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COMPANIES TRIBUNAL

REPUBLIC OF SOUTH AFRICA

Case: CT013APR2018

LONA CITRUS (PTY) LTD (Registration 1996/007186/07)                                           Applicant

and                

THE COMPANIES AND INTELLECTUAL PROPERTY COMMISSION             Respondent

(CIPC)

Presiding Member of the Companies Tribunal:    Lucia Glass

DECISION (Reasons and Order)

1)  This is an application for an order to compel the Companies and Intellectual Property Commission (CIPC) to set aside the CIPC's COR 9.5 notice, dated 10.4.2018, reference number 9113629528 refusing the name reservation “LONA”.  The applicant intends changing its name to “LONA”.

  2)  The Deponent to the Applicant's papers is Derek Sutton who is a director of the Applicant and who avers that he applied for a company name reservation using the required form CoR9.1  where  the name LONA was  refused by the CIPC.

3) The name LONA was refused by CIPC because confusingly similar names existed on their database.

4) The applicant wishes to change its name from LONA CITRUS to LONA.  

5) It is alleged that the need for a name change is as a result of the applicant not only trading in citrus but in other commodities and the use of the name LONA CITRUS limits its trading capabilities.

6) Furthermore it is alleged that in public,  the applicant is known by its brand name which is LONA.

7) It is further alleged that that the conflicting entities identified by the CIPC are not of a similar trade or nature.

8) The COR9.5 CIPC  letter had the following conflicting names;

LONA C SOLUTIONS

 LONA PEARLS

9) The CIPC letter to the applicant dated 10.4.2018, advised the Applicant, that the Applicant's name can not  be approved due to the fact that it is confusingly similar to names already registered  in particular, in terms of Sec 11 (2)(b) of the Act.  The Applicant was advised by CIPC to insert a distinguishing element that will sufficiently be capable of differentiating the name from names already registered within the meaning of the CIPC name register in terms of Sec 11 (2) of the Act.

10)  APPLICABLE LAW

Section 160 of the Act:   Disputes concerning reservation or registration of company names.

"(1)  A person to whom a notice is delivered in terms of this Act with respect to an application for reservation of a name, registration of a defensive name, application to transfer the reservation of a name or the registration of a defensive name, or the registration of a company’s name, 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, or the reservation, registration or use of the name, or the transfer of any such reservation or registration of a 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;

(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;    (italics and bold emphasis added)

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

(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.

Section 11 of the Act

11. Criteria for names of companies

(2) The name of a company must-

 (b) not be confusingly similar to a name, trade mark, mark, word or expression contemplated in paragraph (a) unless - (italics and bold emphasis added)

(i) in the case of names referred to in paragraph (a)(i), each company bearing any such similar name is a member of the same group of companies;  (italics and bold emphasis added)

In the case of a company name similar to a defensive name or to a business name referred to in paragraph (a)(ii), the company, or a person who controls the company, is the registered owner of that defensive name or business name;

(iii) in the case of a name similar to a trade mark or mark referred to in paragraph (a)(iii), the company is the registered owner of the business name, trade mark or mark, or is authorised by the registered owner to use it; or

(iv) in the case of a name similar to a mark, word or expression referred to in paragraph (a)(iv), the use of that mark, word or expression by the company is permitted by or in terms of the Merchandise Marks Act, 1941;

[Para. (b) inserted by s. 6 of Act 3/2011]

Evaluation of facts and Reasons for decision

11)  The Companies Tribunal is tasked to determine, whether the applicant has shown good cause that the names applied for be approved by CIPC and whether the Tribunal  has the powers to make an order  directing   the CIPC  to reserve the names applied for.

12)  In terms of Section 160 (3) (b), the Companies Tribunal may make an administrative order directing the CIPC to reserve the contested name.

13)  In order to show good cause the Applicant has to prove that there are no conflicts and therefore no names  confusingly similar to the names which the Applicant seeks to have approved,  on the CIPC database of names.

14) The Applicant's case rests on the following;

His name "LONA" had the following conflicting names;

LONA C SOLUTIONS

LONA PEARLS

The names listed by CIPC on the CIPC database, are different as they have distinguishing words added to the common words, such as "solutions"  and "pearls".  For example if the Applicant where to add "ABC" to the word "LONA" this would distinguish his name from the names listed on the database.

15) The name "LONA" may also suggest that the Applicant’s entity is the mother body or associated in the course of trade with all "LONA" Companies registered, and thus it is confusingly similar as prohibited in Section 11 (2) of the Act.

Findings

16)  After considering the facts and the law, it is my view that the name "LONA" is confusingly similar to the other registered conflicting names, which may confuse the public into believing that these are all of the same business as the conflicting Companies' names,  and is not sufficiently capable of differentiating from the names already registered within the meaning of Section 11 of the Act.

ORDER

The order prayed for by the applicant is refused and the decision of CIPC is upheld.

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LUCIA GLASS

(MEMBER OF COMPANIES TRIBUNAL OF SOUTH AFRICA)

Dated this 18 July 2018

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