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SAFLII Note: Certain personal/private details of parties or witnesses have been redacted from this document in compliance with the law and SAFLII Policy

IN THE COMPANIES TRIBUNAL REPUBLIC OF SOUTH AFRICA

 

Case No. CT01274ADJ2023

 

 

In the matter between:

 

UNITRANS SUPPLY CHAIN SOLUTIONS (PTY) LTD  APPLICANT

(REGISTRATION NO. 19[....]07)

 

And

 

CRYSTAL LOGISTICS (PTY) LTD                                 FIRST RESPONDENT

(REGISTRATION NO. 20[....]07)

 

COMMISSIONER OF THE COMPANIES                       SECOND RESPONDENT

AND INTELLECTUAL PROPRIETY

COMMISSION

 

Presiding Member of Tribunal: Normagcisa Cawe

Order delivered on 5 May 2023

 

 

DECISION: Reasons and Order

 

 

THE PARTIES

 

[1]    This is an application brought in terms of Section 160 of the Companies Act No. 71 of 2008 (“the Act”) for an order confirming that the company name of CRYSTAL LOGISTICS (PTY) LTD with the Registration Number 20[....]07 does no satisfy the requirements of Section 11 of the Companies Act and that the First Respondent be directed by the Tribunal to choose a new name, as provided for in Section 160(3)(b)(ii) of the Act.

 

[2]    The Applicant is UNITRANS SUPPLY CHAIN SOLUTIONS (PTY) LTD, a private company duly incorporated in the terms of the Companies Act, with the registration number 19[....]07, and having its registered address at 3rd Floor, Building 2, The Views, Founders Hill Office Park, 16 Centenary Street, Modderfontein, Gauteng, 1645.

 

[3]    The First Respondent is CRYSTAL LOGISTICS (PTY) LTD, a private company duly incorporated in the terms of the Companies Act, with registration number 20[....]07 and having its registered office address listed as 200 Gropius Street, Die Hoewee, Centurion, Gauteng, 0157.

 

[4]    The Second Respondent is the COMMISSIONER OF THE COMPANIES AND INTELLECTUAL PROPRIETY COMMISSION (“CIPC”), appointed in terms of Section 169 of the Companies Act, who is cited in an official capacity as the person responsible for the function of the Commission in terms of the Companies Act.

 

[5]    No cost order is sought against the Second Respondent, save in the event of the Second Respondent opposing this application.

 

ISSUES TO BE DECIDED

 

[6]    The issues to be decided in the instant case are whether the First Respondent’s name infringes Section 160(1)(2)(b) and Section 11(2) of the Act.

 

BACKGROUND TO THE DISPUTE

 

[7]    In her founding Affidavit, in support of the present application, Chris- Mari Beegte (Beegte) the assistant company director of KAP Industrial Holding, a subsidiary of the Applicant makes several averments which set out the main business of CRYSTAL COOL LOGISTIX. Crystal Cool Logistics is a brand of the Applicant. It is a logistics company which supplies transportation and logistics services to various industrial sectors of South African and African markets. It has a fleet of 120 (one hundred and twenty), vehicles in every region in Southern Africa.

 

[8]    Beegte avers further that in October 2021 the Applicant was alerted by its attorneys of the existence of the First Respondent. As the Applicant was concerned by the fact that the First Respondent’s company name, CRYSTAL LOGISTICS is very similar to the Applicant’s registered CRYSTAL COOL LOGISTIX trade mark, the Applicant instructed its attorneys to deal with the matter. Applicant’s attorneys sent a letter of demand, via email, to the First Respondent on 21 October 2021, highlighting the infringement and requesting the First Respondent to voluntarily apply to the CIPC to change its name to one that does not consist of or contain the Applicant’s company name.

 

[9]    Mr Mzimakwe, a director of the First Respondent indicated that the name CRYSTAL LOGISTICS, would not be changed.

 

[10]  The Applicant filed an objection to the use of “CRYSTAL” in the name of the First Respondent with the Tribunal on 21 February 2023 on form CTR 142 together with a Founding Affidavit by Beegte, as prescribed by Regulation 142 (1)(a) and (1)(b) respectively.

 

[11]  The Applicant submits that the First Respondent’s name CRYSTAL LOGISTICS (PTY) LTD is confusingly similar to the trademark of the Applicant’s subsidiary CRYSTAL COOL LOGISTIX.

 

[12]  According to the Applicant the reputation and goodwill attached to the CRYSTAL COOL LOGISTIX trade mark is an asset of considerable commercial value and importance to the Applicant. Therefore any unauthorized use of its trade mark, or one which is confusingly similar to it, is detrimental to this asset and to the business of the Applicant, in terms of Section 160 (2)(b) of the Companies Act.

 

[13]  A copy of the stamped application for relief, with the accompanying documents, was served on the First Respondent on the 27 February 2023 by the sheriff of the Court by affixing same to the main gate of the First Respondent.

 

[14]  Service on the Second Respondent was effected on the 2 March 2023 by email and receipt thereof was acknowledged on the same date.

 

[15]  First Respondent did not file an answering affidavit within 20 (calendar) business days, as stipulated in Regulation 143(1) of the Regulations, following which the Applicant applied for a Default Order in terms of Regulation 153.

 

[16]  Form CTR 145, dated 17 May 2023 was filled with the Tribunal on the same date.

 

[17]  Shane Peter Moore, the Managing partner at Moore Attorneys Inc., situated at Cedar Tree Office Park, First Floor, lock A, Corner Cedar Road and Stuckwood Ave, Fourways, Gauteng, deposed to an affidavit in support of the default application on 17 May 2023.

 

[18]  The Applicant seeks the following Default Order:-

 

i.    Directing the First Respondent to change its company name to one which does not incorporate the CRYSTAL COOL LOGISTIX trade mark, or any other trade marks/words that is confusingly or deceptively similar thereto;

ii.    In the event that the First Respondent fails to comply with the order set out in paragraph 5.9.1 above within 3 months from the date of the order, directing the Second Respondent, in terms of Section 160(3)(b)(ii) read with Section 14(2) of the Companies Act, to change the name of the First Respondent to on that does not incorporate the Applicant’s CRYSTAL COOL LOGISTIX trade mark;

And

iii.   Granting the Applicant further and /or alternative relief.

 

APPLICABLE LAW

 

[19]  In order to determine whether there is a trademark infringement in the instant Case one has to consider the provisions of Sections 11 and 160 of the Act.

 

[20]  Section 11(2) of the Act is primarily about protection against infringement of a registered company name or trademark, and the applicable sections reads as follows:

 

“Section 11(2): The name of the company must:

 

a)   Not be the same as;

 

(i)     The name of another company, domesticated company, registered external company, CC 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), or as a business name in terms of the Business Names Act, 1960, unless the registered user of the that defensive name or business name has executed the necessary documents to transfer the registration in favour of the company.

(iii)    A registered trademark belonging to a person other that the company, or mark in respect of which an application has been filed in the Republic for registration as a trademark or a well-known trademark as contemplated in Section 35 of the Trade Marks Act 1993, unless the registered owner of the mark has consented in writing to the use of the mark as the name of the company; or

(iv)   A mark, word, expression the use of which is restricted or protected in terms of the Merchandise Marks Act, 1941, except to the extent permitted by or in terms of that Act;

 

b)   Not be confusingly similar to a name, trademark mark, word or expression contemplated in paragraph (a) unless-

 

(i)   in the case of names referred to in paragraph (a)(i), 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 referred to in paragraph P(a)(ii), 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 or mark referred to in paragraph (a)(iii), the company is the registered owner of the business name, trade mark or mark, or is authorised by the registered owner to use it; or

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

 

c)   not falsely imply or suggest, or be such as would reasonably mislead a person to believe incorrectly, that the company;”

 

[21]  Section 160 which reads as follows:

 

“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, 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; and

(b)  may make an administrative order directing:

 

(i)   the Commission to:

 

(aa) reserve a contested name, or register a particular defensive name that had been contested, for the applicant;

(bb) register a name or amended name that had been contested as the name of a company;

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

(dd) transfer, or cancel the transfer of, the reservation of a name, or the registration of a defensive name; 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.”

 

Regulation 153 provides default orders:

 

(1) “If a person served with initiating document has not filed a response within the prescribed period, the initiating arty may apply to have the order, as applied for issued against that person by the Tribunal.”

 

EVALUATION OF EVIDENCE

 

[22]  I am convinced that the Applicant has made out a case for the main application to be considered on a default basis and I now proceed to deal with the merits of the case.

 

[23]  The Applicant submitted, correctly in my view, that the dominant and memorable part of the First Respondent’s company name is identical to the Applicant’s trademark and is therefore confusingly and deceptively similar to the Applicant’s registered trademark and is in contravention of Section 11(2)(b) and (c)(i) of the Act. The Tribunal’s view is that permitting the First Respondent to keep the name CRYSTAL LOGISTICS in its company name will create confusion.

 

[24]  The question has to be asked whether the First Respondent’s name is confusingly similar to that of the Applicant, moreover, would third parties confuse the First Respondent as part of or a subsidiary to the Applicant. The answer, I believe, would be in the affirmative.

 

[25]  It is my view that, although spelt differently, “LOGISTICS” and “LOGISTIX”, to the fleeting reader thereof, the two are deceptively similar in pronunciation that one would mistake the First Respondent to be associated with the Applicant. I submit that phonetically “LOGISTICS” and “LOGISTIX” sound the same. Thus would cause confusion to ordinary members of the public. In ADIDAS and another v PEPKOR Retaining United. (187/12) [2015] ZASCA (28 February 2013) at paragraph 28 it was held that; “Similar” in Section 11(2)(b) would be “having a marked resemblance or likeness” and that the offending name should immediately bring to mind the well-known trade mark or other name”. The test for “confusingly similar” is, as in the case of passing-off.”…a reasonable likelihood that ordinary members of the public, or a substantial section thereof, may be confused or deceived into believing that goods or merchandise of the former are the goods or merchandise of the letter or are connected therewith. Whether there is such a reasonable likelihood of confusion or deception is a question of fact to be determined in light of particular circumstance of the case”.

 

[26]  Another factor which favours the Applicant is that, according to the CIPC register, it was registered in 2007. That was more than a decade before the First Respondent was registered in October 2019. CRYSTAL COOL LOGISTIX, was a recognisable, documented and established brand in the logistics market by the time the First Respondent entered the logistics market. To the ordinary reasonable member of the public, I submit, would be easy to associate the latter CRYSTAL LOGISTICS (Pty) Ltd with CRYSTAL COOL LOGISTICS.

 

CONCLUSION

 

[27]    I have found that the Applicant has shown that the First Respondent has transgressed Section 11 (2)(b) and (c) of the Act. Its name is confusingly similar and falsely implies, or could reasonably mislead a person to believe incorrectly, that the First Respondent is part of, or associated with the CRYSTALCOOL LOGISTICS, a subsidiary of the Applicant. Hence Applicant is entitled to the Default Order in terms of Section 160 of the Act.

 

ORDER

 

[28] 

 

28.1   An order is made in terms of Section 160(3)(b)(ii) that the First Respondent change its name to one which does not incorporate the name CRYSTAL.

 

28.2   This order must be served n the First Respondent by the Tribunal’s Recording Officer (Registrar)

 

28.3   First Respondent is hereby ordered to change its name within 60 (sixty) calendar days of date of receipt of this order and to file a notice of amendment of its Memorandum of Incorporation.

 

28.4   There is no cost order since the matter was not opposed.

 

28.5   The Registrar of CIPC is directed to inform the First Respondent forthwith of the decision of the Tribunal and to ensure that the name is changed within the requisite time period as aforesaid in 28.3; and to invite First Respondent to file an amended Memorandum of Incorporation using a satisfactory name.

 

 

N CAWE

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