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IN THE COMPANIES TRIBUNAL OF THE REPUBLIC OF SOUTH AFRICA

 

“The Tribunal”

 

Case Number: CT00856ADJ2021

 

In the matter between:

 

AXA                                                                              Applicant

 

AND

 

AXA FINANCE CORPORATION CC                          First Respondent

 

(Registration Number: 20004/017382/23)

 

COMPANIES & INTELLECTUAL PROPERTY         Second Respondent

COMMISSION

 

 

DECISION

 

 

INTRODUCTION:

 

[1]        The Applicant is AXA, A French company having its registered office at 2 - 4 Rue Jules Lefebre Paris, 75009 France.

 

[2]        The First Respondent is AXA Finance Corporation CC, a corporation incorporated in terms of the Close Corporations Act 96 of 1984, having its registered address at VNV Plaza, 272 Pretoris Avenue, Randburg, Gauteng.

 

[3]        The Second Respondent is the Companies and Intellectual Property Commission ( CIPC), established by the Companies Act 71 of 2008 as a juristic person to function as an organ of state.

 

[4]        This is an application in terms of which the applicant opposes the registration of the name of the first respondent, AXA Finance Corporation CC, in terms of sections 11 and 160, read with Regulation 153 of the Companies Act (" The Act"). The applicant is seeking a determination by the Tribunal in respect of its objection to the registration of the name AXA Finance Corporation CC and seeks the following relief:

 

4.1   that the first respondent' s name does not comply with sections 11( 2)( b)( iii) and 11( 2)( c)( i) of the Act;

4.2   that the first respondent is directed to choose a name which does not consist of, or incorporate, the mark AXA, or any other mark which is confusingly and/ or deceptively similar to the applicant' s AXA t rade mark;

4.3   that the second respondent, in terms of section 160( 3 )( b)( i i) read with section 14( 2) of the Act be directed to change the name of the first respondent to it registration number, in the event

of the first respondent not complying with paragraph 4. 2 above within 60 days from the date of the order by the Tribunal; and

4.4   an order as to costs in favour of the applicant should the first respondent oppose the relief sought.

 

Submissions by Applicant

 

[5]        The Applicant, represented herein Dale Timothy Healy, an attorney and partner at Adams and Adams law firm, which is authorised to act on behalf of the applicant in terms of Adams and Adams' mandate recorded in the Power of Attorney dated 19 October 2021 filed together with the founding affidavit of Alexandra Salanson, the applicant' s Head of Mergers and Acquisitions Group Legal, as required by Regulation 142[1]. On 05 November 2020, the applicant' s attorneys received instructions to formally object to the first respondent' s company name AXA Finance Corporation CC. On the 12th November 2020, Mr Healy sent a letter of demand to the first respondent calling on it to cease using the name AXA Finance Corporation CC, and to undertake to make an application to change it s name to one not including the trade mark AXA or any confusinlgy similar mark. Subesquent follow ups were made from December 2020 until 25 June 2021, to no avail. On the 10th March 2021, the applicant' s attorneys caused a letter to be delivered by the Sheriff making the same demands as in the previous communications. The Sheriff' s return of non- service stated that the registered address is in fact a Multichoice call centre. The first respondent did not respond to the demand and on 19 July 2021, Mr Healy was instructed by the applicant to prepare the application in terms of sections 11( 2) and 160 of the Act, having exhausted all reaonable options in attempting to resolve the matter amicably. On 12 November the Sheriff randburg South West served a copy of the application for relief, together with supporting affidavits, on the first respondent at its registered address, by affixing a copy of the application to the principal door [2]. The first respondent had until 10 December 2021 to respond to the application and did not do so. On the 15 November 2021, a copy of the application for relief, together with supporting affidavits, was served electronically on the second respondent, and an acknowlegdment of receipt was sent on the same day by the second respondent [3].

 

[6]        In this regard, I am satisfied that the application for relief was adequately served by the applicant' s attorneys upon the fi rst and second respondents. I am further statisfied that there was procedural compliance with the Act, with regar ds to the fi ling of the application for relief and this application for default judgement.

 

Jurisdiction

 

[7]        The applicant has submitted that it is the proprietor of the AXA trademark, registered under various classes of goods and services, including amongst others, insurance services, monetary affairs and real estate affairs, communication and telecommunication. The applicant also has a pending South African trade mark application for the AXA trademark, fi led on 01 February 2021 covering insurance and finance industries. The applicant is a French mutlinational fi rm founded in 1806, with operations in 54 countires globally. The applicant also provides investment management and other financial services as well as employs 153 000 people who service approximately 105 million clients worldwide. I t has sponsored Liverpool Football Club since 2018, aiming for global brand visibility and raising AXA' s profile among sports fans around the world. The applicant submitted that it has rights in the AXA mark arising from its earlier trade marks registrations, its pending registration and its reputation through acquired use and fame, and argues that the dominant feature of the respondent' s name AXA, is identical to the applicant' s trade mark, and that the words Finance Corporation are purely descriptive and cannot serve to distinguish the first respondent from the applicant' s trade mark. The applicant argued that on the contrary, these words increase the likelihood of confusion in that they describe the very services for which the applicant' s AXA trade mark is registered and well known, being financial services. The applicant further submitted that the use of the name/ mark AXA Finance Corporation by the Respondent will result in confusion in the market as members of the public are likely to believe that the services offered by the first respondent are those of the applicant or that the first respondent is affiliated or associated with the applicant, which is not the case, and that the use of the trade mark amounts to trade mark infringement in terms of section 34( 1)( a) of the Trade Marks Act in that the first respondent is using or purposes to use, in the course of trade and in relation to the services in respect of which the applicant' s AXA mark is registered, a name or mark so nearly resembling the applicant' s trade mark that is likely to deceive and/ or cause confusion. Alternatively, the applicants submitted that the use of the first respondent' s name in trade amounts to the use of a name that is confusingly and/ or deceptively similar to the applicant' s registered trade mark in relation to services that are so similar to those in respect of which the AXA trade mark is registered that, in such use, deception or confusion is likely to arise, and therefore, the fist respondent' s name, the applicants submitted, is contrary to the provisions of section 11( 2)( b)( ii i) and 11( 2)( c)( i ) of the Act, in that it is confusingly similar to a trade mark belonging to the applicant and in that it would reasonably mislead a person to believe incorrectly that the first respondent is part of or associated with the applicant.

 

[8]        I note the reference of the applicant to the Comair Limited v Kulula South Africa ( Pty) Ltd & Others decision of the High Court of South Africa, Gauteng division under case no. 65895/ 2019, wherein the court authorised the CIPC to change the name of a company to its registration number, and further found that the Companies Tribunal is empowered to make an administrative order directing the CIPC to change the name of a company to its registration number, upon failure of the relevant company to change its name in accordance with an order made by the Tribunal. However, I am unable to proceed to decide on the merits of the case without first dealing with whether the Tribunal in fact does enjoy jurisdiction to make a decision on this application. The applicant has submitted that although the Companies Act of 1973 and Close Corporations Act of 1984 have been repealed, the decisions of the High Court, decided under these statutes dealing with the grounds of ' undesirability' and ' calculated to cause damage' are still of relevance to matters under section 160, read with section 11 of the current Companies Act. S. 160 ( 1) provides that 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 ( s 11). Section 160 ( 2)( b) further provides that an application in terms of subsection 1 above, may be made on good cause shown at any time after the date of reservation or registration of the name that is the subject of the application, in any other case. Section 160( 3) provides for the powers of the Tribunal where subsections ( 1) and ( 2) have been satisfied. I t provides as follows:

 

“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 ( s. 11); and

(b)  may make an administrative order directing-

 

(i)  The Commission to-

 

( cc) cancel the reservation of a name, or the registration of a defensive name.

(ii)  a company to choose a new name, and file a notice of 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.”

 

[9]        The applicant has sought a determination in terms section 160 on the basis that the first respondent' s name contravenes against the provisions of section 11, particularly sections 11( 2)( b) ( i i i) and ( 2)( c)( i) , which sections provide:

 

S. 11(2)( b)( i i i)- " The name of a company must not be the same as... a registered trade mark belonging to a person other that the company, or a mark in respect of which an application has been f i led in the Republic for registration as a trade mark or well - known trade mark as contemplated in section 35 of the Trade Marks Act, 1993 ( Act 194 0f 1993), unless the registered owner of that mark has consented in writing to the use of the mark as the name of the company. S.11(2)( c)(i)- " the name of a company must not falsely imply or suggest, or be such as would reasonabley mislead a person to believe incorrectly, that the company is part of or associated with, any other person or entity.  ".

 

The applicant has cited various decisions on name disputes based on the repealed Acts, which all precede the coming into effect of the Companies Act, 2008, in which this particular application is based. There is no confusion to the fact that the first respondent was registered in the year 2004, in accordance with the Close Corporations Act, and there is no confusion as well that the Act in which this application is lodged came into effect on 01 May 2011, some seven years after the first respondent was registered. The Companies Act of 2008 became of force and effect with effect from 01 May 2011 and has no retrospective applicability [4]. There is no provision of the Act where it expressly stipulates its retrospective applicability, and certainly not the provisions which form the basis of this application and in which the applicant seeks relief, and therefore this application is not covered by the provisions of the Act on account of the fact that the first respondent was registered prior to the coming into operation of the Act.

 

FINDINGS

 

[10]     The Tribunal does not have jurisdiction in terms of the Companies Act, to grant the relief sought by the applicant against the first and second respondents. The adjudicative powers of the Tribunal must be exercised in line with the provisions of the Companies Act, sections 11 and 160 of the Act do not apply to the current name objection application. The application therefore fails on that basis.

 

ORDER:

 

[11]     The application is dismissed.

 

 

B. Zulu

02 February 2022

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