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THE COMPANIES TRIBUNAL OF SOUTH AFRICA

CASE NO: CT010JAN2018

In the matter between:

PWC Business Trust                                                                                                            Applicant

And

PWC Logistics (Pty) Ltd (2003/021906/07)                                                                    Respondent

 

Coram: K. Tootla

4 April 2018

 

DECISION

 

INTRODUCTION

[1] The Applicant applies in terms of section 160 of the Companies Act 71 of 2008 (“Act” / “Companies Act”) and regulations 143 and 153 of the Companies Regulations (GN R351 in GG 34239 of 26 April 2011) ( “regulations”) for a default order that the respondent be ordered to choose a new name within a specified period and file an amendment accordingly; on the grounds that the use of the name “PWC” by the Respondent is in contravention of sections 11 (2) (a); (b)(iii) and (c) (i) of the Companies Act.

[2] The Applicant, is PWC Business Trust, being part of the PWC Group of companies with its registered business address situated at 300 Madison Avenue, New York, 10017, United States of America and having its principal place of its local office in Sunninghill, Sandton, Johannesburg. The Applicant was registered to act as the legal owner of the PWC and PricewaterhouseCoopers names globally, including the trademarks or domain names in relation thereto.

[3] The Respondent is PWC Logistics (Pty) Ltd, a company duly incorporated in terms of the Companies Act 2008, having its registered office at 37 Strand Street, Cape Town.

[4] The Applicant is the registered proprietor of the PWC trade marks in South Africa in Classes 9, 16, 35, 36, 41 and 42 which registered in 1998 in terms of the Trade Marks Act, 1993 (Act No. 194 of 1993) (“the Trade Marks Act”) as can be evidenced by the certificates attached to the founding affidavit.

[5] In essence, the Applicant is seeking a determination by the Tribunal in respect of the registration of the name PWC Logistics (Pty) Ltd, and that an order in terms of section 160(3) (b) (ii) of the Act be made directing that the Respondent chooses a new name, failing which, that the Commissioner of the Companies and Intellectual Property Commission (“CIPC”) changes the name by inserting the registration number of the Respondent.

[6] The Applicant is the proprietor of the trademark “PWC” for a period of approximately 20 years and has been conducting business under that name. The Applicant filed an objection to the name “PWC Logistics” as stated above as prescribed by regulation 142 (1) (a), together with a supporting affidavit as required by regulation 142 (1) (b) by Folio Tonelli, being duly authorised to act for and on behalf of the Applicant, by virtue of a Power of Attorney.

[7] The copy of the application was served by the Sherriff on the Respondent on 29 January 2018, in terms of Rule 4 (1) (a) (v) of the High Court Rules and was filed within the requisite time period with the Tribunal.

[8] In terms of regulation 153 (1) read with regulation 143 (1), the first respondent has 20 days to respond, failing which the Applicant is entitled to apply for a default order as provided for in regulation 153 (1). There has been no response or opposition by to the Application by the Respondent. The Applicant therefore applies to the Tribunal in terms of regulation 153 (2) for a default order in terms of regulation 153 (1).

[9] The Applicant submits that the dominant and memorable feature of the Respondent’s name “PWC Logistics” is the word PWC, which is visually, phonetically and conceptually identical to the Applicant’s PWC trade mark.

The Applicant contends that the remaining portion “Logistics” is insufficient to distinguish the Respondent from the Applicant and in fact increases the likelihood of confusion given that the applicant participates in business activities that is unrestricted (which is evident from the CIPC certificate). Therefore, the addition of the descriptive words “Logistics” to its name encompasses the services for which the Applicant has established an extensive reputation and has registered rights.

[10] In the Applicant’s supporting Affidavit it is alleged that it became aware of the Respondent’s name on 7 August 2017 after the Applicant’s attorneys encountered the Respondent’s name whilst conducting a cursory search of the companies register. Since the Applicant did not receive a notice as mentioned in Section 160 (1), there is no fixed period within which it was obliged to lodge its application on condition that it shows that it did not delay bringing the application. The Applicant indicates it sent out letters of demand to Respondent and that it also investigated the service address of the Respondent. This in itself shows that the Applicant has shown good cause in terms of section 160(2) (b) as to why the current Application was only filed with the Tribunal on 22 January 2018.

 

EVALUATION:

[11] Thus crucial question is whether “PWC” as in the name of the Respondent is in contravention of sections 11(2)(b)(iii) and (c)(i) of the Act as contended by the Applicant. The PWC Logistics (Pty) Ltd as a name of the Respondent is ‘confusingly similar to’ the registered trademarks of PWC as listed above, where the registered owner of the trademarks has not consented to the use thereto; and is such that it would reasonably mislead a person to believe incorrectly, that the Respondent is part of, or associated with, the Applicant.

[12] “PWC” as used by the Applicant is a trading name and is part of the name of the company. The name of the Respondent, “PWC Logistics” is not the same as the name of the Applicant, and therefore there is no contravention of section 11 (2) (a) at all.

[13] However, “similar” as in section 11 (2) (b) 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): Bata Ltd v Face Fashions CC 2001 (1) SA 844 (SCA). 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.

[14] 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 & another v Pepkor Retail Limited (187/12) [2013] ZASCA 3 (28 February 2013) para 28; Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc. and Others 1977 (2) SA 916 (A) at 929. The name of the Respondent which simply has Logistics added to PWC can clearly be confusingly similar to the trademark of the Applicant, which is “PWC”, which is therefore in contravention of section 11 (2) (b) (i).

[15] The Applicant has clearly demonstrated in its papers that it had substantively and significantly used the “PWC” trademark across the world and more particularly in the Republic of South Africa. As a result of the aforementioned use, the particular combination of the “PWC” letters has become a household brand in the financial, auditing, forensic, accounting, consulting and advisory industries and therefore qualifies as a well-known trade mark as set out in the Trade Marks Act. I am therefore satisfied that the Applicant has established the ownership rights in the “PWC” trademarks and further that it is registered to act as the legal owner of the “PwC” and PriceWaterHouseCooper names including any trademarks and domain names in relation thereto globally.

[16] The name of the Respondent ‘PWC Logistics” is therefore confusingly similar to the name or trademark of the Applicant, which is “PWC”. As a matter of fact the name of the Respondent is clearly similar to the trademark of the Applicant, and the Respondent is therefore in contravention of section 11(2) (b) (iii) of the Act.

[17] An enquiry in terms of section 11(2) (c) (i) therefore requires me to determine as to whether the name of the Respondent falsely implies or suggests that the Respondent company is part of or associated with any other person or entity; or be such that the name would reasonably mislead a person to believe that the company is part of or associated with any other person or entity.

[18] The same principles as in respect of section 11 (2) (b) (iii) would also apply in respect of section (2) (c) (i) because in this instance, apart from the requirement that the name must falsely imply, which, it is submitted, requires fault, it can, alternatively also reasonably mislead a person to hold a certain belief. The requirements to “reasonably believe”, should be the same as in Adidas AG & another v Pepkor Retail Limited case supra; Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc. and Others case supra.

In this case, using the name “PWC Logistics” would reasonably mislead a person to believe that the company is associated with “PWC” as PWC is a well-known trademark and that it falsely implies or suggest the Respondent is part of or associated with the Applicant company. The remaining portion of the name increases the confusion given that the applicant’s business activities are unrestricted.

[19] The name of the Respondent, which is “PWC Logistics” therefore falsely imply or suggest that the Respondent is part of or associated with the Applicant and further such would reasonably mislead a person to believe that the Respondent is part of or associated with the Applicant.

[20] As a matter of fact the name of the Respondent is clearly confusingly similar to the trademark of the Applicant, and the Respondent is also in contravention of section 11(2)(c)(i) of the Act (The factors are fully outlined in Plascon-Evans Paints (TVL) Ltd. v Van Riebeck Paints (Pty) Ltd (53/84) [1984] ZASCA 51; [1984] 2 All SA 366 (A); 1984 (3) SA 623; 1984 (3) SA 620))

[21] The name of the Respondent is in contravention of section 11 (2) (b) (iii) and Section 11(2) (c) (i) of the Companies Act.

 

ORDER:

[22] The application is granted. In terms of section 160(3) (b), I hereby make the following order directing the Respondent:

22.1 To choose a new name which does not incorporate any of the Applicant’s registered trademarks, or anything that can be considered to be confusingly thereto and amend its Memorandum of Incorporation accordingly, within a period of 45 (forty five) days from date of this order;

22.2 If the Respondent fails to comply with the Tribunal’s order as outlined above, the CIPC should substitute the Respondent’s registration number in place of ‘PWC Logistics’.

22.3 There is no order with regard to costs.

 

 

k tootla

 

_____________________

K. Tootla

Member of the Companies Tribunal Pretoria

4 April 2018

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