IN THE COMPANIES TRIBUNAL OF SOUTH AFRICA, PRETORIA

CASE NO: CT012DEC2017

In the matter between:

AMKA PRODUCTS (PTY) LTD                                                                                       Applicant

And

AMKA PANEL (PTY) LTD                                                                                    First Respondent

AMKA PAINT (PTY) LTD                                                                                 Second Respondent

CIPC                                                                                                                       Third Respondent

Coram: Tootla K.

Decision handed down on: 25 April 2018

DECISION

INTRODUCTION :

[1] The Applicant applies in terms of section 160 of the Companies Act 71 of 2008 (“Act”) and Regulations 143 and 153 of the Companies Act (GNR 351 of 265 April 2011) (“Regulations”) for a default order that the First and Second Respondent respectively be ordered to change its name, Amka Panel and Amka Paint, because it does not comply with section 11(2) (b) and (c) of the Companies Act.

[7] The Applicant is the registered proprietor of the trademark “AMKA logo” and “Amka Germ Remove”, all containing the word “AMKA”, in categories 5. 42, 35 and 3 respectively in terms of the Trade Marks Act No. 194 of 1993 registered s ince 1987, 1994 and 2011 respectively.

[8] The Applicant became aware that the First and Second Respondent’s company is registered with a name that contains the word “AMKA” in April 2015.

[9] The Applicant filed an objection to the use of the words “AMKA” incorporated in the name of the First and Second Respondent with the Companies Tribunal on 18 December 2017 on form CTR 142 as prescribed by regulation 142 (1) (a), together with a supporting affidavit by Ismail Aboobaker Kalla, a director of the Applicant, who was duly authorised by virtue of a board resolution.

[10] The copy of the application was served on the First and Second Respondents by the Sherriff of the Eastern Cape on 11 January 2018, by being pinned on the principal do or in terms of Rule 4 (1) of the High Court Rules as there was no other form of service, within 5 days of filing it with the Companies Tribunal as required by Regulation 142 (2).

[11] On 29 January 2018, the Applicant served the Application in terms of Section 160 on the Respondent’s legal representatives Abigail Ronal-Louw. Ms. Louw who subsequently acknowledged receiving the application. She advised she was meeting with the representative of the Respondent on the same day to discuss the matter. No further correspondence has been received from her nor from the First and Second Respondent.

[12] In view of the fact that the First and Second Respondent had until 26 February 2018 to file and serve their answer to the Applicant’s application, and no response has been received by that date, nor have they filed opposing papers with the Tribunal, the Applicant proceeded under cover of form CTR 145 to request default judgment against the Respondents, to direct them to choose names which do not consist of or incorporate a mark which is confusingly similar or deceptively similar to the Applicant’s AMKA trademark.

[13] Applicant claims statutory and common law rights in the word AMKA; widespread and extensive use thereof nationally as well in more than 35 countries on the African continent and having conducted business since the 1950’s. Mr. Kalla describes the substantial goodwill and reputation of the Applicant and that of a number of associated companies under the AMKA group of companies which utilise the mark AMKA in terms of oral licenses with the Applicant in furtherance of the Applicant’s objectives and growth.

[14] The Applicant contends that it has spent a considerable amount of time, money and effort in advertising, marketing and promoting the AMKA name and trademark in Africa and internationally over many decades. The applicant also has a website www.amka.co.za. Applicant contends that its rights in its registered trademarks gives it the right to prevent others from using it in the course of trade, especially in relation to goods similar or identical to its goods as it would lead to a likelihood of confusion and /or deception arising.

[15] Applicant also contends that the main and prominent feature of the First and Second Respondent’s company name is word “AMKA” which incorporates the ‘AMKA’ trademark and that it is visually and phonetically identical to the Applicant’s well- known trademark ‘AMKA’. The reference to PANEL and PAINT incorporated in the names of the First and Second Respondents respectively, are descriptive and do not serve to distinguish the parties’ names and may be perceived as a variation of the Applicant’s business. It is contended also that the mark AMKA in their names draws immediate association with the Applicant which may likely deceive the public into believing that there exists a connection between the Applicant and First and Second Respondent, when in fact no such connection exists.

[16] Since the Applicant has no control over the quality of the products or services, Applicant contends that the First and Second Respondent’s name is therefore confusingly and deceptively similar to the Applicants’ registered trademark AMKA and is in contravention of Section 11(2)(b) and (c)(i) of the Act.

APPLICABLE LAW

[17] Section 11 (2) of the Act, in so far as it is relevant, provides: “(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;

(ii)  a name registered for the use of a person, other than the company itself or a person controlling the company, as a defensive name in terms of section 12 (9), as a business name in terms of the Business Names Act, 1960 (Act No. 27 of 1960), unless the registered user of that defensive name or business name has executed the necessary documents to transfer the registration in favour of the company;

(iii) a registered trade mark belonging to a person other than the company, or a mark in respect of which an application has been filed in the Republic for registration as a trade mark or a well-known trade mark as contemplated in section 35 of the Trade Marks Act, 1993 (Act No. 194 of 1993), unless the registered owner of that mark has consented in writing to the use of the mark as the name of the company; or

(iv) a mark, word or expression the use of which is restricted or protected in terms of the Merchandise Marks Act, 1941 (Act No. 17 of 1941), except to the extent permitted by or in terms of that Act;

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

(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;

EVALUATION:

[18] In terms of Section 160(2) (b) any person may at any time bring an application on good cause shown. According to the dictum of Twala, J. in the Highly Nutritious Food Company (Pty) Ltd vs Companies Tribunal and Others (GLD) Case No. 91718/2016, it was held that Section 160 (2)(b) does not refer only to the delay in bringing the application but also to show good cause as to why the application must be entertained; but that the Applicant must furnish a reasonable explanation as to why the application should be entertained on its merits by the Tribunal; as well as a reasonable explanation for the delay in bringing the application. The Applicant albeit the delay of more than a year has given a reasonable explanation as to the delay as well as justified the merits as to why the application should be entertained after more than a year.

[19] Although section 160 of the Act is there to protect the interests of companies registered and their creditors, the CIPC records indicate that both the First and Second Respondents are in the process of deregistration.

[20] I now deal with the merits of the matter and issue of the trademarks. The Applicant is of the view that the use of the AMKA trademark by the First and Second respondents amounts to an infringement in terms of Section 34. However, if one examines Section 11 (2) (a) (iii) it is clear that it refers to a well- known trade mark as contemplated in Section 35 of the Trade Marks Act 1993. The Applicant has however mentioned and explained that its trademarks are well –known but has not referred to Section 11(2) (a) (iii) in justifying its claim.

[21] It is important to point out that unlike section 35 of the Trade Marks Act (which is descriptive of a well-known trade mark and does not raise a separate cause of action in terms of the Act) that has been incorporated by reference to section 11 of the Act, section 34(1) (a), (b) or (c) of the Trade Marks Act has not been incorporated by reference into the Act and does not constitute a part of the Act. An allegation of an infringement of a registered trade mark in terms of section 34(1) of the Trade Marks Act, therefore, constitutes a separate cause of action.

[22] Section 34(3) of the Trade Marks Act provides further that where a trade mark registered in terms of the Trade Marks Act has been infringed, any High Court having jurisdiction may grant the proprietor relief. The Tribunal, accordingly, does not have the jurisdiction to make a finding that there has been an infringement of a registered trade mark in terms of section 34(1) of the Trade Marks Act.>