---

 

 

 

IN THE COMPANIES TRIBUNAL OF THE REPUBLIC OF SOUTH AFRICA

 

 

CASE NO: CT01157ADJ2022

 

 

INTEL CORPORATION                                         APPLICANT

 

and

 

INTEL CONSULTING COMPANY (PTY) LTD        FIRST RESPONDENT

 

and

 

COMPANIES AND INTELLECTUAL

PROPERTY COMMISSION                                   SECOND RESPONDENT

 

 

Presiding Member:                                     Brian Jennings

 

Date of handing down of decision:           1 March 2023

 

 

DECISION

 

 

Introduction

 

1                  The applicant is Intel Corporation, a Delaware corporation having its registered address at 2200 Mission College Boulevard, Santa Clara, California 95052- 8119, United States of America. The signatory to the founding affidavit appears authorised in terms of the "letter of authority" granted by the Corporate Vice President and Corporate Secretary, Corporate Group Legal of the applicant, who confirms, within her internal powers, that such signatory is so authorised to bring this application.[1]

 

2                  The first respondent is Intel Consulting Company (Pty) Ltd (registration number 2020/261411/07), a company incorporated in terms of the Companies Act, 2008 and having its registered address at 5543 Siyathemba Zone 7, Mpumalanga, Balfour, 2410.

 

3                  The second respondent is the Companies and Intellectual Property Commission, the organ of state established in terms of section 185 of the Companies Act, having its principal place of business at DTI Campus, Block F, 77 Meintjies Street, Sunnyside, Pretoria, Gauteng province. The second respondent has been cited in its official capacity only and as the custodian of the companies register.

 

Default order

 

4                  The applicant has applied for a default judgment against the respondents in terms of Regulation 153(1) to the Companies Act. The requirements for a default order are as follows:

 

4.1          the applicant must have served the respondents with an initiating document;

4.2          the respondents must not have filed a response within the prescribed period; and

4.3          the applicant must have applied to have the order, as applied for, issued against the respondents by the Tribunal.

 

5                  I deal with each in turn.

 

Serving the respondents with an initiating document

 

6                  On 14 September 2022, the applicant lodged Form CTR 142 in terms of section 160 of the Companies Act for an order that the first respondent's name be ordered to be contrary to section 11(2) of the Companies Act.

 

7                  Form CTR 142 was served electronically on the first and second respondents on 14 September 2022 and, in relation to the first respondent only, by way of sheriff on 16 September 2022. This was in compliance with the 5 business day requirement in Regulation 142(2).

0cm; line-height: 150%"> 

8                  I am therefore satisfied that service was properly effected as contemplated in Regulation 1532(2)(b).

 

Respondents must not have filed a response within the prescribed period

 

9                  From the papers before me, while the first respondent did engage the applicant by way of email, no response was filed with the Tribunal. The prescribed period of 20 business days from the date of service has elapsed, as contemplated in Regulation 143(1).

0cm; line-height: 150%"> 

10              The second respondent acknowledged receipt of the service by way of email on 16 September 2022. Similarly, no response was filed with the Tribunal. The prescribed period of 20 business days from the date of service has elapsed, as contemplated in Regulation 143(1).

 

The applicant must have applied to have the order, as applied for, issued against the respondents by the Tribunal

 

11             On 3 November 2022, the applicant (through its attorneys of record) applied to the Tribunal by way of Form CTR 145 for a default order.

 

12             I point out at this juncture, that the applicant's application for a default order is not exactly the same as that in the founding affidavit. The former omits a reference to an order as to costs. This is not defective as, in terms of Regulation 156(1), the Tribunal is empowered to make an order for costs. This is therefore at my discretion.

 

13             Accordingly this requirement has been satisfied.

 

Does the application comply with section 160 of the Companies Act?

 

14             I am called upon to express a view in terms of section 160 of the Companies Act as to whether the applicant, as a person with interest in the name of the first respondent, is entitled to apply for a determination by the Tribunal as to whether the first respondent's name satisfies the requirements of the Companies Act.

 

15             As the applicant is the proprietor of the registered trademarks as set out in the founding affidavit, I am satisfied the application is entitled to make the application it so makes.

 

16              The next hurdle is one of time: an application must be brought either (i) within 3 months after the date of a notice contemplated in section 160(1); or (ii) on good cause shown at any time after the date of registration of the name that is the subject of this application.

 

17             The applicant's founding affidavit is remarkably scant as to precisely when the applicant become informed of the matter. Only a cursory year is provided (in circumstances when all other specific dates have been provided), being 2020. One does not know whether the applicant's attorneys became aware by virtue of receiving a notice from the second respondent of the registration of the first respondent's name, or whether it was happenstance. What is clear is that the application was only brought on 12 September 2022 – some two years later. In this respect, I can only therefore assume the application is being brought in terms of section 160(2)(b) of the Companies Act.[2]

 

18             I am therefore required to assess whether good cause exists. In The Highly Nutritious Food Company (Pty) Ltd v The Companies Tribunal and Others (91718/2016) [2017] ZAGPJHC (22 September 2017), the Court held at para 18 that “[t]he section requires the applicant to furnish a reasonable explanation as to why the application should be entertained by the Tribunal. It does not require an explanation only as to the delay in bringing the application... [and] the Tribunal was obliged to look at the whole matter including the merits to determine whether it was in the interests of justice to entertain the application.”

 

19             “Good cause” therefore has two elements, namely the merits of the case as well as an “explanation ... as to the delay in bringing the application.”

 

20             I deal with the explanation for the delay in bringing the application.

 

Explanation for the delay in bringing the application

 

21             The applicant (or its attorneys) became aware of the company name of the first respondent in 2020.

 

22             The applicant contacted the first respondent shortly thereafter through a written letter of demand (as served by the sheriff), and the first respondent responded by email and agreed first to change its name, and then to deregister the company. Various promises in this regard were made from 21 October 2020 and at some point, the first respondent ceased interacting with the applicant, with the last communication being 24 January 2022.

 

23             This is an inordinate period of time, and more than enough for the first respondent to have fulfilled any of its promises it made to the applicant (either to change its name or to be deregistered). Neither were fulfilled and I find this behaviour dilatory at best, and obstructive at the worst. This is an important consideration when the issue of costs is to be considered.

 

24             At some early point telephonic discussions were held between the applicant and the first respondent. From what I can only assume was a sudden silence by the first respondent, the applicant's attorneys then conducted an e-mail campaign of quite a number of emails to the first respondent from May 2021 to 24 January 2022 requesting proof of deregistration or the change of name.

 

25              The delay in bringing an application must not be inordinate so as to, in turn, bring harm to the first respondent. Section 160 also protects the interests of the companies so registered and those of its creditors and the possible prejudice to be suffered either by the respondent/s and/or the creditors of the respondent/s, if there is an order to change its name, must be taken into account – see The Highly Nutritious Food Company (Pty) Ltd case supra para 20.

 

26             I am satisfied that the email chasers were genuine and in good faith with a view to avoid litigation and to settle the matter amicably, indeed as the first respondent had already committed to do. The earlier enthusiasm of the first respondent and commitment to resolve the issue certainly warranted the applicant pursuing this path of communication, which caused the delay in bringing this application, and cannot therefore, in my view, be said that the application was prejudicial to the first respondent.

 

27             I know deal with the merits of the case.

 

Merits of the case

 

28             In granting a default order it is critical to take the rights of the first respondent into account and to ensure that justice is done to all the parties.[3] I cannot just accept the assertions made by the applicant and must conduct a thorough review of the evidence.

 

29             Two grounds of non-compliance with the Companies Act was raised by the applicant, section 11(2)(b) and section 11(c)(i).

0cm; line-height: 150%"> 

30             The same test as applicable to trademark infringement applies to both section 11(2)(b) and 11(2)(c) of the Companies Act.[4]

 

31             In assessing "confusingly similar" under section 11(2)(b), I do not intend to summarise the law as it stands, but I have had regard to the following decisions and their relevant decisions, starting with the oft quoted passage:[5]

 

“Mere similarity is also not sufficient, it must be confusingly so. As to the requirement for confusingly similar, the test, as in the case of passing-off, should be: ‘. . . a reasonable likelihood that ordinary members of the public, or a substantial section thereof, may be confused or deceived into believing that the goods or merchandise of the former are the goods or merchandise of the latter or are connected therewith. Whether there is such a reasonable likelihood of confusion or deception is a question of fact to be determined in the light of the particular circumstances of the case”:

 

32             I have also had regard to the principles summarised in Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd [1984] ZASCA 51; 1984 3 SA 623 (A) at paragraphs 640 to 641, in that one must –

 

32.1           compare the mark in use (in this case, the registered name of Intel Consulting Company) and the registered mark (in this case, the INTEL trademark);

32.2           have regard to the similarities and differences;

32.3           assess the impact that the mark in use would make upon the average type of customer (meeting the standards as prescribed) who would be likely to purchase the kind of goods to which the marks are applied;

32.4           compare the marks as they would be encountered in the marketplace and relevant surrounding circumstances;

32.5           consider them side-by-side; and

32.6           consider the manner in which the marks are likely to be employed.

 

33             The applicant's attorneys then refer me to the decision in Bata Ltd v Face Fashions[6] but as the case concerns a local trademark, I do not believe it to be relevant insofar as it concerns an appreciation globally.

 

34             I am swayed by the decision in New Media Publishing (Pty) Ltd v Eating Out Web Services CC[7] that contextualises the assessment of "confusingly similar", being as follows:

 

"There is, it seems to me, an interdependence between the two legs of the inquiry: the less the similarity between the respective goods or services of the parties, the greater will be the degree of resemblance required between their respective marks before it can be said that there is a likelihood of deception or confusion in the use of the allegedly offending mark, and vice versa…"

 

Application to the current facts

 

35             Having regard to the above, the use of the "INTEL" name in the registered name of the first respondent is, in my assessment, so similar as regards the average type of customer that it would be confusing in relation to the type of goods to which the "INTEL" trademark would be applied. This remains so despite the first respondent's name being qualified with the words "Consulting Services". Accordingly the registered name of the first respondent does not comply with the requirements of section 11(2)(b)(iii) of the Companies Act.

 

36             I have also had regard to the use of the trademark in its the marketplace as alleged by the applicant and relevant surrounding circumstances, including the fact that the applicant markets its products in a distinctive way, with "INTEL" being the house name and various suffixes added thereto. For this reason, the placement of the word "INTEL" at the beginning of the first respondent's name is, in my mind, falsely implying or suggesting, or is such as would reasonably mislead a person to incorrectly believe that the first respondent is part of, or associated with, the applicant. Accordingly the registered name of the first respondent does not comply with the requirements of section 11(2)(c)(i) of the Companies Act.

 

Costs

 

37             As intimated above, this whole affair could have ended much sooner had the first respondent fulfilled its promises timeously to the applicant. Instead, the first respondent appears on the record to have not delivered on its promises, and then ceased all communications. This is conduct which I cannot condone.

 

Order

 

38             The following order is made:

 

38.1           the first respondent is ordered to change its company name to one which complies with section 11 of the Companies Act and which does not incorporate the applicant's "INTEL" trademark or which is not confusingly similar thereto;

38.2           in the event that the first respondent fails within 60 days to comply with the order above, the second respondent is ordered in terms of section 160(3)(b)(ii) read with sections 11(3)(a) and 14(2) of the Companies Act, to record the first respondent’s registration number followed by “(South Africa) (Pty) Ltd”, as the first respondent’s interim company name on the companies register; and

38.3           the first respondent to pay the applicant's costs.

 

 

BRIAN JENNINGS

MEMBER OF THE COMPANIES TRIBUNAL

---