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IN THE COMPANIES TRIBUNAL OF SOUTH AFRICA

Case No: CT012OCT2017

In the matter of:

Mediclinic Group Services (Pty) Ltd

APPLICANT

vs

Divine Touch Medi Clinic (Pty) Ltd                                                           RESPONDENT

DECISION (Reasons and Order)

1. INTRODUCTION

1.1       The applicant applies for a default order that the respondent be ordered to change its name because it does not comply with s 11(2) of the Companies Act 71 of 2008 (“Companies Act”).

1.1       Regulations 142 and 153 of the Companies Act (GNR 351 of 26 April 2011) (“Companies Act regulations” / “regulations”) regulate an application to the Companies Tribunal (“Tribunal”) as well as the application for a default order under certain circumstances.

2. BACKGROUND

2.1       The applicant is Mediclinic Group Services (Pty) Ltd, a private company with registration number 2008/014068/07.

2.2       The application is brought on behalf of the applicant by Marlene de Beer, who is duly authorised thereto by a resolution of the board of the applicant of 21 July 2017.

2.3       The applicant is the owner of various “Mediclinic” and “Medi-Clinic” trade marks, alone or in conjunction with other (place) names.

2.4       The respondent is Divine Touch Medi Clinic (Pty) Ltd, a private company with registration number 2015/181406/07, incorporated as such on 5 June 2015.

2.5       The applicant served a copy of the CTR 142 on the respondent within the 5 business days of filing it with the Tribunal as required by reg 142(2).

2.6       Service was, as allowed in terms of Table CR3 of Annexure 3 of the regulations, by registered post at the address/es of the respondent as per the records of the Companies and Intellectual Property Commission (CIPC”), and also by email.

2.7      The respondent failed to react and there is no indication that the mail (physical or electronic) was not delivered to / accepted by the respondent and the applicant therefore applies for a default order in terms of reg 153 and s 160:

1.25cm; margin-bottom: 0cm; line-height: 200%"> 2.7.1   ordering the respondent to choose a new name that does not contain the“Medi Clinic” element or any other name confusingly similar to the applicant's Mediclinic trade marks within such time and under such conditions as the Tribunal deems just and equitable;

2.7.2   ordering the Respondent to file a new Memorandum of Incorporation, within a time and under such conditions as the Tribunal deems just and equitable; and

2.7.3   if the respondent fails to comply with the Tribunal’s order, directing the CIPC to change the respondent’s name to “2015/181406/07 (Pty) Ltd” (being the respondent’s registration number), as the respondent’s company name.

3. ISSUES

3.1       In its CTR 142 the applicant contends that it objects to the name of the respondent “based on the provisions of section 11(2)(a)(iii) of the Companies Act…” (my emphasis).

3.2       In para 3.1 of the supporting affidavit the applicant states: “The Applicant hereby objects to the registration of the offending name. The objection is based on the provisions of Section 11(2)(a)(iii) of the Companies Act, 71 of 2008 ("the Act"), read with Section 160(2)(b) of the Act and Regulations 13(a) and 142 of the Companies Regulations, 2011 ("the Regulations") (as dealt with in paragraph 5 below).”

3.3       It is therefore, at least up to para 3, clear that the basis of the application is s 11(2)(a)(iii) of the Companies Act

3.4       In para 5.1 of the supporting affidavit the applicant quotes s 11(2) of the Companies Act and in para 5.2 it is contended that: “The Applicant and the Respondent are in no way connected with each other, nor are they part of the same group, as contemplated in Section 11(2)(b)(i) of the Act, nor has the Applicant authorised the Respondent to use Its MEDICLINIC trademark, as contemplated in Section 11(2)(b)(iii) of the Act.” The basis of the complaint here is s 11(2)(b) of the Companies Act.

3.5       However, in para 7 of the supporting affidavit the relief sought is: “In the premises, the Applicant submits that the offending name contravenes Sections 11(2)(b) and/or 11(2)(c) of the Act.”

3.6       Regulation 142 provides, as far as it is relevant here, that:

“(3)  An application in terms of this regulation must—

(a)          indicate the basis of the application, stating the section of the Act or these regulations in terms of which the Application is made…”

3.7       It is not clear which subsection of s 11 is the basis of the application, but the Tribunal will base its decision on the subsection most applicable and that can be determined with reasonably certainty from the supporting affidavit. 

4. APPLICABLE LAW

4.1       “Same”, as used in s 11(2)(a) means “exactly identical”: See eg Williams v Janse van Rensburg (3) 1989 (4) SA 884 (C); Century City Apartments Property Services CC and Another v Century City Property Owners Association [2010] 2 All SA 1 (SCA).  However, in Global Vitality Incorporated v Enzyme Process Africa (Pty) Limited and Others (20884/2013) [2015] ZAWCHC 111 (21 August 2015) para 87, the Court said in respect of sub-s (a) that “. . . the first respondent’s company name [is] the same as the applicant’s . . . trade mark (but for the word “AFRICA” at the end of the company name).” This dictum, however, is not in accordance with that of the Supreme Court of Appeal (as it then was) in Century City Apartments Property Services CC.

4.2       “Similar” as in sub-s (2) (b) would be “having a marked resemblance or likeness” and that the offending mark (or name) should immediately bring to mind the well-known trade mark (or other name): Bata Ltd v Face Fashions CC 2001 (1) SA 844 (SCA). 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.” Adidas AG and Another v Pepkor Retail Limited (187/12) [2013] ZASCA 3 (28 February 2013) para 28.

4.3       In Orange Brand Services Ltd v Account Works Software (Pty) Ltd (970/12) [2013] ZASCA 158 (22 November 2013) the Supreme Court of Appeal said (para 10), with reference to Kerly’s Law of Trade Marks and Trade Names (14^th ed para 17–23) that whether there is a likelihood of deception or confusion is a question of fact, and for that reason decided cases in relation to other facts are of little assistance, except so far as they lay down any general principle. 

4.4       There is clearly a possibility of an overlap between sub-s (2) (b) and the alternative effect of sub-s (2) (c), where the name would reasonably mislead a person to believe incorrectly, that the company is part of, or associated with, any other “person” or “entity”. This was accepted in Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others 2017 (2) SA 588 (SCA) para 16. This apparent overlap will be if the criteria in sub-s (2) (b) are present but not if the criteria in sub-s (2) (c) are present. It is, due to the facts, not necessary to address this issue.

5. EVALUATION

5.1       The applicant can bring an application in terms of s 11 on good cause shown at any time after the date of the registration of a name that is the subject of the application (s 160(2)(b)).

5.2       It has been accepted that “good cause” refers to the reason for the effluxion of time between registration and the application.

5.3       In this instance the application was about a year after the registration and is, in my opinion, reasonable. Also, the respondent is/was in deregistration, which would lessen the impact of possible prejudice to allow it to trade under the “offending” name before an application is launched for an order to change the name.

5.4       The word/s Mediclinic, with or without the hyphen and with or without a space is a word and trade mark that is registered to the applicant and is not an ordinary word. The use of a similar word will, due to the extent of the use of the word by the applicant, have “…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.”

6. FINDINGS

6.1       The name of the respondent is such that it cannot be said to be the same as that of the applicant in terms of s 11(a).

6.2       However, the name of the respondent is confusingly similar to the trade mark of the applicant within the meaning of s 11(2)(b).

7. ORDER

7.1       Although there is doubt whether the Tribunal can, in terms of s 160, give an order as asked for in para 2.7.3 above, I need not traverse that issue, as it is trite that an order cannot be given in respect of a person who was not party to the application. The CIPC was not included and served as respondent.

7.2       The respondent is ordered:

7.2.1   to change its name to a name that does not incorporate the word “Mediclinic”, with or without a hyphen or with or without a space, within 20 business days from the date of this decision.

7.2.2   The respondent must therefore file, at no cost, an amended Memorandum of Incorporation incorporating the new changed name within said 20 business days.

Prof P.A. Delport

 

COMPANIES TRIBUNAL: MEMBER

DATE: 13 December 2017

 

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