Car Find (Pty) Ltd v Car Trader (Pty) Ltd and Others (02713/2016) [2016] ZAGPJHC 28; 2016 BIP 130 (GJ) (12 February 2016)

REPUBLIC OF SOUTH AFRICA

IN THE HIGH COURT OF SOUTH AFRICA

(GAUTENG LOCAL DIVISION, JOHANNESBURG)

CASE NO: 02713/2016

DATE: 12 FEBRUARY 2016

In the matter between

CAR FIND (PTY) LTD..........................................................................................FIRST APPLICANT

And

THE CAR TRADER (PTY) LTD.....................................................................FIRST RESPONDENT

AUTOMOTIVE DIGITAL SOLUTIONS (PTY) LTD..............................SECOND RESPONDENT

ZA CENTRAL REGISTRY.............................................................................THIRD RESPONDENT

Intellectual property – Trademark - used car sales industry - appearance of or reference to identical mark on website of respondents - unauthorised - trademark portal provides link on website to car dealers registered on website - whether it constitutes ‘use’

of the trademark - applicant relying on s 34(1)(a) of Trade Marks Act 194 of 1993 for interdictory relief - held: identical mark in itself and, by its very nature, must of necessity cause deception and confusion - website providing direct access to portals including that of the applicant - enhances the website and therefore the services offered by the respondents and implies that some link in the course of the trade exists between the respondents and the applicant - respondents’ use of trademark established - relief sought granted

J U D G M E N T

VAN OOSTEN J:

[1] In this application the applicant seeks final interdictory relief against the first and second respondents, based on an alleged trade mark infringement. The applicant is the owner of two identical registered trademarks, CARFIND (no 2010/19178) and CARFIND (no 2010/19179) (the trade mark). The applicant and the first and second respondents are involved in the used car trade industry. The trademark appears on the website, autofuzion.co.za (the website), which is registered in the name of the first respondent and operated by the second respondent, trading as Autofuzion. The third respondent, which is the administrator of the web domain autofuzion.co.za, has not entered the fray. The goods and services for which the trade mark is registered are ‘advertising, business management,

business administration, office functions’ (class 35) and ‘telecommunications’ (class 38). The only issue between

the parties requiring determination is whether the appearance of, or, reference to, the trademark on the website constitutes an

infringement thereof in respect of which the applicant is entitled to the protection it seeks in this application.

[2] Before dealing with the issue I pause to consider the urgency of the application. The applicant launched the application by way of urgency. The respondents contend that such urgency as there may exist is self-created. It is true that, as pointed out by counsel for the respondents, the applicant was aware of the respondents’ use of its trade mark some three months prior to the launching of the application and further that only 2 days were allowed for the filing of an answering affidavit. On the other hand, the infringement of a trade mark is at stake, which by its nature implies some urgency, as ‘The life of a trade mark depends on the promptitude with which it is vindicated…’ (Kerr on Injunctions 363, quoted in Tullen Industries Ltd v A de Souza Costa (Pty) Ltd 1976 (4) SA 220 (W) 220B). Further considerations are that no prejudice resulting from the abbreviated time periods allowed for the filing of an answering affidavit has either been alleged or exist and, further, that the issue between the parties, against a relatively straightforward factual scenario, has succinctly been set out in the papers and fully ventilated in argument. Finally, it is in the interest of justice that certainty be obtained by the parties concerning an issue which is both relevant and important in the industry they are involved in. For these reasons I am of the view that the sufficient urgency exists for the application to be heard in the urgent court this week.

[3] A convenient point of departure in the consideration of the issue is to refer to and consider the provisions of s 34(1)(a) of the Trade Marks Act 194 of 1993 (the Act). Counsel for the applicant based the applicant’s entitlement to the relief sought entirely on this provision. Counsel for the respondents however, sought to find some discrepancy in the founding papers where the deponent concludes that the respondents are guilty of passing off and trade mark infringement. In my view the mere reference to passing off is of no moment and cannot bar the applicant from relying on the Act.

[4] The section reads in relevant part:

‘34 Infringement of registered trade mark

(1) The rights acquired by registration of a trade mark shall be infringed by-

(a) The unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;’

Counsel for the respondents submitted that the requirement concerning the likelihood of deception or confusion, applies to both identical and resembling marks. The section is aimed at the manner in which the trade mark is used and accordingly, so the argument went, the requirement should be read as being applicable to both identical and resembling marks. I do not agree with this argument. It is for one and, decisively, difficult to conceive how, in the case of an identical mark, a further requirement concerning a likelihood of deception and confusion can arise: the mere unauthorised use of an identical mark, in itself and, by its very nature, must of necessity cause deception and confusion (Cf Century City Apartments Property Services CC and another v Century City Property Owners’ Association 2010 (3) SA 1 (SCA); 2009 BIP 230 (SCA); Berman Brothers (Pty) Ltd v Sodastream Ltd and ano 1986 (3) SA 209 (A) 232H; Webster and Page South African Law of Trade Marks12.8.1A).

[5] This brings me to the respondents’ version concerning the reason for the appearance of the trade mark on the website and its functionality. In accordance with the Plascon-Evans-rule that version, for the purpose of this application, is accepted. The website provides a multi-service tool and can only be accessed by dealerships in the auto trade who have subscribed. It provides a comprehensive service in managing, administering and the buying and selling of motor vehicles, including appraising and pricing of vehicles based on market trends and other information, merchandising and marketing of vehicles for sale, assistance in the stocking of vehicles and the administration thereof and providing leads in respect of vehicles that are for sale. Having logged in onto the website and entered the ‘merchandising’ tab, the trademark as well as the names of other portals, such as Surf4Cars and Automart pop up. The dealer can then select to which of the portals it would like to send a token, which operates as a request or invitation to advertise the subscribing dealer’s motor vehicle stock (which is also referred to as ‘collecting’). If the token is sent to, for example, CARFIND it would then be for CARFIND to either accept or reject the request. If the request is accepted the dealer’s vehicle stock information will be loaded onto the CARFIND website for advertising. In summary, the website provides for direct access by dealers to multiple portals simultaneously, without having to access each such portal separately.

[6] Counsel for the respondents contends that the existence of the trademark name on the website for the purpose described by the respondents, does not constitute the ‘use’ thereof. The argument in my view is flawed. The trademark is used by the respondents in providing a service to registered dealers in advertising vehicles for sale and, therefore, in the course of trade in relation to the services for which the trademark is registered, which falls squarely within the Oxford Dictionary definition of ‘use’:

‘take, hold, or deploy (something) as a means of accomplishing or achieving something; employ’

(https://www.google.co.za/?gws_rd=ssl#q=use+meaning)

The direct access to portals, including that of the applicant, in fact enhances the website and therefore the services offered by the respondents. It moreover, implies that some link in the course of the trade exists between the respondents and the applicant. The respondents deny any connection with the applicant or that the website implies as much. No factual foundation for the latter denial exists and I am satisfied that the objective dealer, upon accessing the website, may well infer a link between the respondents and the applicant. Counsel for the applicant, in argument, fairly posed the hypothetical question why the respondents would oppose the application if they were of the view that they are not using the trademark. The finding I have made concerning the use of the trademark, in my view, provides the answer.

[7] In conclusion: it is common cause that a portal, identical to the trademark, appears on the website, in the course of trade, in relation to advertising, for which the trademark is registered, in respect of which no authorisation exists. I have made the finding that the respondents are using the trademark and it follows that all requirements necessary to an entitlement to a final interdict, in order to protect the trademark, have been established. The application must accordingly succeed.

[8] In the result the following order is made:

1. The first and second respondents are:

1.1 interdicted and restrained from infringing the applicant’s registered trademarks no 2010/19177 CARFIND, and, no 2010/19178 CARFIND, in respect of advertising, business management, business administration services and telecommunications services; and

1.2 directed to remove the applicant’s trademark, CARFIND, from the web domain www.autofuzion.co.za (the website) within 48 hours of the date of this order, failing which the sheriff of the High Court is authorised and directed to sign all the necessary documents to enable the third respondent to shut down the website until the removal of the trademark has been effected.

2. The first and second respondents are ordered to pay the costs of this application jointly and severally, the one paying the other to be absolved.

FHD VAN OOSTEN

JUDGE OF THE HIGH COURT

COUNSEL FOR APPLICANT ADV AJ BESTER SC

INSTRUCTED BY HAHN & HAHN

COUNSEL FOR 1ST& 2ND

RESPONDENTS ADV I MILTZ SC

ADV AB BISHOP

INSTRUCTED BY DEWEY HERTZBERG LEVY INC

DATE OF HEARING 9 FEBRUARY 2016

DATE OF JUDGMENT 12 FEBRUARY 2016