---

IN THE COMPANIES TRIBUNAL OF SOUTH AFRICA

Case No: CT014Feb2018

In the matter between:

Investec Bank Limited

Applicant

vs

Three Trees Investec (Pty) Ltd Companies and Intellectual Property Commission

First Respondent Second respondent

 

Presiding Member of the Tribunal: Prof PA Delport

Date of Decision: 5 June 2018

 

DECISION (Reasons and Order)

1. INTRODUCTION

1.1 The applicant applies for a default order that the first 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” / “Act”).

1.2 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.

1.3 The jurisdiction of the Tribunal in this matter is as determined in s 160(1) of the Companies Act.

 

2. BACKGROUND

2.1 The applicant is Investec Ltd, a company incorporated with registration number 1969/004763/06.

2.2 The first respondent is Three Trees Investec (Pty) Ltd, a company incorporated in 2015 with registration number 2015/234174/07.

2.3 The second respondent is the Companies and Intellectual Property Commission.

2.4 On 21 February 2018 the applicant filed a CTR 142 with the Tribunal, together with the required affidavit in support of the application. The affidavit was by Susan Caroline Swatton-Seymour, duly authorised by the applicant.

2.5 The relief sought by the applicant is stated in the CTR 142 as:

“1. directing the First Respondent to change its name to one which does not incorporate the trade mark INVESTEC, or any other trade mark/word that is confusingly and/or deceptively similar thereto,

2. in the event that the First Respondent fails to comply with the order set out in paragraph 1 above within 3 months from the date of the order, directing the Second Respondent, in terms of Section 160(3)(b)(ii) read with Section 142 of the Act, to change the name of the First Respondent to “K2015/234174/07 (Pty) Ltd”, as the First Respondent’s interim company name on the Companies Register; and

3. granting the Applicant further and/or alternative relief.”

2.6 The applicant avers that the name of the first respondent will reasonably mislead a person to believe, incorrectly, that the first respondent is part of, or associated with, the applicant's business and that the name does not, therefore, comply with section 11 (2)(a) or (b) and (c) of the Companies Act.

2.7 A copy of the submissions to the Tribunal (CTR 142 and supporting affidavit) was served on the first respondent by the sheriff at the registered address of the respondent by handing it to a certain Mr Shaun Naidoo in terms of Uniform Rule 4(1)(a)(v), which corresponds with the prescribed method as in Table 3 of  Annexure 3 of the regulations and s 220 of the Companies Act. Service was on 23 February 2018, within the period prescribed in reg 142(2), after filing with the Tribunal.

2.8 There is no indication whether the application was served on the second respondent.

2.9 There was no reaction from the first respondent within the prescribed period of 20 business days as required by reg 143, and the applicant applies for the default order, as in para 2.5 above, in terms of reg 153.

 

3. ISSUES and APPLICABLE LAW

3.1 Section 160, which is the basis for applications like these, provides, as far as it is relevant for the present matter, as follows:

“160. Disputes concerning reservation or registration of company names.—(1) … 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 this Act.

(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, or the reservation, registration or use of the name, or the transfer of the reservation or registration of the name, satisfies the requirements of this Act; and

(b) may make an administrative order directing—

(i) the Commission to—

(aa) reserve a contested name, or register a particular defensive name that had been contested, for the applicant;

(bb) register a name or amended name that had been contested as the name of a company;

(cc) cancel the reservation of a name, or the registration of a defensive name; or

(dd) transfer, or cancel the transfer of, the reservation of a name, or the registration of a defensive name; 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.”

3.2 The relevant provisions of s 11 provide:

“(2) The name of a company must—

(a) not be the same 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), 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 trade mark 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;

[Para. (a) substituted by s. 6 (c) of Act No. 3 of 2011.]

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

….

(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;

…”

 

4. EVALUATION

 4.1 Section 160 provides:

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

…

(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.”

4.2 The Act does not define what is meant by “good cause” in terms of s 160(2)(b) but based on the context of s 160(2), it would seem that the sensible interpretation, as discussed hereunder, will be that it refers to the period within which to launch the application.

4.3 The reason for the requirement that there must be good cause shown why the application was launched at a particular date would appear to be that the person doing business under a particular name, that has been registered by the Companies and Intellectual Property Commission, is not prejudiced by a belated challenge which could affect the goodwill built up in using the name. See also Comair Limited vs Kuhlula Training, Projects and Development Centre (Pty) Limited CT007Sept2014 of 27 February 2015.

4.4 The first respondent was incorporated in 2015 and is, apparently, in the process of deregistration as from 22 September 2017.

4.5 The applicant, through its attorneys, was made aware of the registration of the first respondent in August 2016 and there followed attempted communications between the applicant’s attorneys on 1 September 2016, 21 February 2017, but no response was received.

4.6 In the supporting affidavit the applicant states in para 6.5 that after not receiving a response and despite “numerous follow-ups”, the attorneys for the applicant contacted the first respondent telephonically as well. The first respondent refused to give alternate contact details and apparently stated that he is not interested in further communication and that he will not change the name of the company.

4.7 It is clear that the “good cause” requirement, as interpreted in para 4.3 above, has been complied with. Whether “good cause” refers to the substantive merits and not the time lapse, will be addressed in evaluating the basis and merits of the complaint.

 

5. FINDING and ORDER

5.1 In Mediclinic Group Services (Pty) Ltd v Divine Touch Medi Clinic (Pty) Ltd (CT012Oct2017) [2017] COMPTRI 112 (13 December 2017) the following statements were made:

“‘Similar’ as in sub-s (2) (b) [of s 11] 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.

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.”

5.2 In respect of a word in everyday use, and the possible confusion, it was said in Bata Ltd v Face Fashions CC & Another 2001 (1) SA 844 (SCA) para 7:  “It is an ordinary word in everyday use, as distinct from an invented or made-up word, and it cannot follow that confusion would probably arise if it is used in combination with another word.”: See also Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others (164/2015) [2016] ZASCA 77 (27 May 2016) para 10.

5.3 “Investec” is not an ordinary word and therefore there is a reasonable likelihood that ordinary members of the public may be confused or deceived into believing that (the goods or merchandise of) the first respondent are connected with that of the applicant.

5.4 The first respondent’s name does not comply with s 11(2)(b) of the Companies Act.

5.5 The first respondent is directed in terms of s 160(3)(b)(ii), to choose a name which does not consist of, or incorporate, “Investec”;

5.6 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 para 5.4 above.

5.7 The Tribunal does not have the jurisdiction to order the second respondent to change the name of the first respondent as an order in terms of s 160(3)(b)(ii) is clearly only in respect of the company. In any case, there is no proof that the CTR 142 and supporting documents were served on the second respondent.

5.8 There is no order as to costs

 

SIGNATURE

 

 

PROF PA DELPORT

COMPANIES TRIBUNAL: MEMBER

DATE: 5 June 2018

 

---