Italtile Franchising (Ltd) (Applicant) vs CTM Plumbers (Pty) Limited (First Respondent) and Companies and Intellectual Property Commission (CIPC) (Second Respondent)
The Applicant applied for default order to the Tribunal in terms of Section 160 of the Act and Regulation 153 of the 2011 Regulations that:
- the First Respondent’s company name, ‘’CTM PLUMBERS (Pty) Ltd’’ does not satisfy the requirements of Sections 11 of the Act, and
- that First Respondent should be directed to change its name as provided for in Section 160 (3)(b)(ii) of the Act.
Brandon Wood, an attorney at ENSafrica, the Applicant’s attorneys, stated in the founding affidavit that they became aware of the existence of the First Respondent in July 2019. The Applicant instructed ENSafrica to address a letter to the First Respondent requesting it to provide the exact nature of its business activities.
Again, on the 30 August 2019, ENSafrica addressed a letter to First Respondent, by courier, to two different registered addresses obtained from the CIPC making the same request as mentioned in the paragraph above, and advising further that it was entitled to lodge a company name objection to the First Respondent’s registration of the company name, CTM PLUMBERS (PTY) LTD. The letters were returned undelivered.
Through ENSafrica, the Applicant learnt, on the 20 October 2019, that the First Respondent was about to be deregistered due to non-filing of returns, but by the 25 May 2020 the First Respondent had filed the returns and was allowed to continue trading. ENSafrica procured the services of a commercial investigator, the investigation revealed that the First Respondent was providing plumbing service in Gauteng’s northern suburbs.
In addition, On the 25 September 2020 ENSafrica addressed an email to the First Respondent supplied by the investigator, reiterating the demands as stated in the first paragraph. Then on 2 December 2020, ENSafrica contacted the director of the First Respondent, whose name was given as Percy by Applicant herein, telephonically. The said director undertook to change the name of First Respondent by January 2021. Suffice it to say that to date the name has not been changed.
On an unspecified date the Companies Tribunal received the Applicants application for relief from ENSafrica. The stamped Form CTR 142 was served on the First Respondent but not on the Second Respondent. The date and method of service have not been stated in Wood’s Founding Affidavit. The non-service on the Second Respondent rendered the 2021 application defective, hence the instant application which was instituted on 12 May 2022.
On the 12 May 2022 the application was served on both the First and Second Respondents by email, and proof thereof was attached to Applicant’s papers. First Respondent did not file an answering affidavit within the statutory twenty (20) business days, following which on the 7 September 2023, Applicant applied for a Default Order on the Form CTR 145. Liezal Christine Mostert (Mostert), the Chief Financial Officer of Italtile Franchising, deposed to the affidavit in support of the Default Order application, on the 6 September 2023.
The Applicant sought an order wherein First Respondent is ordered to change its name to one which does not incorporate the words ‘’CTM” and is not confusingly and/or deceptively similar to the Applicant’s name ‘CTM’’. Applicant submitted that the dominant and memorable part of First Respondent’s name is identical to the Applicant’s trademark “CTM”.
The Applicant contended, further, that the remaining portion of First Respondent’s name “PLUMBERS” although purely descriptive, directly describes the class 42 services in respect of which the Applicant has registered its trademark as well as services in respect of which the Applicant uses its “CTM” trademark and as such does not serve adequately to distinguish the company name from Applicant’s well known “CTM” trademark. The Applicant concluded that First Respondent’s name is therefore confusingly and deceptively similar to Applicants’ registered trademark, “CTM”.
Considering the importance of the contested name by the Applicant, the Applicant was left with no choice but to proceed with the application for relief hence, the default application. The Tribunal was persuaded that the application of Regulation 153 was appropriate in this instance, and thus proceeded to deal with the matter on a default basis.
The Tribunal found that the First Respondent’s name is confusingly similar to that of the Applicant. In addition, it’s the Tribunal’s view that the Applicant succeeded in establishing that its trade mark rights were infringed and it established a clear right to the relief sought, in terms of Section 34 (3)(a) and (b) of the Trade Marks Act.
- The First Respondent was ordered to change its name to one which does not consist of, or incorporate the trademark ‘CTM’ or any other mark which is confusingly and/or deceptively similar to the Applicant’s ‘CTM’ trade mark as it is in contravention of Sections 11(2)(b)(iii) and (c)(i) of the Act.
- The CIPC was authorised and directed to change the name of the First Respondent in the event of the First Respondent does not complying with the paragraph above within 60 days from the date of receipt of this order to “K2017/336086/07 (Pty) Ltd, as the First Respondent’s interim company name on the companies register”.
- The First Respondent was ordered to file a notice of amendment of its Memorandum of Incorporation with the CIPC sixty (60) days after it has been served with this Order.
- The instant Order must be served on the Respondent by the Tribunal’s Recording Officer (Registrar)
- There was no order as to costs as the matter was not opposed.
Social & Ethics Committee
Grayston Drive Autos (RF) Ltd (Applicant)
The Applicant is a company duly incorporated in terms of the company laws of South Africa, with registration number 2018/315240/06, and with its registered address at Investec, 100 Grayston Drive, Sandown, Gauteng, 2196. The ex parte application was brought by Kurt Wade Van Staden, a director of the Applicant and duly authorised to act on behalf of the Applicant, for an exemption in terms of section 72(5) of the Act 71 from the requirement that the Applicant have a Social and Ethics Committee (“SEC”) (as required by section 72(4) read with Regulation 43 of the Act).
Section 72(4) of the Act empowers the Minister to prescribe, by regulation, those categories of companies which must each have a SEC, if it is desirable in the public interest, having regard to – (i) annual turnover; (ii) workforce size; or (iii) the nature and extent of the activities of such companies. Regulation 43 of the Act applies to (a) every state-owned company; (b) every listed public company; and (c) any other company that has in any two of the previous five years, scored above 500 points in terms of regulation 26(2).
Section 72(5) of the Act provides that, notwithstanding the requirement to appoint a SEC, a company may apply to this Tribunal in the prescribed manner and form for an exemption from that requirement, and this Tribunal may grant such an exemption if it is satisfied that:
(a) the company is required in terms of other legislation to have, and does have, some form of formal mechanism within its structures that substantially performs the function that would otherwise be performed by the SEC; or
(b) it is not reasonably necessary in the public interest to require the company to have a SEC, having regard to the nature and extent of the activities of the company.
The Applicant is a ring-fenced public company and a special purpose vehicle which has the sole purpose of issuing term notes under a Vehicle Instalment Backed Securities Program (“the Program”) and administering the Program. The Program is regulated in terms of the Securitisation Regulations under the Banks Act 94 of 1990 (“the Securitisation Regulations”).
The Applicant submitted that the assets are employed to secure the liabilities (the notes) in issue and are ring-fenced. The Program is therefore legally structured to be insolvency remote. The investors/subscribers of the notes are accordingly secured creditors of the Applicant. The Program is operated by the Applicant in terms of a suite of transaction documents and due to the nature of its business, the Applicant has no employees and is managed by its directors. The Applicant also states that its sole shareholder is an independently controlled trust with the power and authority to appoint the independent directors to the board of the Applicant, to govern and have oversight over the activities of the Applicant.
In addition, the Applicant submitted that having regard to the nature and extent of its activities, it is not reasonably necessary in the public interest to require the Applicant to constitute a SEC. Furthermore, the Applicant pointed out that many of the functions of a SEC are not applicable to the Applicant’s business as it has no employees and has little impact on the public at large. The Applicant’s activities are also prescribed and restricted by its transactional documents and the Program which it administers is regulated by the Securitisation Regulations.
The Tribunal’s view was that the Applicant does not have a major impact on public interest. The Applicant is part of a securitisation structure which manages a Program in which notes are issued to investors against assets in an insolvency remote ring-fenced manner. It’s activities do not impact the environment, health and safety. Its activities do not involve the sale of goods and products and it also has no employees.
Taking into account the grounds on which the application was made. The Tribunal was satisfied that the Applicant had made out a proper case that it is not reasonably necessary in the public interest to require the Applicant to have a SEC, having regard to the nature and extent of the activities of the Applicant.
- The Applicant was exempted from the requirements to appoint a SEC for a period of five (5) years from the date of this order, in accordance with section 72(6) of the Act.
- The Tribunal’s Recording Officer (Registrar) is directed to serve a copy of this Order on the (i) Applicant; and (ii) Commissioner of the Companies and Intellectual Property Commission (CIPC).