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IN THE COMPANIES TRIBUNAL OF THE REPUBLIC OF SOUTH AFRICA

("THE TRIBUNAL")

CASE NUMBER: CT008MAY2018

In the matter of:

THE TRUSTEES FOR THE TIME BEING OF THE

NELSON MANDELA FOUNDATION TRUST                                                    APPLICANT

and

THENDELO 46664 (PTY) LTD                                                         FIRST RESPONDENT

COMMISSIONER OF THE COMPANIES AND

INTELLECTUAL PROPERTY COMMISSION                              SECOND RESPONDENT

 

Coram: PJ Veldhuizen

Date of Hearing: Not Applicable – Default Order

Order delivered: 30 July 2018

DEFAULT ORDER & REASONS

A.        Introduction

1.        THE PARTIES

1.1.        The Applicant is THE TRUSTEES FOR THE TIME BEING OF THE NELSON MANDELA FOUNDATION TRUST (“the Applicant”), a trust created in terms of a Trust Deed executed on 19 August 1999 with number IT9259/99 and existing under the trust laws of South Africa, having its principal place of business at 107 Central Street, Houghton, Gauteng, 2198.

1.2.        The First Respondent is THENDELO 46664 (PTY) LTD (“the First Respondent”), a private company incorporated in terms of the company laws of the Republic of South Africa with registration number 2014/063378/07 with registered office address at House 247, Vuwani, Tshavhazwaulu, Block E, Limpopo, 0952.

1.3.        The Second Respondent is the COMMISIONER OF THE COMPANIES AND INTELECTUAL PROPERTY COMMISSION appointed in terms of Section 189 of the Companies Act 71 of 2008 ("the Act"), who is cited in his official capacity as the person responsible for the function of the Commission in terms of the Act.

B.        THE APPLICATION

2.        This is an application for a Default Administrative Order against the First Respondent. The application is based on sections 11(2) and 160 read with Regulation 153 of the Act. No relief is sought against the Second Respondent.

3.        The Applicant is the registered proprietor in South Africa of at least 11 trade marks comprising the number 46664. The Applicant comprehensively set out details of the registered trade marks in its founding affirmation. In addition, the Applicant has set out the additional common law rights in the 46664 trade mark which indicate its widespread and extensive use of the mark years before the incorporation of the Respondent.

4.        The Applicant’s registered rights in the trade mark 46664 predate the First Respondent’s registration by approximately 10 years.

5.        The Applicant has made extensive and considerable use of its 46664 trade mark for many years and has developed a reputation and goodwill related to the use thereof.

6.        The Applicant alleges that the 46664 trade mark (and the reputation and goodwill thereof):

6.1.        is an asset of considerable commercial value and importance to the Applicant;

6.2.        the trade mark has been utilized inter alia by the Applicant with the goal to raise awareness of the spread of HIV/Aids in South Africa and to raise funds for this cause through music concerts featuring local and international artists and through a line of clothing apparel;

6.3.        in the period 2012 to 2017 the clothing apparel line bearing the trade mark earned over R60,000,000.00 in revenue and the 46664 products incurred a marketing spend over the same period of over R11,000,000.00; and

6.4.        that any unauthorized use of this trade mark or confusingly or deceptively similar marks is damaging to this asset and to the business of the Applicant.

7.        In addition, the Applicant further alleges that its distinctive 46664 trade mark qualifies for protection as a well-known trade mark within the meaning of sections 34(1)(c) and 35 of the Trade Marks Act 194 of 1993 (“the Trade Marks Act”).

8.        The Applicants seek an Order directing the First Respondent to change its name to a name that meets the requirements of the Act.

C.        POINTS FOR DETERMINATION

9.        Were the Tribunal’s procedural requirements met?

9.1.        The Applicant is required to establish good cause in terms of section 160(2)(b) as to why there has been a delay in bringing this application after becoming aware of the First Respondent’s registration.

9.2.        The Applicant has demonstrated that it has not unreasonably delayed pursuing its objection to the First Respondent’s company name. In fact, the Applicant cogently sets out all of the steps it has taken to protect and enforce its rights in its registered trade mark, including engaging its attorneys to address a demand to the First Respondent requiring it to voluntarily change its name. This demand was returned as “unclaimed”. The Applicant took further steps to ensure that the matter was brought to the attention of the First Respondent which culminated in the First Respondent’s request for a meeting to discuss the matter. A meeting was held at the office the Applicant’s attorneys, Messrs ENS on 23 July 2017. While the Applicant thought that progress had been made in that meeting, these hopes were ultimately dashed when Mr Nethononda (ostensibly an advisor to the First Respondent and its corporate controllers) advised on 11 September 2017 that notwithstanding his attempts to persuade the First Respondent’s corporate controllers to execute what was agreed at the meeting on 23 July 2017, he was unable to do so and was now effectively out of the matter. He indicated that the Applicant was to simply deal directly with the First Respondent in future. These efforts to deal directly with the First Respondent between September 2017 and the launching of this application came to naught.

9.3.        Accordingly, the Tribunal accepts that the Applicant has satisfied the requirement contemplated in section 160(2)(b) and that now exhausting all settlement attempts was left with no alternative but to launch this application.

10.        Service / Jurisdiction.

10.1.        The Applicant has served the papers in accordance with Act and the First Respondent has failed to answer within the required time period.

10.2.        The Tribunal enjoys jurisdiction to hear the matter and to grant the relief sought.

D.        EVALUATION OF EVIDENCE

11.        The Tribunal has no hesitation in accepting that the use of the Applicant’s registered trade mark by the First Respondent in its company name is in contravention of section 11(2) of the Act.

12.        The First Respondent has been provided an opportunity to be heard and has not filed any papers in this matter. The Second Respondent has similarly not filed any papers in this matter and presumably abides the decision of the Tribunal.

13.        The Tribunal therefore accepts the uncontested version put up by the Applicant and grants the relief as set out in E below.

E.        Decision

14.        The Applicant is granted a Default Order in terms of section 160(3) of the Companies Act 71 of 2008 and regulation 153 of the Companies Regulations of 2011 in the following terms:

14.1.        It is determined that the First Respondent’s company name does not satisfy the requirements of the Act.[1]

14.2.        A Default Administrative Order is issued directing the First Respondent to choose a new name, and to file a notice of amendment to its Memorandum of Incorporation within 30 days of this Default Administrative Order.[2]

14.3.        The First Respondent is ordered to pay the costs of this application.[3]

_______________

PJ VELDHUIZEN

MEMBER OF THE COMPANIES TRIBUNAL

CAPE TOWN

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