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Sunday 4th June, 2023

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Are your trade secrets safe?
Are your trade secrets safe?


Are your trade secrets safe?

Is your franchise agreement really robust enough to stand up in court? Ian Jacobsberg offers guidance for South African franchisors and their advisers on drawing up contracts to protect intellectual property

In a typical franchise relationship, the franchisor provides its franchisees with the right to use its intellectual property. This usually comprises of the knowhow and trade secrets developed by the franchisor, and the right to use the franchisor’s trademarks and branding – enabling franchisees to capitalize on the goodwill associated with them.

Intellectual property is key to the franchisor’s success and helps it to attract more franchisees. It’s therefore understandable that franchisors look to prevent former franchisees from capitalizing on these benefits after their franchise agreements have terminated.

Most franchisors try to protect their assets by including restraint of trade clauses in their franchise agreements. However, cases in which franchisors have relied on these successfully in South African courts to prevent former franchisees from competing with them or their other franchisees are rare. The recent decision of the Gauteng Local Division of the High Court in the case of Paul’s Homemade (Pty) Ltd v Boshoff and Others is the latest in a series of judgments illustrating the difficulties franchisors often encounter.

In this article, I will try and analyze the lessons that franchisors can learn from this judgment (and others) to ensure they’ll be protected as much as possible in any given circumstances.

‘Insufficient evidence’

In the Paul’s case, the franchisor didn’t actually rely on the restraint clause, instead basing its case on the common law delict of unlawful competition. The franchisor claimed that its former franchisee, in collusion with other persons, had used its confidential information and trade secrets and exploited its customer connections in operating competing businesses.

Although these arguments were used to justify an interdict (injunction) based on the common law, the arguments advanced were similar to those usually relied upon to determine whether a restraint of trade clause in a franchise agreement is reasonable and should be enforced.

The court in the Paul’s case refused to grant an interdict to prevent the respondents carrying on business in competition with the franchisor. The court referred to the judgment in Walter McNaughton (Pty) Ltd v Schwartz and Another, in which it held that in order for information to be classified as a ‘trade secret’, it must be capable of application in a trade or industry, known only to a restricted number of people, and of economic value to the person seeking to protect it.

The court found that there was insufficient evidence that the information the franchisee possessed satisfied those criteria.

On the question of customer connections, the court found that in the nature of a retail ice cream outlet – such as those run by the franchisor and its franchisees, and the respondents – customers visited the stores as and when they felt like purchasing ice cream, and no relationship existed between the business operator and its customers.

Not upheld

The difficulties franchisors can face have been illustrated in other cases. For example:

  • In U-Drive Franchise Systems Ltd v Drive Yourself Ltd, the court found that in the case of a business reliant on referrals of customers via a central booking system, there was little likelihood of a former franchisee, operating under a different brand, attracting business away from the franchisor or any of its other franchisees. The court declined to enforce the restraint.
  • In Amalgamated Retail Ltd v Spark, the court refused to enforce a restraint where there was no evidence that the franchisor had appointed another franchisee in the area covered by the restraint, or had any plans to do so. The court held that the former franchisee was not carrying on business in competition with the franchisor or any of its other franchisees.
  • In Pam Golding Franchise Services (Pty) Ltd v Douglas, the court held that there was no indication that the former franchisee was using the franchisor’s name and trademark to attract business or any of its confidential information or trade secrets. The restraint clause was aimed purely at preventing the former franchisee from competing with the franchisor and its existing franchisees.
  • In Kwik Kopy (SA) (Pty) Ltd v Van Haarlem, the court refused to enforce a restraint against a former franchisee because the information provided to the franchisee by the franchisor was general business management training “geared to assist an inexperienced business person to set up a business and manage and market it.” There was no evidence that the franchisee had acquired knowledge of “any special techniques or methods … or of any unique marketing methods.”
  • In Mozart Ice Cream Classic Franchises v Davidoff and Another, the court held that customer connections only merited protection by a restraint where there was “knowledge of the needs of the customer, the way in which those needs are fulfilled by the party seeking to enforce the restraint and the identity of those within the customer’s organization who are in a position to influence a movement of the custom to the person sought to be restrained.” The court found that “customers are obtained by the respondents, not the applicant and neither party … is aware of the identity of the general, occasional customer.” On trade secrets, the court held that insufficient detail had been given on what protected information of the franchisor the former franchisee was using.

In the only example I came across of a franchisor successfully enforcing the provisions of a restraint clause against a former franchisee, Dovelight Trading 17 (Pty) Ltd t/a Auto-Mate Service Centre v Scyton Auto CC (formerly Auto-Mate Fourways), the court did not deal in any detail with the grounds on which courts declined to enforce restraints in the other cases mentioned above, and did not refer to any previous case authority. This judgment is an anomaly and probably not a definitive illustration of the approach the court is likely to take in any other case.

Lessons to learn

So, what lessons are there for franchisors and their advisors?

Firstly, the lack of case law upholding restraints doesn’t mean that it isn’t worthwhile to include restraint clauses in the agreement. The value of every franchise system is based on the franchisor’s brand and business systems, and the franchisor is within its rights to protect them against unauthorized use, including by a franchisee whose right to use them has been terminated.

However, the franchisor must be astute in drafting the clause, to ensure that the restraint is justified by a protectable interest recognized by the courts. In this regard, the franchisor must be able to identify information to which the franchisee will be privy that’s truly confidential and amounts to trade secrets; it must satisfy the requirements of the Walter McNaughton judgement.

Methods of doing business, or preparing and marketing products, which the franchisee could have learned from a source other than the franchisor, will not qualify as trade secrets, even if, in practice, the franchisee did in fact learn them from the franchisor, or as a result of the franchiser’s efforts. To qualify as a trade secret, the methods must be genuinely unique to the franchisor, giving it, and its franchisees, a competitive advantage not available to anyone outside the network.

Customer connections

As was pointed out in the Mozart Ice Cream judgment, in order to be protected by a restraint, a relationship must exist that would enable the owner of the relationship to target identifiable customers by reference to past purchases and preferences, and by knowledge of persons in the customer’s organization who influence its choice of suppliers. Therefore, it will be more difficult to show that a former franchisee is exploiting the franchisor’s customer contacts in the case of a retail business or restaurant/takeaway outlet than it might be in a services business, such as cleaning or printing and copying services. This is because even though customers may repeatedly purchase from the retail outlet, it’s unusual for records to be kept of their names, contact details, and buying patterns.

The drafter should describe the interests (trade secrets and/ or customer connections) that the restraint is intended to protect as precisely as possible (without actually disclosing confidential information), to avoid doubt that such interests exist and to ensure that the franchisee, when signing the agreement, acknowledges that they exist.

Finally, if it becomes necessary to apply for an interdict based on a restraint, the franchisor must ensure enough information is put before the court to establish that the protectable interests justifying an interdict exist. In the Paul’s judgement, the court noted that the franchisor had referred to its brands, recipes, marketing techniques and strategy, intellectual property contacts, customers and suppliers. However, it had done so in “bald and unsubstantiated terms” and had not provided “primary supporting facts from which it can be concluded that there are indeed trade secrets involved.” The takeaway from this is that the affidavits should contain a detailed description of the trade secrets, what makes them unique to the franchisor’s business, and how the franchisor and its franchisees derive a competitive advantage through them.

In conclusion, a restraint of trade is an important mechanism by which a franchisor can protect the assets it’s developed, and which give it, as well as its franchisees, a competitive advantage. It should not be seen as a way in which a franchisor can prevent any former franchisee from competing. The franchisor must be judicious in choosing which cases to pursue. Many franchisors enforce restraint provisions ‘on principle’, believing that if one franchisee were allowed to flaunt the restraint, others would follow suit.

It’s understandable that a franchisor wants to be seen by its current franchisees to be diligent in protecting the value and goodwill of the franchise, but the damage of an adverse judgment, which is critical of the franchise agreement and the value of the intellectual property it’s trying to protect, can be far worse. Franchisors should choose their battles wisely and, before going to war in defense of their existing franchise networks, must make sure they have the best weaponry available.

The author

Ian Jacobsberg is a director at Fluxmans Attorneys

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