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IN THE COMPANIES TRIBUNAL OF THE REPUBLIC OF SOUTH AFRICA

(‘THE TRIBUNAL’)

Case No.: CT004SEP2017

In the matter between:

SYNERGY CHARTERED ACCOUNTANTS CC                                                            Applicant

and

SYNERGY CHARTERED ACCOUNTANT (PTY) LTD                                            Respondent

DECISION

INTRODUCTION

[1] This is an application in terms of section 160 of the Companies Act 71 of 2008 (the “Act”), section 11(2) and read with Regulation 13, 142 and 153 of the Companies Act (GNR 351 of 265 April 2011) (the “Regulations").

[2] The Applicant, in its application dated 14 September 2017 together with the affidavit of Clive Percy Kotzen and annexures, requests the Companies Tribunal (the “Tribunal”) to make an order that the Respondent is directed to choose a new name that is not confusingly similar to SYNERGY CHARTERED ACCOUNTANTS, on a default basis.

PARTIES

[3] The Applicant is SYNERGY CHARTERED ACCOUNTANTS CC with registration number 2009/020330/23, a registered company and having its registered address at Upper Level, 21 West Street, Houghton Estate, Johannesburg.

[4] The Applicant, together with Synergy Chartered Accountants SA (Pty) Ltd, Synergy Tax Experts Pty) Ltd, Synergy Company Statutory Secretarial Services Pty) Ltd and Synergy Illovo (Pty) Ltd form part of the Synergy Group of Corporations.

[5] The Respondent is SYNERGY CHARTERED ACCOUNTANTS (PTY) LTD with registration number 2012/0091435/21, a registered company and having its registered address at 219 Ontdekkers Road, Roodepoort, Johannesburg.

PROCEDURE

[6] Before an Applicant can bring an application for a default order the Applicant must comply with Regulation 142 and Regulation 143 of the Companies Regulations.

[7] In accordance with Regulation 142 of the Regulations, the Applicant is obliged to serve a copy of the application and the affidavit on the Respondent within 5 business days after filing it with the Tribunal.

[8] The Applicant filed the application and supporting affidavit with the Tribunal on 12 September 2017.

[9] The Applicant sent the application to T Nyepa on 14 September 2017 by registered post. A copy of the registered letter was provided to the Tribunal.

[10] With reference to the Disclosure Certificate issued by the Commissioner of Companies & Intellectual Property Commission Tigere Nyepa is listed as the only director of the Respondent. In terms of the certificate his postal and residential address are exactly the same as the Respondent’s registered address.

[11] In light of the above, I am satisfied that the Applicant has effected service.

[12] The Respondent has to date not filed opposing or answering papers.

[13] As a result, the Applicant has brought an application for a default order in terms of Regulation 153(1) of the Regulations.

[14] The Applicant filed an application for a default order with the Tribunal on 31 January 2018.

[15] Finally, Regulation 153(2)(b) of the Regulations also states that the Tribunal may make an appropriate order, if it is satisfied that the notice or application was adequately served.

[16] I am satisfied that the Applicant has effected service of the application on the Respondent.

APPLICANT’S APPLICATION

[17] In support of its application, the Applicant relies on the following grounds of objection against the Respondents name:

[17.1]  The Applicant is registered its name in 2009, while the Respondent registered its name in 2012.

[17.2]  The parties conduct their business in the same industry offering similar services and they are situated in Gauteng.

[17.3]  This has caused public confusion to the detriment of the Applicant.

[17.4]  With reference to section 11(2)(b) of the Companies Act, the Applicant is not connected to the Respondent in any way and the Applicant and Respondent are not part of the same group.

APPLICABLE LAW

[18] The relief the Applicant seeks is in terms of section 160(1) of the Companies Act, which provides for the right to seek specific remedies in respect of disputes concerning reservation or registration of company names and the relevant parts of the section reads:

"… 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.”

[19] It is clear from this section that any person who has an interest in the name of the company can apply to the Tribunal for relief.

[20] Section 160(2) of the Companies Act sets out the prescribed manner and form and reads:

“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.”

[21] The powers for determination of the Tribunal are set out in section 160(3) of the Companies Act and reads:

“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—

(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."

[22] Section 11 provides primarily for the protection against infringement of a registered company name or trademark and section 11(2) lays out the criteria for company names.

[22.1]  Section 11(2)(b) provides that the name of a company must not be confusingly similar to a name, trade mark, mark, word or expression unless

(i)          in the case of names, each company bearing any such similar name is a member of the same group of companies;

(ii)         in the case of a company name similar to a defensive name or to a business name, 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, the company is the registered owner of the business name, trade mark or mark or is authorized by the registered owner to use it;

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

EVALUATION

[23] The Companies Act does not define or explain what is meant by “confusingly similar”. However, there has been several disputes in which elements or other instruments are said to be “confusingly similar” in trademarks as opposed to company names. For example, section 34(2)(g) of the Trade Marks Act 194 of 1993. “Similar” would be “having a marked resemblance or likeness” and that the offending mark (or name) should immediately bring to mind the well-known trademark (or other name).[1] 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”[2]. The Respondent’s name has a marked resemblance or likeness to the Applicants trademark and that the offending name immediately brings to mind the well-known SYNERGY CHARTERED ACCOUNTANT trademark. The full name is therefore similar and consequently confusing.

[24] The Applicant and Respondent are not members of the same group of companies.

[25] The use of SYNERGY CHARTERED ACCOUNTANT in the Respondents name falsely implies or suggests, or a consumer may reasonably be misled to believe incorrectly, that the company is part of, or associated with the Applicant.

FINDINGS

[28] The name SYNERGY CHARTERED ACCOUNTANT (Pty) Ltd is confusingly similar to SYNERGY CHARTERED ACCOUNTANTS CC and that there is a reasonable likelihood of confusion.

ORDER

I make an order in the following terms:

a)         The Commissioner of Companies & Intellectual Property Commission is directed to change the Respondents name to 2012/091435/21.

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

c)         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 Order, apply to a court to Review the Order.

 

____________________________

ADV LIZELLE HASKINS

MEMBER OF THE COMPANIES TRIBUNAL

DATED: 21 FEBRUARY 2018

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