Jenni Button restrained from using her own name

South Africa
In Button v Jenni Button (Pty) Ltd (Case 12414/05, September 19 2008), the High Court of South Africa (Cape of Good Hope Provincial Division) has granted an order enjoining Jenni Button, a well-known South African clothing designer, from making use of the trade name Jenni Button for the purposes of conducting business within the retail clothing trade in South Africa. 
The High Court heard two applications simultaneously:
  • an application by Button seeking the transfer by Jenni Button (Pty) Limited and other entities of 30% of the shares of the company to Button; and
  • a counter-application by Jenni Button (Pty) Ltd seeking to restrain Button from using the trade name Jenni Button for the purposes of conducting business within the retail trade, including as part of the domain name ''.
In 1997 a written sale of business agreement was entered into between a company then known as Jenni Button (Pty) Limited and, among other entities, a nominee of an unnamed company known as Newco (which subsequently changed its name to Jenni Button (Pty) Limited). The business sold included:
"the names of Jenni Button and JB Inc and all goodwill relating thereto, and all trademarks and copyright in or relating to the names Jenni Button and JB Inc which, together, comprise a going concern."
The agreement undertook to offer Button an interest of at least 30% in Newco and provided that the terms of conditions of her interest would be the subject of a further agreement. 
For reasons of vagueness and unenforceability, the court:
  • held that the provisions of agreement relating to the sale of 30% of the interest in Newco was void; and
  • refused Button’s claim for the transfer of the shares to herself, with costs.
In addition, the following facts emerged in the counter-application:
  • Button never disputed the fact that Jenni Button (Pty) Limited had acquired all the goodwill relating to her name, trademarks and copyright. However, she had used the name Jenni Button in trade in several instances in relation to her new clothing business. When challenged, she had given an undertaking to desist from doing so.
  • In her answering affidavit in the counter-application, Button sought to qualify her undertaking, taking the position that she could not be prevented from referring to her own name, provided that she did not use the name Jenni Button as a trademark or trading style in South Africa. Button contended that: 
    • Jenni Button (Pty) Limited was not entitled to prevent her from using her own name for her clothing designs; and
    • the undertaking she had previously given was done "in the spirit of cooperation and reconciliation".
  • Button also sought to rely on the provisions of Section 34(2) of the Trademarks Act, which entitles a person to use his or her own name in trade in good faith.
First, the court held that, in view of the fact that no registered trademark was in issue, the provisions of Section 34(2)(a) were irrelevant. However, the court recognized that under South African common law, a person has a prima facie right honestly to:
  • use his or her own name in business; and
  • sell goods under his or her own name. 
However, there are limitations on the right of a person to do so (see Policansky Brothers Ltd v L&H Policansky (1935 AD) and Brian Boswell Circus v Boswell-Wilkie Circus (1985 (4) SA 466 (A))).

In addition, in view of the fact that Jenni Button (Pty) Limited had acquired the name Jenni Button and the goodwill associated with it, the court had no doubt as a matter of fact that the continued use by Button of her own name in the course of her current business infringed the right to goodwill attaching to the JENNI BUTTON trademark. Therefore, Button was not entitled to make use of her own name in the course of business - at least as long as her business operated in the same field as Jenni Button (Pty) Limited in South Africa.

Finally, as there was undisputed evidence of Button’s use of her name in trade in South Africa (including as part of the domain name ''), the court held that Jenni Button (Pty) Limited had established its entitlement to the interdictory relief claimed. Consequently, the court granted the requested order (restricted to South Africa), with costs.

Chris Job, Adams & Adams, Pretoria

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