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REPUBLIC OF SOUTH AFRICA

COMPANIES TRIBUNAL

 

Case/File Number: CT002Feb2014

 

 

In the matter between:

WEDDINGS EXPO (PTY) LIMITED      Applicant

 

and

 

WEDDING GROUP (PTY) LTD      Respondent

(Registration Number: 2013/087946/07)

 

 

Coram                                :                  Khashane Manamela (Mr.), Khatija Tootla

(Ms.) and Piet Delport (Prof.)

 

Date Heard                         :                  02^nd July 2014

 

Date of Decision                  :                  18^th July 2014

 

 

DECISION (Reasons and an Order)

 

 

Khashane Manamela (Khatija Tootla and Piet Delport concurring)

 

[1]     The applicant is a proprietor of three trade marks over goods and services in classes 35 and 41 in respect of the words or elements “WEDDING EXPO”.[1] These words or elements evidently constitute part of its registered company name, barring the letter of the alphabet “S” in the first part of its name in the word or element “WEDDINGS”. This part of the applicant’s dominion does not form part of the current dispute.

 

[2]     On the 12^th September 2012 the applicant filed applications for registration of trade marks in respect of the words and marks “THE WEDDING GROUP” and/or “WEDDING GROUP (THE)”.[2] Notable from the citation of the respondent above and confirmed by extracts from the records of the Companies and Intellectual Property Commission is that the registered company name of the respondent is “WEDDING GROUP PROPRIETARY LIMITED”.[3] This is where the dispute lies and essentially the area where a determination of this Tribunal is required.

 

[3]     The applicant contends that, the respondent’s registered company name or the inclusion of the words or elements “WEDDING GROUP” in the respondent’s company name does not satisfy the requirements of the Companies Act 71 of 2008 (the Act). This is actually the second time the applicant approached this Tribunal for a determination in this regard. The first application was in 2013 when the matter was adjudicated upon by my co-member in the Tribunal and also co-panelist in respect of this current application, Professor P.A. Delport (Prof. Delport).

 

[4]     Prof Delport handed down the 2013 Decision on the 29^th November 2013, in terms of which he refused the application significantly due to the misjoinder or non-joinder in those proceedings of the current respondent herein. There was a legion of other problems which my learned co-panelist labeled “patent and critical defects in the applicant’s case”[4] and glaring “deficiencies in the formalities in respect of the respondent’s …papers”[5]. I do not consider it necessary or warranted to dig deeper into the pivots of the 2013 Decision.

 

[5]     However I cannot let go of the 2013 Decision just yet. The respondent as one of its grounds for opposing the current application raises the exceptio rei iudicatae or res iudicata (also res judicata). [6] This exceptio or defence is premised on the irrebuttable presumption that a final judgment [on a claim] of a competent court is correct or accepted as the truth, which presumption is founded on trait of public policy proscribing endless litigation or the requirement of good faith which also disallow a demand over the same thing more than once.[7] The critical feature of this exceptio is that the judgment must be final[8], between the same parties and based on the same thing on the same ground.[9] A judgment or order must be final and definitive on the merits of the matter.[10] Avoiding a temptation to produce a thesis on this [which is actually not required] I find that, the 2013 Decision was not final and definitive of the merits, and not even between the same parties. In fact, the merits were not even dealt with and the current applicant was the one party and Zeenat Kara was the respondent and the other party therein. Therefore, the current panel of the Tribunal is properly seized with the matter and a decision on the merits l follows below.

 

[6]     The merits in this dispute, as alluded to above, are according to the applicant briefly as follows. The respondent must be ordered to desist using the impugned name as it offends its marks in respect of which applications have been filed for registration as trade marks. I will henceforth refer to these marks as trade marks.[11] In support of this contention the applicant submits, among others, as follows:

 

[6.1] that, it is well established in the wedding industry for hosting events and exhibitions, trade fairs and advertisement services in respect of May 2014 that, the three applications were advertised for trade mark opposition purposes in the Patent Journal of the 29^th April 2014 without any objections and therefore their registration as trade marks now appears to be only a matter of administrative routine. weddings, bridal events, and their by-products. These events are hosted under the name WEDDING EXPO.[12]

 

[6.2] that, it is also the owner of the wedding magazine WEDDING INSPIRATIONS since April 2010[13];

 

[6.3] that, during 2012 it began using the brand (THE) WEDDING GROUP “for purposes of becoming an umbrella brand for its diverse range of product and service offerings”.[14]

 

[6.4] that, it enjoys common law rights to the mark THE WEDDING GROUP as a consequence of its use since early 2012, and statutory priority rights under the Trade Marks Act 194 of 1993 since the 12^th September 2012, which rights both antedate the respondent’s adoption of the company name Wedding Group.[15]

 

[6.5] that, the respondent’s name contrary to sections 11(2)(a)(iii) and (b)(i) of the Act is the same as and confusingly similar to, the applicant’s trade marks THE WEDDING GROUP. Further that, the respondent’s name would falsely imply or suggest or would be such as would reasonably mislead a person to believe incorrectly that the respondent is part of or associated with the applicant and its business. I pause here to mention that, the latter part of the submissions appears to be based on section 11(2)(c)(i) of the Act, although no specific or numerical reference is made to the aforesaid statutory provision.[16] However, due to the nature of my findings below, nothing really turns on this.

 

[7]     The respondent did not make any appearance at the hearing of the 12^th June 2014. The hearing was then postponed significantly to accommodate the filing of heads of argument and appearance by the respondent to the 02^nd July 2014, but in vain. However, the respondent had fully participated in the proceedings prior to the hearing and had in fact filed an opposing affidavit with the assistance of its attorneys. The attorneys filed a notice of their withdrawal on the 04^th June 2014. Be that as it may, this Tribunal considered the papers filed on behalf of the respondent and in fact this decision constitutes a determination of the matter based on the papers filed. No viva voce evidence was led at the hearing, except for oral submissions by Ms. Karen Kitchen on behalf of the applicant, based on the heads of argument filed. Therefore, I do not consider the order herein to have the hallmarks of a default order as contemplated in regulation 153 of the Companies Regulations, 2011. For good measure, I must also add that, I am satisfied with the attempts made by this Tribunal herein to avoid any prejudice to any of the parties. I am in fact confident that, no prejudice will be suffered due to the pathways travelled by this matter to reach this final stage.

 

[8]     The respondent’s answering affidavit raised a number of issues. I have already disposed of the res judicata issue above. There are submissions that, the initiating document or application was not properly served upon the respondent. Significantly, this is about the captions and other elements of the return of service by the sheriff. There, the sheriff has initially indicated the wrong forum and confused the parties and even with an attempt by the applicant to have this corrected, there wasn’t absolute success in this regard.[17] However, technicalities aside, there is no evidence that the respondent did not receive the application. In fact it evidently did file an answering affidavit. The probative value of the sheriff’s return is improved [if ever there was a need in this regard] by the absence of evidence of prejudice suffered by the respondent. This will conclude the issue of the sheriff’s return and together with the res judicata all the preliminary issues herein.

 

[9]     The respondent’s submissions on the merits are essentially that the application ought to be dismissed due to, among others, the following:

 

[9.1] the parties are operating in different industries, as the respondent is currently trading “within the décor and catering hire industry”[18] whereas the applicant’s trade marks will be used in  respect of a company which has been established as the advertising agent for Wedding Expo[19];

 

[9.2] the respondent’s profile is already established as it has own website; hotline telephone number; “has invested a lot of funding in marketing and advertising of the company..”[20];

 

[9.3] there hasn’t been “any confusion of the two trade names by members of the public” even though the respondent has been trading under the impugned name before the applicant became aware of it[21];

 

[9.4] considering the business tools utilised by the respondent “it would not be just, equitable and ethical for the company of the Respondent [sic] to just abandon the name solely because the Applicant applied for the registration of the trademark prior to me registering my company name”[22];

 

[9.5] there is no need for the applicant to secure further trade marks [as it is currently doing through the filed applications] as the rights to be secured in terms of the registration of THE WEDDING GROUP trade marks are already the applicant’s under THE WEDDING EXPO trade marks.[23]

 

[10] In holding the view that, the submissions made in this matter and most of them repeated above, could be curtailed by simply asking the question whether the respondent’s name is the same; confusingly similar or reasonably likely of being confused with the applicant’s THE WEDDING GROUP trade marks. This is necessary, as the other submissions from both sides are not necessarily relevant to the real issues to be determined herein. The test or criteria for company names in terms of the Act is or are as laid out in section 11(2) of the Act, whose relevant portions read as follows:

 

“11. Criteria for names of companies

 

(1) …

(2) The name of a company must-

 

(a)       not be the same[24] as –

 

(i)  the name of another company, domesticated company, registered external company, close corporation or co-operative;

(ii) a name registered for the use of a person, other than the company itself or a person controlling the company, as a defensive name in terms of section 12(9), or as a business name in terms of the Business Names Act, 1960 (Act No. 27 of 1960), unless the registered user of that defensive name or business name has executed the necessary documents to transfer the registration in favour of the company;

(iii)  a registered trade mark belonging to a person other than the company, or a mark in respect of which an application has been filed in the Republic for registration as a trade mark or a well-known trademark as contemplated in section 35 of the Trade Marks Act, 1993 (Act No. 194 of 1993), unless the registered owner of that mark has consented in writing to the use of the mark as the name of the company; or

(iv)a mark, word or expression the use of which is restricted or protected in terms of the Merchandise Marks Act, 1941 (Act No. 17 of 1941), except to the extent permitted by or in terms of that Act;

 

(b)       not be confusingly similar to a name, trade mark, mark, word or expression contemplated in paragraph (a) unless -

 

(i)          in the case of names referred to in paragraph (a)(i), each company bearing any such similar name is a member of the same group of companies;

…

(iii)  in the case of a name similar to a trade mark or mark referred to in paragraph (a)(iii), the company is the registered owner of the business name, trade mark or mark, or is authorised by the registered owner to use it; or

(iv)  in the case of a name similar to a mark, word or expression referred to in paragraph (a)(iv), the use of that mark, word or expression by the company is permitted by or in terms of the Merchandise Marks Act, 1941;

 

(c)        not falsely imply or suggest, or be such as would reasonably mislead a person to believe incorrectly, that the company-

 

(i)           is part of, or associated with, any other person or entity;

 

… ”

[ underlining added for emphasis]

 

[11] Against the backdrop of section 11(2)(a)(iii), I find that the respondent’s name is the same as the applicant’s trade marks. These are my reasons therefor. Apart from the article “THE” [be it in a prefix or suffix] both words or elements (i.e. WEDDING GROUP) in the respondent’s name are exactly the same as the applicant’s trade marks. It should be noted that, the provisions of the Act simply offers protection against company names which are the same as trade marks. There are no requirements about whether there is goodwill in the name or whether the contenders are in the same industry or not.[25] It is also my view that, the article “THE” in the applicant’s trade marks do not render the respondent’s name to escape my finding above. For, the prominent or dominant features of the respondent’s name are the two words or elements “WEDDING GROUP” and the word or article “THE” is generic and does not render the respondent’s name dissimilar from the applicant’s trade marks.[26] If not the same, the respondent’s name is confusingly similar to the applicant’s trade marks [section 11(2)(b)(iii) of the Act].

 

[12] The Act does not define or explain what is meant by “confusingly similar” in section 11(2)(b). However, I am aware of disputes in which elements or other instruments are said to be “confusingly similar” in trade marks as opposed to company names. I presume [without implying any finding in this regard] the legislature employed these words in the Act when the objection to a company name included similarities with a trade mark along the same parameters as in the trade marks legislation. For example, section 34(2)(g) of the Trade Marks Act 194 of 1993 reads as follows:

 

“34. Infringement of registered trade mark.

(1)…

(2) A registered trade mark is not infringed by—

 

(a) ….

 

…

 

(g) the use of any identical or confusingly or deceptively similar trade mark which is registered…”

[underlining added for emphasis]

 

[13] At the risk of extending this discussion unnecessarily, I refer to the words of His Lordship Malan JA in Adcock Ingram v CIPLA Medpro[27] when determining whether the trade marks ZEMAX and ZETOMAX in which he held that, “…the two words are similar, confusingly so. ZEMAX consists of two syllables and five letters. ZETOMAX comprises three syllables and seven letters. The difference between the two marks arises out of the middle syllable TO in ZETOMAX which extends the word and breaks the connection between the first and last syllables. When MAX is excluded from both marks ZE and ZETO must be compared. They are different but this difference becomes less pronounced when MAX in both is considered. ZE and MAX are indeed the dominant elements of the two names. …. There is also a similarity in the appearance of the two marks. When their sounds are compared there is also a likelihood of confusion. Their pronunciation is similar, the TO in ZETOMAX being pronounced softly….. But looking at the two marks globally and appreciating their similarities the overall impression is that they are so similar as to be confusing.” Fortunately, the determination by this Tribunal isn’t that complicated as the one the Honourable Judge of Appeal Malan was saddled with. Here the distinguishing feature is simply the definite article “THE”. Whether this is included in the applicant’s trade marks or not would, in my view, not avoid the confusion due to the similarity to the respondent’s name. Therefore, I find that the respondent’s name is confusingly similar to the applicant’s trade marks.

 

[14] With the findings above, I do not consider it any more necessary to determine the matter from the angle of section 11(2)(c)(i) of the Act. No purpose will be served by this as those findings are fateful to the application. This then concludes the inquiry regarding the impugned name and I deal next with the costs incurred in these proceedings.

 

[15] I enjoy a cloak of statutory discretion on the issue of costs through the provisions of regulation 156(1) of the Companies Regulations, 2011 (the Regulations]. Obviously this discretion has to be exercised fairly and judiciously. Although costs as a general rule follow the event or outcome[28], often I have deemed in unwarranted to mulct with costs order a respondent to a name dispute, especially where the matter is unopposed. This is often due to the fact that, the choice of the disputed name may have been completely innocent. However, in this matter, the respondent had the benefit of two processes to consider its stance or attitude regarding the relief sought by the applicant. Firstly, in the proceedings relating to the 2013 Decision discussed above and secondly, after being served with the initiating documents for the current application. On both occasions it chose to oppose the matter and the grounds for doing so in the current application were not far from being spurious. They were found more than wanting as dealt with above. On the other hand, the launching and prosecution of the application by the applicant was necessary for the respondent to cease and desist using the impugned name. No doubt, the applicant is entitled to costs, including costs relating to when the hearing was postponed in an attempt to allow appearance by the respondent. In terms of regulation 156 of the Regulations, the costs allowed by this Tribunal may be on a High Court scale and they shall be.

 

[16] I therefore proceed to make an order in the following terms:

 

a)         the application is successful and the respondent’s registered company name “WEDDING GROUP” is found not to satisfy the requirements of the Companies Act 71 of 2008;

 

b)         the respondent is directed to choose and register another company name, which company name should satisfy the requirements of the Companies Act 71 of 2008;

 

c)          the respondent should complete the activities ordered in b) above within four (04) months of service of this order upon the respondent;

 

d)         the respondent is liable and ought to pay the agreed or taxed party and party costs in this matter, including the costs for the hearing of the 12^th June 2014 at a tariff applicable in respect of High Court matters.

 

 

Khashane Manamela Member, Companies Tribunal 18^th July 2014

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