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THE COMPANIES TRIBUNAL

Of

THE REPUBLIC OF SOUTH AFRICA

 

Case Number: CT007Jul2019

 

 

In the matter between:

 

ALUGLASS BAUTECH (PTY) LTD                                  Applicant

 

Registration number: 1989/000008/07

 

and

 

PSM TECH ALUGLASS (PTY) LTD

 

Registration number: 2014/209621/07                           First Respondent

 

AND

COMMISSIONER OF THE COMPANIES AND

 

INTELLETUAL PROPERTY COMMISSION                     Second Respondent

 

 

Presiding Member of the Companies Tribunal: Lucia Glass

 

 

DECISION (Reasons and Order)

 

 

1)       This is an Application in terms of Section 160 of the Companies Act 71 of 2008 (the Act). The basis of this Application is that the First Respondent’s name, PSM TECH ALUGLASS offends against the provisions of Section 11 of the Act by incorporating a name that is confusingly similar, to the Applicant’s various ALUGLASS trademarks.

2)        The Applicant requests the Tribunal to make a determination and an order that the First Respondent should change its name, as provided for in Section 160 of the Act and in the event that the First Respondent fails to comply with the order as aforementioned within 3 months from the date of the order, that the Second Respondent be directed, in terms of Section 160(3)(b)(ii) read with section 14(2) of the Act, to change the First respondent’s name to is registered company number being 2014/209621/07 as the First Respondent’s interim company name on the Companies register.

 

3)           The Deponent to the Applicant's papers is Marcus Sebastian Baptist, who avers that he is the Financial Director of the Applicant and is responsible, inter alia, for the finances, assets, statutory returns, human resources, royalties occupational health and safety, and the intellectual property of the Applicant. He states that he has held this position since 2013 and that a resolution was passed by the board of Directors, for him to institute these proceedings.

 

4)        On the 18th of July 2019 this Application was filed with the Tribunal and on the 19th of July 2019 it was served on the First Respondent’s registered office address. The First Respondent has to date not entered a responding affidavit. Settlement negotiations were entered into, without success, resulting in the delay of the set down of the Default judgment proceedings. Subsequently this Application was properly served on the First Respondent and to date, the First Respondent has not deemed it necessary to defend this Application.

 

5)       The First Respondent Company was registered in 2014 and the Applicant’s various Trademarks were registered in and around 1989. Thus the First Respondent Company, was registered after the Applicant’s Trademarks were registered. In other words the Trade Marks were registered first.

 

6)        It is averred that the Applicant has operated in South Africa for more than 40 years and has a widespread and long term use of its ALUGLASS trade mark, which has acquired a substantial goodwill and reputation.

 

7)        It is averred that the word ALUGLASS is a coined term and is inherently distinctive of the Applicant. Further that the word ALUGLASS does not appear in the English dictionary, and this confirms that the word is not descriptive and/or in common use. It is submitted further that the word ALUGLASS is closely and exclusively associated with the Applicant as a direct result of the Applicant’s extensive, widespread and long term use of its ALUGLASS trade mark.

 

8)           It is averred that the First Respondent’s name is confusingly similar to the Applicant’s trademarks and would reasonably mislead a person to incorrectly believe that the First Respondent is part of or associated with the Applicant.

 

9)        APPLICABLE LAW

 

Section 11 (2) (a) and (b) of the Act

 

"Sec 11 (2) The name of a company must—

 

(a)      not be the same as, or confusingly similar to—

 

(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); 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 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;"

 

10)          The Applicant seeks remedies in terms of Section 160 which reads as follows:

 

"Part B

 

Rights to seek specific remedies

 

Disputes concerning reservation or registration of company names. Section 160.

(1)            A person to whom a notice is delivered in terms of section 12(3) or section 14(3) 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 satisfies the requirements of section 11.

(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 satisfies the requirements of

section 11; and

(b)            may make an administrative order directing—

 

(i)               the Commission to—

 

(aa) reserve a contested name for the applicant in terms of section 12;

(bb) register the contested name, or amended name as the name of a company; or (cc) cancel a reservation granted in terms of section 12, if the reserved name has not been used by the person entitled to it; 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."

 

APPLICATION OF THE COMMON LAW UNDER THE PREVIOUS COMPANIES ACT.

 

11)             In terms of the previous Companies Act, similar cases have been decided in respect of names that are "the same or confusingly similar" and whether the name is able to "falsely imply or suggest, or be such as would reasonably mislead a person to believe incorrectly, that the company is part of, or associated with" another company or trademark. It is my view that it will be useful to look at these judgments even though they are not made in terms of the present Act.

 

12)         In 1948 [1] the courts considered it appropriate to say "the court must not only consider the marks when placed side-by-side but must have regard to the position of a person who might at one time see or hear one of the marks and later possibly with an imperfect recollection of the mark, come across the other mark".

 

13)        In more recent times, 2000 in an unreported judgement [2] the court said: "If one compares the name Kentron which the applicant has used and is still using with the name Kentronics which the first respondent is using, it is clear that there is a visual and phonetic differences. It is however, also obvious that there are similarities. The name Kintronics incorporates the whole of the applicants trading style Kentron."

 

14)        In 2001 the court said: [3] "the decision involves a value judgment and that the ultimate test is whether, on a comparison of the two marks it can properly be said that there is a reasonable likelihood of confusion if both marks are to be used together in a normal and fair manner, in the ordinary course of business".

 

DECISION

 

15)       The Applicant’s trademarks, contain the word ALUGLASS, which is spelt the same way as the First Respondent’s Name which contains the word ALUGLASS. If the Applicant’s trademarks and the First Respondent’s name are compared, there is no doubt in my mind that they are confusingly similar as they all have the  word ALUGLASS, and there will be confusion if the word ALUGLASS, is to be used by the First Respondent, in a normal and fair manner, in the ordinary course of business.

 

16)          It is my view that if members of the public merely look at the names of the different entities, there will be no doubt, that they will be misled by the similarity of the names.

 

17)         Members of the public will be confused or deceived into believing that the business of the First Respondent is linked to, or, associated with that of the Applicant’s trademarks.

 

I proceed to make an order in the following terms;

 

a)      The First Respondent is directed to change its name to one which does not incorporate and is not confusingly and or deceptively similar to Applicant's, ALUGLASS, trademarks.

b)      The First Respondent is to file a notice of an amendment of its Memorandum of Incorporation, within 60 days of receipt of this order in order to change its name as per a) above.

c)      In the event that the First Respondent fails to comply with the order as aforementioned, within 3 months, from the date of the order, that the Second Respondent, be directed, in terms of Section 160(3)(b)(ii) read with section 14(2) of the Act, to change the First respondent’s name to is registered company number being 2014/209621/07 as the First Respondent’s interim company name on the Companies register.

d)      The First Respondent is hereby exempted from the requirement to pay the prescribed fee for filing the notice of amendment contemplated in this paragraph.

e)      This Determination must be served on the First Respondent and the Registrar of Companies and Intellectual Property Commission.

f)        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 determination and administrative order, apply to a court to review the determination.

g) No order as to costs.

 

 

LUCIA GLASS

(MEMBER OF COMPANIES TRIBUNAL OF SOUTH AFRICA)

 

Dated this 29th October 2020

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