination by Mr and
Mrs Moisane, the shareholders of Infitech and the third and fourth
respondents. Herbs Oils has since 2014 distributed a product in South
Africa, also under the name Phyto Andro for Him, in competition with
the product imported by Herbal Zone. This competing product is
imported by Infitech, which says, somewhat cryptically, that it has
procured it from an unidentified manufacturing source in Malaysia.
Although neither Herbal Zone nor Herbs Oils has secured registration of
„Phyto Andro‟ as a trademark, the packaging that each uses for its own
product includes after the words „Phyto Andro‟ the standard symbol ®
used to indicate such registration.

[3] In addressing the competition from Herbs Oils product, Herbal
Zone took out advertisements in a popular newspaper, the Daily Sun, at
the foot of which appeared, in fairly small print, the following statement:
„HERBAL ZONE CC WILL NOT BE RESPONSIBLE FOR THE CONTENT IN
ANY OTHER PACKAGING!
LEGAL ACTION WILL BE TAKEN AGAINST SUPPLIERS
SELLING/PURCHASING „COUNTERFEIT PHYTO ANDRO CAPSULES‟
Herbal Zone is the Manufacturer and supplier of Phyto Andro Capsules‟.

[4] In addition, Herbal Zone distributed a circular to the pharmacies
and outlets through which it was distributing Phyto Andro containing the
following warning:
„URGENT NOTICE!!!
To All Clients,
Herbal Zone CC, manufacturer of Phyto Andro Capsules would hereby like to inform
ALL CLIENTS that Infitech Technologies is NO longer our Sole Distributor.
Herbal Zone CC will not be responsible for the content in any other PACKAGING!
and hereby warns any Company purchasing Phyto Andro capsules for Him
ILLEGALLY from Herbs Oils and Co (Infitech Technologies) as this is a
counterfeit product.
LEGAL ACTION WILL BE TAKEN AGAINST SUPPLIERS
‘SELLING/PURCHASING’ COUNTERFEIT PHYTO ANDRO CAPSULES for
HIM.
*****The Original Phyto Andro Capsules for Him has Herbal Zone printed on the
Capsules*****
Please contact Herbal Zone CC directly for Phyto Andro Capsules orders and we will
refer you to ONE of our distributors in your area.‟

[5] The circular was on a letterhead saying it emanated from Herbal
Zone International CC. On the left hand side of the document was a spiral
device logo and below that the word „Herbal‟. Below that in turn

appeared the slogan „For Better Health‟. Under the name Herbal Zone
International CC Herbal Zone‟s contact details, including its email
address and website address, are printed. At the foot of the document
were references to another entity called Herbal Zone International, based
in Twickenham in the United Kingdom, and to Herbal Zone International.

[6] In addition to the advertisements and the circular, Herbal Zone
employed a private investigator, a Mr Ali, to investigate the source and
origin of the competing product. Mr Ali appears to have approached his
task with a considerable measure of vigour and enthusiasm resulting in
the Commercial Branch of the South African Police Services, on 21 May
2015, obtaining a search and seizure warrant under the provisions of the
Counterfeit Goods Act 37 of 1997 (the Counterfeit Goods Act) and
executing it at the premises of Infitech and Herbs Oils. At the end of the
search Mr Mosiane and the fifth respondent, Mr Jekecha, the financial
manager of the business, were arrested and held overnight at the
Germiston Police Station. Certain stock was removed and detained by the
police for a period of about two weeks. It was released when it became
apparent that it could not be confiscated in terms of the Counterfeit
Goods Act.

[7] These actions by the police, and a further incident in July 2015
involving an alleged threat by the appellants‟ representatives to take legal
action against a Ms Tshite of Protea Family Pharmacy for selling the
Phyto Andro products, were the last straw as far as Infitech, Herbs Oils
and Mr and Mrs Mosiane were concerned. On 31 July 2015 they
launched proceedings in the Western Cape Division of the High Court
seeking a number of interdicts against Herbal Zone, Mr Herzallah and
two other entities, which are now undertaking the distribution in South

Africa of the Herbal Zone Phyto Andro. The proceedings were opposed
and the respondents counter-applied for an interdict restraining the
applicants from marketing, selling, advertising, promoting or presenting
consumable herbal capsules using trademarks, labels or names including
the words Phyto Andro or packaging confusingly similar to that being
used by Herbal Zone and its distributors. They contended that Infitech
and its associates were passing off their product as that of Herbal Zone.

[8] The application came before Bozalek J who granted certain of the
interdicts sought by Infitech and its co-applicants on the basis that the
statements made about Infitech and Herbs Oils in the advertisements and
circular were defamatory. He dismissed the counter-application on the
basis that Herbal Zone failed to discharge the onus of proving that the
reputation and goodwill attaching to Phyto Andro, as marketed in South
Africa, vested in Herbal Zone, as opposed to Herbal Zone International,
which was not a party to the application. The appeal is with his leave. In
arguing it the parties treated the passing off claim as the principal issue
and the defamation claim as secondary. Accordingly I will address them
in that order in the judgment, albeit that they arose in the converse order
in the course of the litigation in the high court.

Passing off
[9] There is no dispute over the relevant legal principles. Passing off
occurs when A represents, whether or not deliberately or intentionally,
that its business, goods or services are those of B, or are associated
therewith. It is established when there is a reasonable likelihood that
members of the public in the marketplace looking for that type of
business, goods or services may be confused into believing that the
business, goods or services of A are those of B or are associated with

those of B.3 The misrepresentation on which it depends involves
deception of the public in regard to trade source or business connection
and enables the offender to trade upon and benefit from the reputation of
its competitor. Misrepresentations of this kind can be committed only in
relation to a business that has established a reputation for itself or the
goods and services it supplies in the market and thereby infringe upon the
reputational element of the goodwill of that business. Accordingly proof
of passing off requires proof of reputation, misrepresentation and
damage.4 The latter two tend to go hand in hand, in that, if there is a
likelihood of confusion or deception, there is usually a likelihood of
damage flowing from that.5

[10] If Herbal Zone had the requisite reputation in South Africa then the
other requirements of passing off were satisfied. The packaging of Herbs
Oils‟ product uses the same name, Phyto Andro, to describe the product
and the packaging is very similar. The name Phyto Andro is not
descriptive of the product, but is an invented mark attached to it in order
to distinguish it from other products of a similar type. By calling their
product Phyto Andro there is plainly a representation to the public that
when they buy Herbs Oils‟ product it is the product that enjoys a
reputation in South Africa under that name. And, if customers buy Herbs
Oils‟ product in the belief that it is the product they have previously
bought or known under the Herbal Zone mark, there will be damage. The
crucial question was therefore whether Herbal Zone enjoyed the
reputation attaching to Phyto Andro in South Africa.

3 Capital Estate and General Agencies (Pty) Ltd & others v Holiday Inns Inc. & others 1977 (2) SA
916 (A) at 929B-D.
4 Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd & another 1998 (3) SA 938 (SCA)
paras 13, 15 and 16.
5 The summary is taken from the judgment in Pioneer Foods (Pty) Ltd v Bothaville Milling (Pty) Ltd
[2014] ZASCA 6; [2014] 2 All SA 282 (SCA) para 7.

[11] Given the centrality of this issue to the outcome of the claim for an
interdict based on passing off, one would have expected the parties to
address it fully and ask the court to resolve it. But they did not do so,
preferring to keep their powder dry for a future battle over the registration
of Phyto Andro as a trademark. Herbs Oils, while claiming that the
reputation had attached to its predecessor Infitech and had been
transferred to it, said that it was unnecessary to determine who the true
proprietor of the Phyto Andro mark was. Herbal Zone responded by
saying that it had set out its case for proprietorship and it was undeniable.
It added that this would have a bearing on future proceedings before the
Registrar of Trademarks, but said that in the meantime it was entitled to
enforce its common law rights. So we were faced with the curious
situation that, in a case where reputation is central, the one party has
refrained from setting out in full its case on the point and both parties
appear to adopt the stance that these issues will be thrashed out more
fully when the Registrar of Trademarks deals with various pending
applications for registration of a number of marks. In the circumstances
this judgment cannot be taken to be a final determination of that issue,
binding on a court in any subsequent proceedings. All that it deals with is
whether the evidence tendered in this case established that the reputation
attaching to the Phyto Andro mark vested in Herbal Zone.

[12]   Three possibilities were mooted in argument. They were that the
reputation attaching to Phyto Andro in South Africa had been established
by Infitech and now vested in Herbs Oils; that it had been established by
and vested in Herbal Zone; and that it had been established through the
efforts of Herbal Zone and its sub-distributors on behalf of Herbal Zone
International and vested in the latter. In considering these three

possibilities, and indeed the case as a whole, it must be borne in mind that
neither party asked for the matter to be referred for the hearing of oral
evidence. In the circumstances the evidence had to be approached in the
light of the Plascon-Evans rule so that the onus of proof resting on any
party on an issue would only be discharged on the requisite balance of
probabilities if the undisputed evidence, together with that of the other
party, sufficed to discharge that onus.6

[13] Herbs Oils‟ claim that the reputation in the Phyto Andro mark
vested in it can be disposed of fairly simply. Infitech‟s role in regard to
the product sold under that mark was that of a distributor. It acquired that
role in terms of a distribution agreement that said that Herbal Zone was
the owner of all rights, title, trademarks and logos in respect of the
product. It was entitled to advertise the product and hold itself out as the
sole distributor, but in doing so it was obliged to use the trade mark Phyto
Andro, which, as between it and Herbal Zone, was the property of Herbal
Zone. Furthermore it undertook to protect Herbal Zone‟s interests in
South Africa and not to „pledge, cede, assign, make over or in any way
encumber‟ its intellectual property rights. Whether the rights vested in
Herbal Zone is neither here nor there. Once Infitech signed an agreement
on those terms its conduct under the distribution agreement falls to be
measured against a contract under which it disavowed any ability to
acquire an interest in the trademark. In the face of that disavowal it is
difficult to see on what possible basis Infitech could nonetheless acquire
the very rights it agreed did not belong to it, much less to do so by its

6 Lendalease Finance (Pty) Ltd v Corporacion De Mercadeo Agricola and others 1976 (4) SA 464 (A)
at 489 B-C; The Shipping Corporation of India v Evdomon Corporation and another  1994 (1) SA 550
(A).

conduct in performing its obligations in terms of the distribution
agreement.

[14]  The evidence relied on in support of Infitech‟s claim to be the
proprietor of the Phyto Andro mark was the expenditure of „considerable
time, money and effort‟ in establishing a market for Phyto Andro
products in South Africa.  It said that these efforts commenced in 2008 or
2009 prior to the conclusion of the distribution agreement, although Mr
Herzallah said that the relationship only commenced early in 2010.
Whichever date is correct there was already a market for the product in
South Africa at that stage, as it had been on sale in this country through
another distributor from 2006. Reliance was placed on some radio
advertisements, but those did nothing to convey that the product
emanated from Infitech and that proprietorship of the mark vested in it.
After the distribution agreement was concluded the product‟s external
packaging initially said that it was manufactured by Herbal Zone
International „for‟ Infitech, but this was later changed, at Infitech‟s
instance, to say that the product was „exclusively distributed‟ by Infitech.
None of this, in my view, came anywhere near establishing that
proprietorship in the mark vested in Infitech and hence in Herbs Oils.

[15] Turning to Herbal Zone‟s claim that proprietorship in the mark and
the reputation attaching to it vested in it, the difficulty it faced lay in the
confusion on the papers between it and Herbal Zone International and
their respective roles in the manufacture of Phyto Andro and its
marketing in South Africa. It was as a result of this confusion that
Bozalek J held that Herbal Zone failed to show that the reputation in the
mark vested in it and not Herbal Zone International and non-suited it on
that ground. In my view he was correct to do so.

[16] Mr Herzallah said that he became involved in Malaysia in the
production of capsules containing an extract of dried Tongkat Ali and had
hit upon the name Phyto Andro under which to market the product. He
arranged for it to be manufactured by MAJ and sold Phyto Andro in
various markets in the Far East and other countries. After he moved to
South Africa in 2005, he set up an entity called Etumax Trading CC
(Etumax) to market Phyto Andro capsules in this country. In 2007 he
decided to create Herbal Zone to take over the business of Etumax and at
the same time Herbal Zone International was established in Malaysia to
„[take] over the manufacture and export‟ of Phyto Andro capsules. Once
Herbal Zone was created it became the sole importer of Phyto Andro
capsules into South Africa and its sole distributor in this country. In
support of that allegation he referred to an undated letter, apparently
prepared in June 2015, signed by the Chief Operating Officer of Herbal
Zone International saying that Herbal Zone International was the
manufacturer of Phyto Andro Capsules for Him worldwide and that
Herbal Zone was the only authorised importer into South Africa.

[17] When the disputes in this case arose, that letter was attached to a
letter from Herbal Zone‟s attorney addressed to the attorney for Infitech
in which he described the situation in the following terms:
„… the fact remains that Herbal Zone itself, whether the proprietary limited company
operation in South Africa or the international company operating out of Malaysia, is
the original  importer, distributor, and manufacturer of phyto andro products.‟
Elsewhere the attorney said that Herbal Zone was importing Phyto Andro
under licence from its sole distributor, Herbal Zone International, but,
contradictorily, then said that Herbal Zone was the manufacturer of Phyto
Andro products and capsules worldwide operating under the name and

style of Herbal Zone International. Throughout the letter there was a
failure to distinguish between Herbal Zone, the South African entity, and
Herbal Zone International, the Malaysian entity. This failure to
distinguish between the two corporate entities and uncertainty about the
true role of Herbal Zone characterised much of the evidence by Mr
Herzallah. Some examples pertinently illustrate this failing.

[18] Mr Herzallah‟s explanation of the role of Etumax could not be
reconciled with the printouts from the accounting records of Etumax that
he annexed to his answering affidavit, which also served as the founding
affidavit in Herbal Zone‟s counter-application. He described Etumax as a
local distributor of Phyto Andro. However, the records tell another story.
They are headed with MAJ‟s name above the words „South African
Office Expenses‟. The items reflected include salary for a Mr Shadi and
rental of premises. They also reflect regular payments, apparently by
MAJ in subvention of these costs. The picture is of a branch office acting
on behalf of MAJ. If Mr Shadi is the same person who became a director
of Herbal Zone International before Mr Harzallah and who is now the
chief operating officer of that company, the accounts show that part of his
salary in dollars was being allocated to Etumax. Most importantly of all it
shows that the mark Phyto Andro was being used on the product at that
time. That can only have been because it was being used at source in
Malaysia.

[19] The pamphlet that gave rise to the defamation claim had the name
Herbal Zone International CC at the head and referred to Herbal Zone
International and an English entity at the foot. There are a number of
letters in the papers on the same letterhead as the pamphlet and a few that
refer additionally to „Herbal Zone International‟ in Dubai and to Herbal

Zone International Ltd a New Zealand company. An application
addressed to the Medicines Control Council described the applicant as
Herbal Zone International CC. It was said that this was an oversight and
that these references were intended to be references to Herbal Zone, but
the use of that letterhead and description extended from at least 2012
through to the commencement of these proceedings. Over such a
protracted period it could not have been inadvertent and no other
explanation was proffered.

[20] The confusion manifests itself elsewhere. In internal emails Mr
Herzallah inserted his name above the words „Herbal Zone International,
Cape Town – South Africa‟. The website of the business referred simply
to „Herbal Zone‟ without identifying either the Malaysian or the South
African entity. The website addresses were equally unspecific referring
either to „herbalzone.com‟ or „herbalzone.net‟ or „phytoandro.com‟. This
was all consistent with the business of Herbal Zone being conducted in a
manner that blurred the distinction between the local and the Malaysian
entity. Infitech contended that the confusion was deliberate.

[21] Mr Herzallah said Herbal Zone International was formed to take
over the manufacture of Phyto Andro capsules. However, it appeared that
Herbal Zone International did not itself have a manufacturing facility but
contracted with others to manufacture on its behalf. The registration
certificate issued by the Drug Control Authority (Ministry of Health,
Malaysia) for the manufacture of Phyto Andro for Him capsules was
issued to Herbal Zone International but the actual manufacture was being

undertaken by an entity called Polens (M) Sdn Bhd.7 The certificate
authorised the holder to endorse the packaging in which the product was
sold with a stamp in a roundel containing the letters GMP, which stands
for „good manufacturing practice‟ and is a requirement for the
manufacture of this type of product in Malaysia.

[22] The Islamic Food Research Centre, Hong Kong, Malaysia, issued a
similar certificate, stating that the product was Halaal and complied with
Shariah law, so that it was lawful for consumption by Muslims. This too
was issued to Herbal Zone International, but in respect of the
manufacturing facility of Polens (M) Sdn Bhd. It authorised the holder to
endorse the packaging of the product with a roundel reflecting that the
Islamic Food Research Centre had certified it as Halaal.

[23]   The packaging of Phyto Andro for Him identified Herbal Zone
International as the manufacturer of the product. Both the GMP and
Halaal certification obtained by Herbal Zone International appeared on
the exterior of the box and on each foil package containing a capsule.
There was no indication on the external package that it had any direct
South African connection, much less a connection with Herbal Zone. The
product information on the side of the box said that it was a product used
„internationally‟. The only connection with Herbal Zone was that its
name, fax number, email address and the words „Cape Town South
Africa‟ were printed on the foil sachet in which the capsule was sold. But
that was packed in a box that identified Herbal Zone International as the
manufacturer. Inasmuch as the purpose of a trademark is to serve as a

7 That certificate appears to have expired on 27 August 2014 but, in response to a rule 35 (12) notice, a
further certificate was produced for the product to be manufactured by Greens United Sdn Bhd valid
from 1 January 2015. That certificate in turn expired on 31 December 2015.

badge of origin8 virtually all the information available to a person
purchasing the product, whether for resale or use, pointed to the origin
being Herbal Zone International.

[24] I appreciate that a trademark‟s function as a badge of origin does
not require that the mark should identify the corporate entity that is the
proprietor of the mark or, in the case of an unregistered mark, the entity
in which the reputation attaching to that mark is vested. Nonetheless,
when the public material associated with the product and the mark points
to a particular entity as the manufacturer of the product, the ordinary
inference by consumers will be that this is in fact the origin or source of
the product. Where large corporate groups consolidate all their
intellectual property rights in a single subsidiary that is done by way of
formal agreements such as assignments of rights – a situation that is not
present here.

[25]  In an endeavour to circumvent these difficulties counsel drew our
attention to a passage in Mr Herzallah‟s affidavit where he said:
„From as early as this all Phyto Andro capsules were sold in packaging which bore the
name “Phyto Andro” affixed to it boldly the logo of Herbal Zone to identify the
association between Phyto Andro and Herbal Zone.‟
In the light of an earlier statement in the affidavit that when referring to
Herbal Zone he was referring to the South African close corporation, we
were asked to infer from this that Herbal Zone had devised and caused to
be affixed to the packaging the spiral shaped device logo appearing there
above the words „Herbal Zone‟ and that this created the association
between Herbal Zone and Phyto Andro.

8 Verimark (Pty) Ltd v BMW AG BMW AG v Verimark (Pty) Ltd 2007 (6) SA 263 (SCA) para 5.

[26] I am unable to draw that conclusion. An immediate difficulty is
that documents emanating from Herbal Zone International also bear the
spiral logo with the words „Herbal Zone‟ beneath it. If this were a logo
devised in South Africa for South African packaging, why would it
appear on the letterhead of the Malaysian company?  What is more, the
home page of Herbal Zone International‟s website shows the spiral logo
above the words „Herbal Zone‟ and says that:
„Phyto Andro is Malaysia‟s leading natural health company. Established at 2003 and
manufactured or Founder by Herbal Zone International Sdn Bhd …‟9
The website reveals that the spiral logo above the words „Herbal Zone‟ is
affixed to a variety of products not only Phyto Andro capsules. A visitor
to the phytoandro.com website finds the same logo. Disturbingly it
contains a circular letter dated 1 February 2016 addressed to its customers
announcing that Herbal Zone International CC, giving the Cape Town
address of Herbal Zone, „is no longer our distributor in South Africa‟ and
claims that Herbal Zone International Sdn Bhd is „a Malaysian company
and brand established in 2004‟. One encounters this letter because there is
both a prominent reference in the heading of the home page to a South
African circular and a depiction of the South Africa flag on which in
prominent letters appears „WARNING!!‟. The signatory to that letter is
Mr Shadi, the same person who signed the letter of June 2015 referred to
in para 16. He was already a director of Herbal Zone International in
August 2008 when Mr Herzallah became a director.

[27] All in all, in the absence of an express claim by Mr Herzallah to
have designed the spiral logo and its depiction together with the words

9 A more recent website amends this language to make it clearer that Herbal Zone International was the
founder of Phyto Andro.

„Herbal Zone‟, and some explanation of how this came about, it is
impossible to accept that it is a device that attaches to Herbal Zone as
opposed to Herbal Zone International. When the lack of clarity in regard
to the provenance of the spiral logo is taken together with all the other
curious features to be found in the documents and the affidavits and the
regular description of Herbal Zone as an importer or distributor, I am
unable to conclude that Herbal Zone has discharged the onus of showing
that the reputation in the unregistered mark „Phyto Andro‟ vests in it in
this country.

[28] There are circumstances in which an importer and distributor of
goods can acquire a reputation in them. Webster and Page10 deals with
this possibility in the following passage:
„An agent or distributor who merely sells, or imports and sells, goods manufactured
by another without adding anything to the mark or get-up under which they are
produced, does not thereby acquire any goodwill in the name or get-up; for those
symbols thereby acquire a reputation as indicating that the goods emanate from the
particular manufacturing provenance and not that they were imported and/or
distributed by that particular agent.
On the other hand, it is possible for a distributor so to market the goods which he
distributes that the name or get-up under which they are sold acquires a reputation as
indicating that they emanate from him: in which case the goodwill adhering to that
name or get-up will vest in him … The enquiry as to which trade source the symbol
has come to indicate in the territory in question is in every case one of fact.‟
(Footnotes omitted.)

[29] In support of its contention that it had acquired a reputation in
South Africa for Phyto Andro Herbal Zone relied on the second part of

10 GC Webster and NS Page South African Law of Trade Marks 3ed (Service Issue 19, 2015) para
15.18.1.

this passage and its application in this court in Etraction.11 Herbal Zone‟s
failure to establish on a balance of probabilities that it had added anything
to the mark or get-up under which the capsules were produced to identify
itself as the source of the goods and disturb the indications that the
manufacturing provenance lay with Herbal Zone International meant that
this submission could not succeed. Its evidence did not establish that the
reputation attaching to the product was associated with it and not Herbal
Zone International.

[30] For those reasons the appeal against the dismissal of Herbal Zone‟s
claim based on passing off must fail.

Defamation
[31] The order granted by Bozalek J in respect of the alleged
defamation read as follows:
„1 That the First to Fourth Respondents are interdicted and restrained from:
1.1
Stating to the Applicants‟ customers and/or the public in general (whether it be
orally, in writing, in public publications or in any other way) that the
Applicants‟ PHYTO ANDRO Capsules For Him product are counterfeit;
1.2
Stating to the Applicants‟ customers and/or the public in general that the
Applicants‟ PHYTO ANDRO Capsules For Him product are harmful to ones‟
health, or that patients have become sick as a result of using the Applicants‟
PHYTO ANDRO Capsules For Him product, or statements to similar effect;
1.3
Stating to the Applicants‟ customers and/or the public in general that it is
illegal or unlawful to sell and/or distribute the Applicants‟ PHYTO ANDRO
Capsules For Him product and threatening legal action against such customers
and/or the public in general for selling and/or distributing the Applicants‟ said
product.‟

11 Etraction (Pty) Ltd v Tyrecor (Pty) Ltd [2015] ZASCA 78; 2015 BIP 2453 (SCA); 2015 JDR 0994
(SCA) paras 17-19.

The inclusion of para 1.2 in this order was plainly erroneous. It was based
on a disputed affidavit by Ms Tshite about the alleged incident in July
2015 referred to in para 7, and counsel rightly made no attempt to defend
it. The argument was therefore restricted to paras 1.1 and 1.3. These were
clearly framed with the above-quoted advertisements in the Daily Sun
and the circular to clients in mind.

[32] The
argument surrounding defamation was that in the
advertisements and the circular Infitech and Herbs Oils had been accused
of selling counterfeit products and that this conduct on their part was
illegal. That, with its overtones of possible criminality, was said to be
defamatory of them and therefore to warrant the grant of an interdict to
prevent a repetition of such conduct. Ms Joubert, who appeared for the
respondents, submitted that the onus then passed to Herbal Zone to
establish a defence to such defamatory statements and that it had failed to
do so. As a demand that such statements would not be repeated in the
future had been answered with an emphatic negative, she submitted that
the necessary elements for the grant of an interdict had been satisfied.

[33] Mr Marriott for Herbal Zone, submitted that the statements were
true and that it was in the public interest that they be published. He
submitted that there was no doubt as a matter of fact that Infitech and
Herbs Oils were not marketing the product that had been imported into
and sold in South Africa since 2006, as that product was the Herbal Zone
Phyto Andro. In view of the respondents‟ unwillingness to disclose the
source in Malaysia from which they were obtaining their rival product it
could not be the same as that being imported by Herbal Zone.
Accordingly the product being marketed by Herbal Oils under the name
Phyto Andro was not the original but at best a generic imitation. It was

entirely inappropriate to describe it as Phyto Andro because that was the
name attaching to the Herbal Zone product. In its ordinary sense this
meant that the Herbal Oils product was counterfeit. It was in the public
interest that this fact be disseminated to the retail outlets marketing Phyto
Andro to the public and to the members of the public who made use of
the product and believed in its beneficial properties.

[34] While accepting that in common parlance marketing a generic
product under the name by which the original was known would justify
labelling the generic as counterfeit, Ms Joubert pointed out that Herbs
Oils claimed that the reputation in Phyto Andro vested in it and
contended that this issue could not be determined on the papers as they
stood before us. If the reputation in the unregistered mark Phyto Andro
vested originally in Infitech as a result of its marketing efforts under the
sole distributorship agreement and had been transferred by Infitech to
Herbs Oils, then it was the latter‟s product that was the genuine product
albeit that it came from a source other than Herbal Zone‟s Phyto Andro.
This was so, she submitted, even if the composition of the product was
different from that of Herbal Zone‟s product. She pointed out that if the
reputation in a product vested in a party the fact that it altered the
composition of the product did not mean that the altered product ceased
to be genuine or could properly be labelled as counterfeit.

[35] Flowing from this, Ms Joubert submitted that, in order to avoid an
interdict, the onus rested on Herbal Zone, as it would in a conventional
action for defamation, to establish a defence of justification and this
required it to prove that the reputation in Phyto Andro vested in it. Only
then could it claim that Herbs Oils‟ product was counterfeit. For the
reasons advanced in relation to the passing off action, it had failed to

prove this on a balance of probabilities so that the interdict should be
sustained.

[36] The short answer to these submissions is that they were
inconsistent with established authority on the proper approach to an
application for an interdict to prevent the publication of defamatory
matter. Such an interdict is directed at preventing the party interdicted
from making statements in the future. If granted it impinges upon that
party‟s constitutionally protected right to freedom of speech. For that
reason such an interdict is only infrequently granted, the party claiming
that they will be injured by such speech ordinarily being left to their
remedy of a claim for damages in due course. Nugent JA said in this
court:12
„Where it is alleged, for example, that a publication is defamatory, but it has yet to be
established that the defamation is unlawful, an award of damages is usually capable of
vindicating the right to reputation if it is later found to have been infringed, and an
anticipatory ban on publication will seldom be necessary for that purpose.‟
A corporate entity such as Herbs Oils is entitled to claim damages based
on defamation. This includes both pecuniary damages for actual financial
loss and general damages for harm to its commercial reputation.13 No
attempt was made to show that Herbs Oils had suffered loss as a result of
the publication of the advertisements and circular, much less that it would
suffer irreparable harm in the future by further publications of such
material. Nor did it allege that damages would not be an adequate remedy
for any such publication. Indeed the third respondent‟s founding affidavit
entirely lacked allegations in regard to those two elements of a claim for
an interdict.

12 Midi Television t/a E-TV v Director of Public Prosecutions (Western Cape) 2007 (5) SA 540 (SCA)
para 20.
13 Caxton Ltd and Others v Reeva Forman (Pty) Ltd and Another 1990 (3) SA 547 (A).

[37] The contentions in regard to the onus of proof were also contrary to
established authority, to which for some reason we were not referred.
This court dealt with the proper approach of a court to an application for
an interdict to restrain the publication of defamatory matter in Hix
Networking.14 There it approved, with some clarification, the following
passage from the judgment of Greenberg J in Heilbron v Blignault:15
„If an injury which would give rise to a claim in law is apprehended, then I think it is
clear law that the person against whom the injury is about to be committed is not
compelled to wait for the damage and sue afterwards for compensation, but can move
the Court to prevent any damage being done to him. As he approaches the Court on
motion, his facts must be clear, and if there is a dispute as to whether what is about to
be done is actionable, it cannot be decided on motion. The result is that if the injury
which is sought to be restrained is said to be a defamation, then he is not entitled to
the intervention of the Court by way of interdict, unless it is clear that the defendant
has no defence. Thus if the defendant sets up that he can prove truth and public
benefit, the Court is not entitled to disregard his statement on oath to that effect,
because, if his statement were true, it would be a defence, and the basis of the claim
for an interdict is that an actionable wrong, ie conduct for which there is no defence in
law, is about to be committed.‟

[38] The clarification was to point out that Greenberg J did not hold that
the mere ipse dixit of a respondent would suffice to prevent a court from
granting an interdict. What is required is that a sustainable foundation be
laid by way of evidence that a defence such as truth and public interest or
fair comment is available to be pursued by the respondent. It is not
sufficient simply to state that at a trial the respondent will prove that the
statements were true and made in the public interest, or some other

14 Hix Networking Technologies v System Publishers (Pty) Ltd & another 1997 (1) SA 391 (A).
15 Heilbron v Blignault 1931 WLD 167 at 169.

defence to a claim for defamation, without providing a factual basis
therefor.16

[39] In this case Herbal Zone produced evidence that it had over a
lengthy period, first introduced and then caused to be distributed in South
Africa, the product Phyto Andro for Him. This entitled it to describe its
own product as the genuine or original product and to decry the product
of others who were marketing competing products of a different
manufacture and source as „counterfeit‟, that is, not the genuine article.
Even if the reputation in Phyto Andro did not vest in it, the fact that it
was importing it into this country and distributing it here entitled it to
level the charge of „counterfeit‟ against Herbs Oils products. There is no
need for us to determine whether that defence will succeed at trial. But it
is a colourable defence and a factual basis has been laid for it that cannot
be rejected out of hand.

[40] On the authority of Hix Networking therefore, the application for
an interdict should not have been granted and the appeal against it must
be upheld. I add only two comments about that judgment to reinforce that
conclusion. The first is that the court said that the long-standing legal
position as stated by Greenberg J did not require reconsideration in the
light of the guarantee of freedom of expression in the Constitution.17
Bearing in mind the subsequent comments by Langa DCJ in Islamic
Unity Convention,18 this should not be misconstrued. Now that it enjoys
constitutional protection, freedom of speech carries greater weight than it

16 Buthelezi v Poorter and Others 1974 (4) SA 831 (W).
17 Section 16 of the Constitution.
18 Islamic Unity Convention v Independent Broadcasting Authority and Others 2002 (4) SA 294 (CC)
paras 26 to 28. See also Print Media South Africa and Another v Minister of Home Affairs and Another
[2012] ZACC 22; 2012 (6) SA 443 (CC) paras 44 and 45.

had in the past. Accordingly when Plewman JA said that in considering
an application for an interdict „the proper recognition of the importance
of free speech is a factor which must be given full value in all cases‟, that
must now be understood as referring to the full constitutional importance
of freedom of speech and expression. The other comment is that Hix
Networking was concerned with an interim interdict where it suffices to
establish a prima facie right. As this was an application for a final
interdict, Herbs Oils had to show a clear right and its infringement on a
balance of probabilities. It failed to do so and was accordingly not
entitled to the order it obtained from the high court.

Costs
[41]  While Herbal Zone and Mr Herzallah have enjoyed some success
in this appeal in having the interdict granted against them set aside, the
main thrust of their argument related to the attempt to secure relief
against passing off. In the circumstances I think the proper order in regard
to the costs of the appeal is that all parties should pay their own costs.

Order
[42]  In the result the following order is made:
The appeal succeeds in part and the order of the high court is
amended to read as follows:
„(a)
The application is dismissed with costs.
(b)
The counter application is dismissed with costs.‟
Each party is to pay their own costs of the appeal.

M J D WALLIS
JUDGE OF APPEAL

Appearances

For appellants:

G D Marriott
Instructed by:
Von Seidels Attorneys, Century
City, Cape Town.
Honey Attorneys, Bloemfontein.

For respondents:

I Joubert

Instructed by:
Spamer
Triebel
Incorporated,
Bellville.
Symington
&
De
Kok,
Bloemfontein.
Supreme Court of Appeal of South Africa

MEDIA SUMMARY– JUDGMENT DELIVERED IN THE SUPREME
COURT OF APPEAL
From:
The Registrar, Supreme Court of Appeal
Date:
10 March 2017
Status:
Immediate
Please note that the media summary is intended for the benefit of the
media and does not form part of the judgment of the Supreme Court of
Appeal.
Herbal Zone v Infitech Technologies [2017] ZASCA 8

Herbal Zone CC, a South African entity, claimed that Infitech
Technologies and a related company were passing off a product directed
at enhancing male sexual performance as their own product Phyto Andro
for Him. The competing product was being marketed in similar
packaging to that of Herbal Zone and under the same name. It also
published certain advertisements and a pamphlet to its customers saying
that the competing product was counterfeit. This prompted Infitech and
its associates to seek and obtain an interdict against Herbal Zone on the
basis that this claim was defamatory.

The SCA today dismissed an appeal against the judgment of the
Western Cape, Cape Town, Division of the High Court dismissing the
claim based on passing off. It held that Herbal Zone had failed to prove
that the necessary reputation in the product vested in it as opposed to a
Malaysian company Herbal Zone International Sdn Bhd. However it
upheld Herbal Zone’s appeal against the interdict. Such an interdict
constitutes a prior restraint on free speech and can only be granted where
the party seeking the interdict can show that it has both a clear right and
an infringement of that right. It was for Infitech to show that the

statement that its product was counterfeit was defamatory and that Herbal
Zone did not have a defence that the publication was true and made in the
public interest. This it had failed to do. A fair order in those
circumstances was that all partiers should pay their own costs.