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COMPANIES TRIBUNAL

REPUBLOF SOUTH AFRICA

                                                                                   Case   Number CT014JUL2017

In the matter between;                                                                            

PRO DRONES (PTY) LTD (2016/421742/07)                                                        Applicant

And

PRODRONE SERVICES (PTY) LTD (2017/084945/07)                                    Respondent

DECISION (Reasons and Order)

Presiding Member of the Tribunal:    Lucia Glass

1) This is an Application in terms of section 160 of the Companies Act 71 of 2008 (the Act). The basis of this application is that respondent’s name, PRODRONE SERVICES offends against the provisions of sections 11(2)(b) and (c) of the Act by incorporating a name that is confusingly similar to the applicants’  name PRO DRONES.                                      

2) The deponent to the applicant's papers is Alexandra Mary Elizabeth Mattisson, who avers that she is a director of the applicant.

3) She alleges that, in terms of a written resolution of the directors of the applicant, which is annexed to her affidavit; she is permitted to launch proceedings to safe guard the applicant’s proprietary rights in relation to its registered name and is also authorised to dispose to the contents of her affidavit.

4) The applicant applies to this Tribunal, for an order, that respondent is to change its name to one which does not incorporate the word PRO DRONES, or any other word confusingly and or deceptively similar to the word PRO DRONES.                               .

5) The respondent was registered in 2017 and the applicant was registered in 2016. As the applicant was registered before the respondent, it follows that the applicant’s name was already in use at the time the defendant’s name was registered.

6) On the 19^th July 2017 this application was served on the registered address of the respondent and the respondent has to date not entered a responding affidavit thus I can assume that the respondent has not deemed it necessary to defend this application and I can proceed with a default application.

7) It is averred that the dominant and memorable feature of the respondent’s name is the word ‘prodrone’ which is the same and/or confusingly similar to the applicant’s name ‘pro drones’ and the aforesaid name, or part of it, falsely implies or suggests that, or would mislead a reasonable person to incorrectly believe that, respondent is part of or is associated with the applicant. And further that the name of the respondent and applicant are phonetically and visually confusingly identical.

8) The deponent alleges that members of the public will be confused or deceived into believing that the business of the applicant is linked to, or associated with that of the respondent.

APPLICABLE LAW

9) Section 11 (2) (a) and (b) of the Act

" Section  11 (2) The name of a company must—

(a) not be the same as, or confusingly similar to—

(i) the name of another company, registered external company, close corporation or co-operative unless the company forms part of a group of companies using similar names;

10) The Applicant seeks remedies in terms of Section 160 which reads as follows: 

"Part B

Rights to seek specific remedies

Disputes concerning reservation or registration of company names.

Section 160.  

(1) A person to whom a notice is delivered in terms of   section 12(3) or section 14(3)  or any other person with an interest in the name of a company,  may apply to the Companies Tribunal in the prescribed manner and form for a determination whether the  name satisfies the requirements of section 11.

(2) An application in terms of subsection (1) may be made—

(a) within three months after the date of a notice contemplated in subsection (1), if the applicant received such a notice; or

(b) on good cause shown at any time after the date of the reservation or registration of the name that is the subject of the application, in any other case.

(3) After considering an application made in terms of subsection (1), and any submissions by the applicant and any other person with an interest in the name or proposed name that is the subject of the application, the Companies Tribunal—

(a) must make a determination whether that name satisfies the requirements of

section 11; and

(b) may make an administrative order directing—

(i) the Commission to—

(aa) reserve a contested name for the applicant in terms of section 12;

(bb) register the contested name, or amended name as the name of a company; or

(cc) cancel a reservation granted in terms of section 12, if the reserved name has not been used by the person entitled to it; or

(ii) a company to choose a new name, and to file a notice of an amendment to its Memorandum of Incorporation, within a period and on any conditions that the Tribunal considers just, equitable and expedient in the circumstances,  including a condition exempting the company from the requirement to pay the prescribed fee for filing the notice of amendment contemplated in this paragraph."

11)  In terms of the previous Companies Act, similar cases have been decided in respect of names that are   "the same or confusingly similar" and whether the name is able to "falsely imply or suggest, or be such as would reasonably mislead a person to believe incorrectly, that the company is part of, or associated with"   it is my view that it will be useful to look at these judgments even though they are not made in terms of the Act.

12) In 1948 [1]  the courts considered it appropriate to say "the court must not only consider the marks when placed side-by-side but must have regard to the position of a person who might at one time see or hear one of the marks and later possibly with an imperfect recollection of the mark, come across the other mark".  

13) In more recent times, 2000 in an unreported judgement [2] the court said:  " If one compares the name Kentron which the applicant has used and is still using with the name Kentronics which the first respondent is using, it is clear that there is a visual and phonetic differences.  It is however, also obvious that there are similarities.  The name Kentronics incorporates the whole of the applicants trading style Kentron."

14) In 2001 the court said:  [3]   "the decision involves a value judgment and that the ultimate test is whether, on a comparison of the two marks it can properly be said that there is a reasonable likelihood of confusion if both marks are to be used together in a normal and fair manner, in the ordinary course of business". 

REASONS FOR ORDER

15) When the Respondent's dominant word in its name  PRODRONE  and the Applicant's dominant word in its name PRO DRONES are compared, the  dominant words in both the applicant’s and respondent’s  name, are confusingly similar,  and I am certain  that the applicant will  be prejudiced if I do not make an order as prayed.

16)  I am convinced that if the two names are compared, there is no doubt in my mind that they are confusingly similar and there will be confusion if both names are to be used together in a normal and fair manner, in the ordinary course of business.

I proceed to make an order in the following terms;

a)  The Respondent is directed to change its name to one which does not incorporate and is not confusingly and or deceptively similar to Applicant's company name, PRO DRONES.                                         

b) The Respondent is to file a notice of an amendment of its Memorandum of Incorporation, within 60 days  of receipt of this order in order to change its name as per a) above.

c)  The Respondent is hereby exempted from the requirement to pay the prescribed fee for filing the notice of amendment contemplated in this paragraph.

d)  This Determination must be served on the Applicant, Respondent and the Registrar of Close Corporations of the Companies and Intellectual Property Commission. 

e)  Any other person with an interest in the name that is the subject of this application may, within twenty (20) business days after receiving the notice of this determination and administrative order, apply to a court to review the determination.

f)   No order as to costs.

 

_______________________________

LUCIA GLASS 

(MEMBER OF COMPANIES TRIBUNAL OF SOUTH AFRICA)

 Dated this 29 January 2018

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