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SAFLII Note: Certain personal/private details of parties or witnesses have been redacted from this document in compliance with the law and SAFLII Policy

           

IN THE COMPANIES TRIBUNAL OF SOUTH AFRICA

Case No: CT014MAY2018

In the matter between:

JERRY GOVENDER                                                                                           APPLICANT

and

COMPANIES AND INTELLECTUAL PROPERTY

COMMISSION (CIPC)                                                                                   RESPONDENT

Presiding Member of the Companies Tribunal: ISHARA BODASING

Date of Decision: 22 AUGUST 2018

DECISION (Reasons and an Order) 

1.    INTRODUCTION

1.1.       Applicant is Jerry Govender, an adult male businessman residing at [...] M. C., Athlone, Durban North, 4051.

1.2.       Respondent is the Companies and Intellectual Property Commission (“CICP), a juristic person established in terms of section 185(1) of the Companies Act 71 of 2008 (“the Act”).

1.3.       This is an application in terms of Section 160 of the Act for a determination order:

a.    that the decision of the Respondent not to approve the proposed name “Crossover Engineered Solutions” be set aside, and

b.    that the Respondent be directed to reserve the said proposed name.

2.    BACKGROUND

2.1.       On 20 May 2018 Applicant applied for reservation of the name “Crossover Engineered Solutions’’ with the Respondent.

2.2.       On the next day the name “Crossover Engineered Solutions’’ was refused by the Respondent on the basis that the proposed name is confusingly similar to the existing name “Crossover Civil Engineering.”

2.3.       Respondent informed the Applicant that no name had been approved for use by the Applicant because a comparative name exists.

2.4.       The relief sought by the Applicant is that the proposed name reservation be granted for 
“Crossover Engineered Solutions’’, in order for Applicant to apply for a defensive name reservation.

3.    ISSUES

3.1         The Respondent, despite being notified electronically on 25 May 2018, of this application, has not filed any opposing papers.

3.2         The Applicant provided the following reasons in support of its application:

i.    The name “Crossover Engineered Solutions” has only the word “Crossover” in common with “Crossover Civil Engineering;

ii.    The rest of the words in the disputed names convey completely different meanings;

iii.    Applicant’s name portrays the provision of a service that goes beyond existing solutions, by using an engineered approach to formulate a solution;

iv.    The already registered name refers only to a field of engineering, i.e. civil engineering: the design and maintenance of roads, bridges, etc.

v.    The two names are sufficiently unique and not confusingly similar.

4.    APPLICABLE LAW

4.1         Section 11 of the Act provides as follows: “11. Criteria for names of companies.—

(1)....
(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;

...

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

(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; …

 (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;”

4.2         Section 12 of the Act is entitled: Reservation of name and defensive names, and provides:

(1) A person may reserve one or more names to be used at a later time, either for a newly incorporated company, or as an amendment to the name of an existing company, by filing an application together with the prescribed fee.

(2) The Commission must reserve each name as applied for in the name of the applicant, unless -

(a) the applicant is prohibited, in terms of section 11(2)(a), from using the name as applied for; or

(b) the name as applied for is already reserved in terms of this section.

(3) If, upon reserving a name in terms of subsection (2), there are reasonable grounds for considering that the name may be inconsistent with the requirements of-

(a) section 11(2)(b) or (c)-

(i) the Commission, by written notice, may require the applicant to serve a copy of the application and name reservation on any particular person, or class of persons, named in the notice, on the grounds that the person or persons may have an interest in the use of the name that has been reserved for the applicant; and 


(ii) any person to whom a notice is required to be given in terms of subparagraph (i) may apply to the Companies Tribunal for a determination and order in terms of section 160; or 


(b) section 11(2)(d)-


(i) the Commission may refer the application and name reservation to the South African Human Rights Commission; and 


(ii) the South African Human Rights Commission may apply to the Companies Tribunal for a determination and order in terms of section 160. 


(4) A name reservation continues for a period of six months from the date of the application, and may be extended by the Commission for good cause shown, on application by the person for whom the name is reserved together with the prescribed fee, for a period of 60 business days at a time.




(5) A person for whom a name has been reserved in terms of subsection (2) may transfer that reservation to another person by filing a signed notice of the transfer together with the prescribed fee. 


(6) If the Commission reasonably believes that an applicant in terms of subsection (1), a person to whom a reserved name is to be transferred, or a person for whom a name is reserved, may be attempting to abuse the name reservation system for the purpose of selling access to names, or trading in or marketing names, the Commission may issue a notice to that person- 


(a) requiring the person to show cause why that name should be reserved or continue to be reserved, or why the reservation should be transferred; 


(b) refusing to extend a name reservation upon its expiry; 


(c) refusing to transfer a reserved name; or

(d) cancelling a name reservation.

…

(9) Any person may on application on the prescribed form and on payment of the prescribed fee apply to the Commission to-

(a) register any name as a defensive name for a period of two years; or 


(b) renew, for a period of two years, the registration of a name as a defensive name, 


in respect of which he or she has furnished proof, to the satisfaction of the Commission, that he or she has a direct and material interest.

4.3         Section 160 of the Act deals with disputes concerning reservation or registration of company names and enunciates the jurisdiction of the Companies Tribunal as follows:

(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; 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.”

5.    EVALUATION

5.1         In terms of section 12(2) of the Act, Respondent must reserve the name as applied for by the Applicant unless:

(a) the applicant is prohibited in terms of section 11(2)(a) from using the name as applied for; or

(b) the name as applied for is already reserved in terms of this section.

It is clear that if the name “Crossover Engineered Solutions” is not the same as the other name in the register, CIPC must reserve the name.

5.2         In terms of section 12(3) of the Act, Respondent can object only once it has reserved the name “Crossover Engineered Solutions”, if it has reasonable grounds for considering that the name may be inconsistent with the requirement of section 11(2)(b) or (c). Respondent can thereafter, by written notice, request the Applicant to serve a copy of the application and the name reservation on any particular person or class of persons’ name in the notice, on the grounds that the person/s may have an interest in the use of the name that has been reserved for the Applicant. Any person to whom a notice is required to be given may apply to the Tribunal for a determination and order in terms of Section 160(3) of the Act.

5.3         What is “confusingly similar” in section 11(2)(b) has to be examined carefully to determine whether this is in fact so. When referring to the case law on the subject, it is trite that it must be as alike in a manner that will confuse the reasonable person, i.e. the “ordinary reasonable careful man, i.e. not the very careful man nor the very careless man” (Link Estates (Pty) Ltd v Rink Estates (Pty) Ltd 1979 (2) SA 276 (E) at 280).

5.4         This reasonable man (person) should further be qualified as in Reckitt & Colman SA (Pty) Ltd v SC Johnson & Son SA (Pty) Ltd 1993 (2) SA 307 (A) at 315F-G: “A rule of long standing requires that the class of persons who are likely to be the purchasers of the goods in question must be taken into account in determining whether there is a likelihood of confusion or deception.”

5.5         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.” 


6.    FINDINGS

6.1         In light of the above, I find that Respondent erred in refusing the reservation of the name “Crossover Engineered Solutions.”

6.2         Respondent’s recourse is to reserve the name as applied for, and issue a notice requiring Applicant to serve a copy to any person or entity whose name is mentioned in the notice, allowing the latter to oppose the reserved name.

6.3         The person or entity cited in the notice will then have three months within which to file a name dispute with this Tribunal, on the ground that the approved name is confusingly similar to its already registered name.

7.    ORDER

7.1      The application for an order to set aside Respondent’s decision is granted in that Respondent is obliged to reserve the name “Crossover Engineered Solutions" in favour of the Applicant.

7.2       Respondent is directed to furnish Applicant with a notice of reservation within fifteen business days from the date of this order.

___________________________

ADV. ISHARA BODASING

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