Name dispute case highlights
Trustees for The Time Being of The Nelson Mandela Foundation Trust (Applicant) vs Mandela Collective Business (Pty) Ltd (First Respondent) and Commissioner of Companies and Intellectual Property Commission (CIPC) (Second Respondent).
The Applicant is the Trustees for the Time Being of the Nelson Mandela Foundation Trust, created in terms of a trust deed (number IT9259/99) executed on 19 August 1999, with its principal place of business at 107 Central Street, Houghton, Gauteng, 2198.
First Respondent is a company duly incorporated in accordance with the company laws of South Africa, with registration number 2019/098186/08, and having its registered address at 80 Harrington Street, Salt Lake, Port Elizabeth, Eastern Cape, 6059. The Second Respondent is the CIPC, a juristic person established in terms of section 185(1) of the Companies Act 71 of 2008 (“the Act”).
The Applicant sought a determination order:
- that First Respondent’s name does not satisfy the requirements of section 11(2) of the Act, and
- that First Respondent be directed to choose a new name as provided for in terms of section 160 of the Act.
The Applicant is the registered proprietor of the “MANDELA” trademarks in South Africa in various classes, in terms of the Trade Marks Act 194 of 1993 as evinced by certificates attached to the founding affidavit. The Applicant approached the Tribunal for relief on the 30 October 2020, served the application on the First Respondent electronically early in November 2020 on one if its directors via courier service. First Respondent did not file an answering affidavit within twenty (20) business days, following which, on 1 June 2021 Applicant applied for a default order in terms of Regulation 153 of the Companies Regulations (the Regulations).
The Applicant’s representative, Mr Sello Hatang, duly authorised, deposed to the founding affidavit for the initial application. Delene Mary Bertasso, an attorney with Edward Nathan Sonnenbergs Inc., representing Applicant, deposed to an affidavit in support of the application for default judgment. The Applicant submitted that the inclusion of the word MANDELA in First Respondent’s name infringes its registered trademarks. The Applicant claims statutory and common law rights in the name MANDELA, and widespread and extensive use thereof locally and internationally.
The Applicant further submitted that the dominant and memorable part of First Respondent’s company name is identical to the Applicant’s trademark “MANDELA”. The Applicant argued that First Respondent’s name is therefore confusingly and deceptively similar to Applicant’s registered trademark MANDELA and is in contravention of Section 11(2)(b) and (c)(i) of the Act. The Tribunal’s view is that permitting First Respondent to keep the name MANDELA in its company name will create confusion and hinder the Registrar from maintaining and promoting good governance and administration of a corporate entity in the interest of the public. It is evident therefore that the name MANDELA as incorporated in First Respondent’s company name falls within the ambit of Section 11(2)(b)(iii) and (c) as argued.
The Tribunal found that the Applicant has shown that First Respondent has transgressed Section 11(2)(b) and (c): its name is confusingly similar and falsely implies, or could reasonably mislead a person to believe incorrectly, that First Respondent is part of, or associated with the Applicant. Hence it is entitled to an order as claimed in terms of Section 160 of the Act.
- An administrative order is made in terms of Section 160(3)(b)(ii) that First Respondent change its name to one which does not incorporate the name MANDELA
- This order must be served on the Respondents by the Tribunal’s Recording Officer (Registrar).
- First Respondent is hereby ordered to change its name within 60 (calendar) days of date of receipt of this order and to file a notice of amendment of its Memorandum of Incorporation.
- There is no cost order since the matter was not opposed.
- The Registrar of CIPC is directed to inform First Respondent forthwith of the decision of the Tribunal and to ensure that the name is changed within the requisite time period as aforesaid; and to invite First Respondent to file an amended Memorandum of Incorporation using a satisfactory name.
Tsogo Sun Casinos (Pty) Ltd (Applicant) vs Emnotweni Holdings (Pty) Ltd (First Respondent) and CIPC (Second Respondent)
The Applicant applied to the Tribunal for a default order because the name of the First Respondent does not comply with sections 11(2)(b)(iii) and 11(2)(c)(i) of the Act. The jurisdiction of the Tribunal in this matter is as determined in section 160(1) of the Act.
The Applicant is a company incorporated in terms of the Act. The First Respondent is Emnotweni Holdings (Pty) Ltd (2018/035684/07), a company incorporated in 2018 in terms of the Act. The Second Respondent is the CIPC, established in terms of section 185 of the Act, with the objectives and functions as in section 186.
The application was brought by Cindy Eva Wannell, authorised to do so by a resolution of directors in terms of section 74 of the Act. The Applicant became aware of the registration of a company with the name Emnotweni Holdings (Pty) Ltd, apparently in 2019. The Applicant is the proprietor of the “Emnotweni” trade mark in respect of various classes in terms of the Trade Marks Act 194 of 1993.
The Applicant applied to the Tribunal for relief on 10 February 2021. This was after various attempts by the Applicant to engage the First Respondent on the issue of the name “Emnotweni Holdings (Pty) Ltd” were unsuccessful. A copy of the CTR 142 and supporting affidavit as lodged with the Tribunal were served by the sheriff at the registered address of the First Respondent on 15 February 2021 and electronically on the Second Respondent on 10 February 2021. The First Respondent failed to file an answering affidavit to the Tribunal.
The Applicant sought the following relief as stated in the founding affidavit:
- To order the First Respondent to change its name to one that does not incorporate and is not confusingly and/or deceptively similar to the Applicant’s EMNOTWENI trade mark;
- Order the First Respondent is to pay the Applicant’s costs of these proceedings if it opposes the relief sought;
- if the First Respondent fails to comply with the order within 60 days, the CIPC is be directed, in terms of Section 160(3)(b)(ii) read with Section 14(2) of the Companies Act, to record the Respondent’s registration number followed by ‘(Pty) Ltd’, as the Respondent’s interim company name on the companies register; and
- the Applicant be granted further and/or alternative relief.
The Tribunal found that the name of the First Respondent does not comply with sections 11(2)(b)(iii) and 11(2)(c)(i) of the Act. The First Respondent was ordered to file, free of charge, a notice of an amendment of its Memorandum of Incorporation, within 60 days of receipt of this order to change its name to exclude the word “Emnotweni”. In terms of this prayer, “if the First Respondent fails to comply with the order within 60 days, the CIPCis directed, in terms of Section 160(3)(b)(ii) read with Section 14(2) of the Companies Act, to record the Respondent’s registration number followed by ‘(Pty) Ltd’, as the Respondent’s interim company name on the companies register”, the CIPC was given the following notice: Due to the fact that such an action will have the effect that the company will, for all intents and purposes, be unable to continue to operate due to statutory prescripts, such an action by the Commissioner should be preceded by adequate notice. There was no order for costs.
ABSA BANK LIMITED (Applicant) vs AFRICANACITY BURIAL SERVICES (PTY) LIMITED (Respondent)
The Applicant filed an application with the Tribunal on the basis that the Respondent’s name is the same as its registered trade mark AFRICANACITY or confusingly similar to the registered trade mark. This application was brought in terms of section 160(1)1 of the Act, the Applicant sought an order directing the Respondent to change its name to a name which satisfies the requirements of section 11(2)2 of the Act. The Applicant ABSA BANK LIMITED is the proprietor of the registered trade mark “AFRICANACITY”. The Respondent’s name “AFRICANACITY BURIAL SERIVICES”, evidently, includes the word “AFRICANACITY”. The Respondent appeared to have intended to rely on section 11(2)(b)(iii) of the Companies Act, instead.
The Respondent was incorporated or registered on 17 June 2020. It was stated that the existence of the Respondent or the Respondent’s name only came to the attention of the Applicant on 02 October 2020. Evidently, this was over three months from the date of registration of the Respondent. The Applicant was alerted to the Respondent’s name by the Applicant’s Attorneys of record. The Attorneys became aware of the name when they were routinely conducting a search for potential conflicting names at the instance of the Applicant.
The next day, on 03 October 2020 they were instructed to embark on a name objection process. The Tribunal was satisfied that good cause, as required by section 160(2)(b) of the Act, was shown regarding the timing of this application on the Applicant’s part.
The application was served on the Respondent utilising the electronic mail or email method of delivery. One of the Respondent’s Directors reacted to the application papers and advised the Applicant’s Attorneys that the Respondent is in the process of changing its name. The Tribunal was therefore satisfied that the application was adequately served on the Respondent. From October 2020 onwards, the Applicant’s Attorneys communicated with one of the Directors of the Respondent about the name change.
The Respondent voluntarily furnished the Applicant’s attorneys with an undertaking that it would cease and desist from using its current name in the light of the Applicant’s trade mark. In other words, the Respondent agreed to change its name to exclude the word “AFRICANACITY” from its name. But the Respondent did not effect the name change, as a result, this application was filed. The Applicant also sought a costs order against the Respondent. Although the Respondent – as deduced from the correspondences between the Respondent’s director and the Applicant’s attorneys – appears to be genuine about changing its name to one compliant with the Act. The Applicant provided the Respondent with an opportunity to effect the name change from October 2020 until April 2021, but in vain.
The Respondent conceded its wrongdoing with regard to the use of the name which includes the word AFRICANACITY. Through its Director, the Respondent, made an undertaken to remove the cause of the Applicant’s complaint. But the Respondent has failed to act with the required level of haste in changing its name. Consequently, the Applicant had to launch these proceedings. Therefore, a costs order against the Respondent is warranted under the circumstances.
The Tribunal found that the inclusion of the word “AFRICANACITY” in the Respondent’s name renders the name not satisfactory of the provisions of section 11(2)(b)(iii) of the Companies Act.
The following order was made:
- that, the Respondent’s registered company name “AFRICANACITY BURIAL SERVICES (PTY) LTD”, due to the inclusion of the word “AFRICANACITY” in the name, is found not to satisfy the requirements of section 11(2)(b) of the Act;
- that, the Respondent is directed to choose a new name and file a notice of amendment to its Memorandum of Incorporation reflecting a name which is satisfactory of the requirements of the Act;
- that, the Respondent is directed to complete the activities as ordered above within 90 calendar days from date of service of this order on the Respondent; and
- that, the Respondent is liable for the costs of this application at the scale of party and party in terms of the tariffs of the High Court of South Africa.