Honda Giken Kogyo Kabushiki Kaisha t/a honda Motor Co Ltd v Big Boy Scooter (24784/16) [2017] ZAGPPHC 513 (25 August 2017)

IN THE HIGH COURT OF SOUTH AFRICA

GAUTENG DIVISION, PRETORIA

Case Number: 24784/16

NOT REPORTABLE

NOT OF INTEREST TO OTHER JUDGES

REVISED

In the matter between:

HONDA GIKEN KOGYO KABUSHIKI KAISHA T/A

HONDA MOTOR CO LTD APPLICANT

and

BIG BOY SCOOTERS RESPONDENT REPONDENT

Coram: HUGHES J

JUDGMENT

HUGHES J

[1] This is an application where the applicant, Honda Giken Kogyo Kabushiki Kaisha t/a Honda Motor Co Ltd (Honda), seeks an interdictory and ancillary relief in terms of sections 34(1)(a) and 34(1)(c) of the Trade Marks Act, 194 of 1993 (the Trade Marks Act), against the respondent, Big Boy Scooter.

[2] The relief sought by the applicant is set out below:

"1. That the Respondent's use of the trade mark CGL or CGL150s or CGL200F infringed the Applicant's trade mark registration no. 2002/08317 CGL125 in class 12, in terms of the provisions of Section 34(1)(a) and Section 34(1)(c) of the Trade Marks Act;

5. interdicting the Respondent from infringing the Applicant's trade mark registration no. 2002/08317 CGL125 in terms of section 34(1)(a) of the Trade Marks Act by making unauthorised use of the Applicant's registered trade mark or marks which are similar to the Applicant's registered trade

mark, and, which are likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the Applicant's well-known trade mark;

6. ordering the Respondent to remove the infringing marks identified above from all material (including but not limited to its internet website, advertising material, promotional material, motorcycles and parts for motorcycles) and, where the infringing mark is inseparable or incapable of being removed from the material of the motorcycle in question, an order that all such goods be delivered up to the Applicant or its attorney;

7. directing that an enquiry be held in terms of Section 34(4) of the Trade Marks Act for the purpose of determining a reasonable royalty to which the Applicant is entitled in terms of the provisions of Section 34(3)(d) of the Trade Marks Act; and

8. Costs."

[3] From the outset the respondent submitted that it would abandon the point raised that the incorrect entity was sued. The respondent

places on record though that the correct party at this stage of the proceedings was South Africa Motorcycle (Pty) Ltd (SAMS) who has purchased Big Boy Scooters. The point raised with regards to prescription was also abandoned as well to bring finality to the main issues in dispute. In the circumstances I do not intend to deal with these issues which are now abandoned.

[4] The applicant is a well-known Japanese company whose principal place of business is Japan. It is one of the world's largest motorcycle manufacturers. According to the applicant, its motorcycles and motorcycle parts have been available in South Africa since 1964.

[5] The applicant is the property owner of the following trademarks CGL125, registration no. 2002/08317 in class 12. This mark is used for their CGL range of motorcycles. The '125' in the mark donates the capacity of the engine of the motorcycle in cubic centimetres. It is also the property owner of another trademark CRF, registration no. 2006/05252 in class 12. Yet again this mark is used for a family of motorcycles with an array of engine capacity sizes, including off-road motorcycles, dual purpose motorcycles and tourer-style

motorcycles with both on and off-road capability.

[6] The applicant has been the proprietor of these trademarks in South Africa for over 10 years.

[7] The business of the respondent whose principal place of business is in Kya Sands Business Park, Kya Sands, Gauteng. The respondent

imports and distributes various motorcycles to retailers within South Africa nationally.

The applicant's case

[8] The applicant contends that the respondent's motorcycles which are imported and sold uses the following marks: CGL150, CGL150S, CGL200F, CCL150, CCL200F and CRF125J. The applicant further contends that the respondent has now changed the 'CGL' trademark to CCL150, CCL 150S and CCL200F.

[9] From the pleadings the applicant points out in argument that the validity of the applicant's trademarks is not in dispute and has in fact been admitted by the respondent. To this end the applicant points out that at paragraph 6.2 of their founding affidavit they state that their marks are valid and in force and to this the respondent stated in its answering affidavit at paragraph 24 of the contents of paragraph 6 "/ do not dispute these allegations, as far as the Applicant's registration of the trademark is concerned."

[10] According to the applicant the respondent claims that it was not aware that the marks were that of the applicant, had it been aware that it was infringing the applicant's trademark, CGL or CRF, it would have desisted. It is common cause that the respondent altered the CGL to CCL and CRF to TTX. The applicant stated that though this is so, the respondent has not given it an undertaking that it will cease using its marks.

[11] Though the applicant accepts that it wanted the respondent to desist using its marks and this was achieved, it still persists for interdictory relief in terms of that sought in prayers 2, 4 and 5, on the grounds that the respondent, having infringed the applicant's mark CGL, ought to stay clear from using a replacement mark so similar, being CCL. The applicant adds that the marks are 'wholly irrelevant to SAM[S].'

The respondent's case

[12] The respondent submitted that it introduced the brands CGL125 and CRF in 2006 and 2010 respectively. It also stated that the applicant has been aware of the aforesaid with regards to the use of CGL since 2008 and since 2010 in respect of the use of CRF

[13] In any event, so the respondent's argument goes, the respondent has desisted as far back as 01 October 2015 when the respondent was requested to do so. They even went so far as to change the use of their mark CGL to CCL and the CRF mark to TTX. The respondent goes even further to state that the only issue before the court currently is whether in fact CCL is an infringement of CGL.

[14] The respondent is of the view that the real issues lie within the realms of the orders sought in prayers 1, 2, and 3, which it terms as the 'so called declaratory relief'.

Section 34

[15] "Section 34

(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;

(b) the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion;

(c) the unauthorised use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be determined to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception. Provided that the provisions of this para shall not apply to a trade mark referred to in section 70(2)."

Analysis

[16] Even in the face of the bold assertion from the respondent that it has desisted from using the marks of the applicant, the applicant persist with the orders it seeks in its notice of motion. The applicant contends that this is so, as there is no undertaking forth coming from the respondent for utilising their marks in the first place and as a result of the respondent's conduct there is no guarantee that they would not use their marks again.

[17] I turn to deal with the order sought in relation to section 34(1)(a). It is trite that for the applicant to succeed for an order in terms of this section 31(1)(a) the applicant needs to establish that (a) the trademark was registered; (b) the respondent used its registered trademark which is identical or similar during the course of its trade without the applicant's permission as to likely to cause deception or confusion; and (c) that this was used in relation to the goods in respect of which the trademark was registered.

[18] Firstly, in the respondent's pleadings, as I have set out above, the respondent does not dispute the registration of the applicant's

trademarks. This concession was also advanced by Adv. Mpofu who represented the respondent. Thus, as regards the first requirement

the applicant has established same.

[19] Secondly, the respondent gave an explanation why they used their marks. It stated that they formed descriptive terms, in this

instance, for Closed Ratio Four-stroke the abbreviation CRF and for Commuter General (with a capital L) CGL. These they advance are terms used in the field and use of motorcycles.

[20] After the cease and desist was requested by the applicant the respondent states that it complied. The mark CRF was no longer being used and was replaced by TTX likewise the CGL mark of the respondent was now CCL The respondent stated that the registered mark of the applicant is CGL125 and not CGL as is sought to be contended by the applicant.

[21] The marks which are used by the respondent are CGL150, CGL150S, CGL200F, CCL150 and CCL200F which relate to the registered trademark of the applicant being CGL125. The second registered trademark of the applicant is CRF and the respondent is using the mark CRF125J.

[22] According to the applicant, the respondent's use of its registered trademarks was done so without its consent or permission. They submit that the marks of the respondent were nearly resembling or similar according to that of the applicant's trademarks. The applicant did point out that the numerical suffix of 125 after CGL denotes the engine capacity of the specific goods- motorcycle. However, the dominant features of the trademarks are CGL and CRF. These are striking features which could lead to confusion or deception, so their argument goes.

The Onus

[23] It is trite that in a case of infringement the onus is upon the applicant to show that there is a likelihood or there is the probability of deception or confusion to arise. It is sufficient to just show that there will be a considerable amount of consumers that will be confused or deceived. The applicant need not show that all the consumers would be confused or deceived. See Plascon- Evans Paints Ltd v Van Riebeeck Paints (Pty} Ltd [1984] ZASCA 51; 1984 (3) SA 623 (A) at 640G-I

[24] In examining the similarity of the marks and the similarity of the goods that the mark is used for, it is sufficient for the applicant

to show that there will arise an erroneous belief that the goods for which the mark is used by the respondent is in fact goods of the applicant. This could lead to confusion in relation to the origin of the goods. See Plascon- Evans at 6401-641A supra

[25] From the outset it can be concluded that the mark used by the respondent, which the applicant alleges infringes on its registered

trademark, is used for the same goods being motorcycles and their parts. Thus, both falls within the same class of goods being class 12. The mark is used during the trade of the goods being the sale of motorcycles.

The mark CRF

[26] There is no issue with regards to the fact that the trademark is registered. The applicant has submitted that the trademark was used by the respondent without its authorisation and this is not disputed by the respondent.

[27] Turning to the question whether the mark of the respondent so nearly resembles the trademark of the applicant on an examination of the registered trademark CRF, it is clear that the respondent has used CRF, with additions thereto as suffixes. In my view, this amounts to nothing more than the use of the dominate feature of the applicant's trademark to make up the respondents mark. It is merely the creation of a mark using the striking feature of the registered trademark which results in a mark nearly resembling that of the applicant.

[28] The use of the mark of the respondent is for goods in class 12, motorcycles, and likewise the applicant trademark is registered for goods-motorcycles in that same class, class 12. It is evident that there is a likelihood that this could cause confusion or deception.

[29] The use thereof, to me, would amount to an infringement on the part of the respondent using that registered trademark. The mere fact that the respondent added numbers to the end of the trademark does detract from the fact that the striking and dominate feature of the mark remains CRF.

[30] The respondent appeals to me to look at the get-up and the fact that the goods of the respondent are marketed differently. An explanation was afforded that the goods of the applicant were marketed in a Honda store, whilst that of the respondent would appear in Big Boy Scooter stores instead. In addition, the goods-motorcycles upon which the mark appears do not have the logo of Honda thereupon but rather that of Big Boy. This argument must fail as this is precisely what the Supreme Court of Appeal (SCA) has advised that one should guard against, as per the dicta in Lucky Star Ltd v Lucky Brands (Pty) Ltd and others 2017 (2) SA 588 (SCA) at paragraph [7] where Swain JA said:

"[7] It is clear that in a trademark-infringement case what is required is 'an objective comparison between the registration and the [respondents'] actual use'. J The 'enquiry is confined to the marks themselves and that no regard should be had to other features of the get-up or other indications of origin of the goods as actually marketed by the [appellant] and the [respondents] respectively'. The alleged infringer cannot 'rely upon matter extraneous to the mark itself, which he may have used in conjunction with the mark, in order to negate the likelihood of deception or confusion'. § Consequently, to the extent that the court a quo may have considered, or been influenced by, a comparison of the get-up of the appellant's canned-pilchards product with the respondents' trademark, it erred. What is required is a comparison of the appellant's registered trademark 'Lucky Star' with the trademark of the respondents' 'Lucky Fish' or 'Lucky Fish and Chips'." [Without the footnotes]

The mark CGL125

[31] Turning to the registered trademark of CGL125 of the applicant's. If I apply the dicta of Lucky Star supra, a comparison of the applicant's registered trademark (CGL125) needs to be done against the marks of the respondent, being CGL150, CGL150S, CGL200F, CCL150 and CCL200F. In my view, if I compare the registered mark to the marks used by the respondent, in this instance, the infringement occurs in the use of the dominate feature of the trademark of the applicant being CGL to form a mark nearly resembling that of the applicant.

[32] I am mindful of the fact that the registered trademark of the applicant is CGL125 and that the comparison cannot be done in

isolation. Regard ought to be had to the interrelationship between the similarities of the marks and the similarities of the goods for which the applicant has registered its trademark. In addition, regard should also be had of the 'notional use' to which the applicant may put the trademark to and the actual use of the mark by the respondent. See Lucky Star at 592 para [8] supra

[33] In addition, when viewing the marks side by side and on their own the dominate feature, that being the CGL, is common and stand out. Even if one considers the marks separately, the numerical addition, of 125, to the dominate feature is of no moment as against the dominate feature of the trademark. Just for easy reference I repeat that the applicant's registered trademark is CGL125, whilst the respondent's marks are CGL150, CGL150S, CGL200F, CCL150 and CCL200F. In my view, due to the striking and dominate feature, being the CGL, there is the likelihood that confusion or deception may probably arise, with the respondent's use of the same denominator, being CGL. In fact, the consumer may even think that the goods with the said mark are part of the applicant's brand. See PPI Makelaars v Professional Provident Society 1998 (1) SA 595 (SCA) at 604D/E-1 (Paraphrased in the headnote at 597):

"Held, further, having regard to the similarities and differences in the dominant features of the marks, that the likelihood of deception and confusion was apparent even in the absence of evidence of actual confusion."

[34] The use by the respondent of the mark in the same class and for the same goods as the applicant is another factor that could lead to confusion or deception. I am aware that the marks have numerical suffixes to the dominate feature. However, those consumers who purchase motorcycles are conscious of the fact that the numerical addition is an indicator of the engine capacity of the motorcycle.

Hence, my reasoning that as it is used in the same class for the same goods, it is likely to cause confusion or deception.

[35] When the application of 'notional use' is considered, my understanding is that the applicant ought to be able to notionally

use its mark, in "all possible fair and normal applications of the mark within the ambit of the monopoly created by the registration

mark..." See Plascon- Evans at 641H-I supra

[36] Meaning that the mark CGL125 in the class for the goods i.e. motorcycles is being infringed upon by the respondent's use of the mark for goods in that same class. This is so in respect of the marks of the respondent using CGL with a suffix numerical and sometimes with letters. These additions in my view, do not alter the original trademark of the applicant if one considers that the trademark is inclusive of the engine capacity description. This is so with the respondent's marks as well, they also included the engine capacity description. This goes back to the dominate feature of the trademark being CGL.

The CCL mark

[37] However, with regards to the marks commencing with CCL, I do not see them as encroaching on the applicant's trademark. In my view, there cannot be a situation where the applicant now wants to have a monopoly over the alphabet. This would be the result if I order that the respondent cannot use other letters of the alphabet as is found in the CCL marks for its goods. The applicant's contention that the mark of CCL is similar to that of CGL125 and is thus an infringement in terms of section 34(1)(a) must therefore fail.

[38] In my view, in respect of section 34(1)(a) the applicant has succeeded in showing an infringement on the part of the respondent with regards to the trademarks CRF and CGL125, the latter only in relation to those marks commencing with CGL.

Applicability of section 34(1)(c)

[39] Lastly, is section 34(1)(c) applicable in these circumstances? This section makes provision that the marks must be similar to each other, known in the Republic and even though there is the absence of confusion and deception the use of the mark creates an unfair advantage to the user to the detriment of the proprietor of the mark. The intention of this provision is to 'provide protection against the dilution of a registered trademark by unauthorised use of an identical or similar mark in relation to any goods or services, notwithstanding the absence of confusion or deception.' See Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (SCA) at 851 para 13

[40] The applicant has already demonstrated that the mark CRF was similar and used without its authorisation. It has further shown that it was used in the trading of goods, motorcycles, in the same class by the respondent.

[41] All that is left in order to establish infringement in terms of section 34(1)(c) is whether the marks are well known in the Republic and whether the use by the respondent has afforded it an unfair advantage or the use is detrimental to the character and repute of the applicant's registered trademark.

[42] In respect for the goods of the applicant which are branded with the CRF trademark, the applicant has indicated that its brand and this motorcycle specifically is well known in the Republic. This is illustrated by annexures BF5, BF6.1 and BF6.2 to the founding

affidavit of the applicant which clearly, in my view, set out brochures of the said CRF motorcycle. The use of the applicant's

trademark of CRF does in my view afford the respondent an unfair advantage as the goods are exactly the same being off-road motorcycles and both use the CRF mark with the engine capacity thereafter in numerical values. Thus, in the circumstances I find in respect of the trademark CRF of the applicant, the infringement in respect of section 34(1)(c) has been demonstrated.

[43] Turning to the trademark CGL125 and whether an infringement in terms of section 34(1)(c) has taken place. Provision is made in this section for marks that are 'similar'. If one is to interpret the word 'similar' strictly in the context of section 34(1)(c), as is required, see Bata at para [14], then the applicant would fall short in showing that the mark of the respondent is similar to the registered trademark of the applicant. The mark of the respondent would have to resemble or be in likeness with the trademark CGL125. It is evident to me that there is clearly no similarity between the applicant's trademark (CGL125) and the marks of the respondent (CGL150, CGL150S, CGL200F, CCL150 and CCL200F). In the circumstances, the applicant, having failed to show the similarity, renders the establishment of the other requirement not necessary for consideration.

Defence of acquiescence and estoppel

[44] In casu, the respondent argues that from the papers, the applicant has put up sales indicators of the respondent that date back to as far as 2013. However, they contend that they only became aware of this information in 2015 hence they sent their letter to desist in July 2015.

[45] From July 2015 to October 2015, the applicant took no further steps. Moreover the respondent avers that it's probable that the applicant became aware that the respondent was using its trademarks as far back as 2010. This is so, argues the respondent, as the applicant does not take the court into its confidence to say exactly when they became aware. The respondent states that this is based on the premise that the two, Honda and Big Boy, have been competitors as far back as 2006 at the least 2010. Thus, it stands to reason that the applicant would have had the knowledge from then. Further, the respondent argues that as it was not denied in the replying affidavit, it can be regarded as having been admitted.

[11] The cases that address the defence of acquiescence and estoppel in trade mark matters, which have application, are set out below:

Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green Point) (Pty) Ltd 1974 (2) SA 125 (C) at 137 where Friedman AJ stated:

"It would appear, however, from the following passage from the judgment of WESSELS, J., in Policansky Bros. v Hermann and Canard, 1910 T.P.D. 1265 at pp. 1278 - 9, that in the field of trade marks our law recognises acquiescence as a defence distinct from that of estoppel:

"The equitable principle that if a person lies by with a full knowledge of his rights and of the infringement of those rights, he is precluded from afterwards asserting them, has been adopted by our Courts. It forms a branch of the law of do/us ma/us. The principle of lying by is not unknown to the civil law, though its application is not so often met with in our system of law as it is in English law. Sometimes the rights are lost through mere acquiescence, at other times by estoppel, as where the element of prejudice exists in addition to acquiescence. Thus acquiescence can be proved by definite acts or by conduct."

Whether an applicant can be said to have acquiesced in the conduct complained of, is a question of fact... Acquiescence is, in my view, a form of tacit consent, and in this regard it must, however, be borne in mind that, as WATERMEYER, C.J., said in Collen v Rietfontein Engineering Works, 1948 (1) SA 413 (AD) at p. 422:

"Quiescence is not necessarily acquiescence,"

and that "conduct to constitute an acceptance, must be an unequivocal indication to the other party of such acceptance".

Turbek Trading CC v A & D Spritz Ltd and Another [201O]2 All SA 284 (SCA) here Harms DP said:

"[15] Turbek's first line of defence was a reliance on what counsel referred to as an 'equitable defence' of delay: if a party delays in enforcing its rights the party may in the discretion of the court either forfeit the rights or be precluded from enforcing them. The factual basis of the defence was, briefly put, that Spitz had known since 1 October 2001 of Turbek's trade mark applications and its use of the mark 'KG' on footwear but only took steps to enforce its alleged common-law rights when it instituted the present proceedings during July 2007. This delay, according to the submission, amounted to acquiescence which disentitled Spitz from attacking the registrations or obtaining an interdict. Counsel relied on a statement by Patel J that our law recognises a defence of acquiescence distinct from estoppel and that the doctrine can be applied to halt cases where necessary to attain just and equitable results (Botha v White 2004 (3) SA 184 (T) para 24 and 31). That Patel J had failed to take account of binding authority that contradicted his bald statement and that he had misread authority on which he sought to rely was pointed out by Thring J in New Media Publishing (Pty) Ltd v Eating Out Webb Services CC [2005] ZAWCHC 20; 2005 (5) SA 388 (C) 4061-407J. During argument it became clear that counsel was unable to contend more than that delay may in a suitable case be evidence of an intention to waive, evidence of a misrepresentation that might found estoppel, or evidence of consent for purposes of the volenti non fit iniuria principle. In other words, counsel was unable to substantiate his submission that acquiescence is a substantive defence in our law. Delay, in the context of trade mark law, may provide evidence of a loss of goodwill or distinctiveness but that was not Turbek's case on the papers. All this does not mean that delay may not have procedural consequences; for instance, it may be a factor to take into account in exercising a court's discretion to refuse to issue a declaration of rights or an interim interdict or, maybe, even a final interdict, leaving the claimant to pursue other remedies such as damages. Maybe this was what Patel J had in mind. If not, he erred." [My emphasis]

[47] From Turbek supra it is apparent that acquiescence no longer forms part of our law and Adv. Mpofu rightfully conceded this point. But he persisted that even so a "delay, waiver, folding your arms" may lead to a disentitlement of the interdictory relief sought. He further argued that if the applicant knew of the infringement and did nothing about it for all these years, it cannot come to court, as it did, and say that the use of the trademarks were unauthorised. Thus, it would be estopped from pleading that the use of the trademarks were unauthorised.

[48] In addressing the argument advanced on behalf of the respondent in respect of the issue of estoppel, it is not so that if a party does not plead or deny the allegations levelled, it is taken to be admitted. An extract from Herbstein and Van Winsen: The Civil Practise of the High Courts and the Supreme Court of Appeal of South Africa at page 593 is relevant:

"Every allegation of fact in the combined summons or declaration that is not stated in the plea to be denied or to be not admitted will be deemed to be admitted. It has been held, however, that this rule cannot be applied piecemeal to a party's averments as the plea must be read in its totality and as one composite document, nor can the rule be applied so as to deprive a party of a defence that is plainly, though perhaps imprecisely, raised on the pleadings." 55 At 55 see Absa Bank Ltd v I W Slumber and Wilkinson [1997] ZASCA 15; 1997 (3) SA 669 (SCA) at 674A-D:

" ... this does not mean that the Rule should be applied 'piecemeal to a party's averment; nor can it be applied so as to deprive a party of a defence which is plainly, though perhaps imprecisely, raised on the pleadings'."

[49] Turning to the evidence before me, I am mindful that the respondent is duty bound to advance concrete evidence and not merely conjecture or make assumptions. In this instance what do I have:

(a) Just because the applicant has provided documents of the information of the respondent as far back as 2006, the applicant is deemed to have had that knowledge then;

(b) The respondent argues that it and the applicant were competitors since 2006 and as such the applicant would have had the knowledge of the motorcycles the respondent was selling, as far back as then;

(c) The fact that Mr Lenaerts, who deposed to the affidavit of the respondent, was elected onto the Association of Motor-cycles Importers and Distributors of South Africa in 2010 of which Honda was a member, the applicant should have been aware that the respondent was using its trademarks; and

(d) The respondent boldly states that Mr Fouche, the deponent for the applicant's founding affidavit, because he does not take the court into his confidence of as to when did Honda in fact acquire the knowledge of the respondent's use of their trademark, it should be presumed that he had knowledge as far back as 2010 when the respondent was importing and selling motorcycles.

[50] It is evident to me from the above that this does not constitute evidence to advance the defence relied upon. There is no evidence

from the applicant's conduct that it became aware as far back as stated by the respondent. The only evidence I have before me is that of the applicant which is that it only became aware in July 2015.

The applicant explains that July 2015 was when it transmitted its letter to desist to the respondent and 1 October 2015 when it eventually obtained a response from the respondent.

[51] In the circumstances, the respondent has failed to make out a case that the applicant in one way or another relinquished its right to authorise the usage of its trademarks. The defence must therefore fail.

The relief sought

[52] Section 34(3) of the Trade Marks Act makes provision for the relief a successful party in an infringement case might seek. The first is an interdict in terms of section 34(3)(a). In this instance the respondent has desisted in its infringement, however, in doing so, especially in the case of the use of CGL and CCL in its amended marks, there is still that persistence by the respondent that comes to the fore. In addition, the applicant had to issue out court papers for the respondent to actually desist. Importantly, to date, even though the respondent had desisted it has refused to provide an undertaking committing itself to such in the future. The conduct of the respondent is clearly, as argued by the applicant, such that there is an apprehension that the respondent could do it again.

[53] The dicta of Harms DP in PPI Makelaars supra at 650A-B comes to mind:

"However, interdicts are not only granted for injuries actually committed but also for injuries reasonably apprehended."

He went on further to state that regard should be had of the conduct of the offending party which would be an indicator of their future conduct.

[54] In casu, the conduct of the respondent as stated above, leaves much to be desired. The respondent initially refused to desist when requested to do so, court papers had to be served, when it eventually did desisted the respondent utilised the marks, which nearly resembled the trademark CGL to infringe yet again, lastly, it refused to provide an undertaking. See Glanton & Mitchell v Keshavjee & Sons 1918 TPD 263 at 267 where the court said that if it had an undertaking from the transgressor, that party having infringed, it might have refrained from granting an interdict. This highlights the importance of the undertaking. See Smith and Nephew Ltd v Mediplast Pharmaceutical Sales CC 1999 (2) SA 646 (D) at 651H. In the circumstances, the applicant has made out a case for an interdict to be granted.

[55] Another order that a court can grant is in terms of section 34(3)(b) that is an order for the removal of the mark or if the mark cannot be removed, delivery of the goods to the proprietor of the trademark. It has been said that even though this order amounts to an invasion of the property right of a party, the basis of this order is, in addition to the restraining infringement relief, is to ensure the effective operation of the order.

[56] In my view, this order is in conflict with section 25 of the Constitution of South Africa in respect to the rights to property. My view is fortified by the decision of the full court in Cerebos Food Corp Ltd v Diverse Foods SA (Pty) Ltd 1984 (4) SA 149 (T). In the circumstances, I am not of the opinion that the applicant has made out a case for the order sought. In addition, I am not inclined to grant the order for that specific relief sought, as it is contrary to the Constitution.

[57] In this instance, no orders were sought in terms of section 34(3)(c) and (d). However, an order was sought in terms of section 34(4) which provides that the court may order that an enquiry be held for the determination of the amounts due for damages or reasonable royalty if awarded by the court in terms of section 34.

Costs

[58] It is trite that the unsuccessful party is responsible for costs. Even though in this instance the respondent desisted at some point, it is also the conduct of the respondent after desisting that is unbecoming and warrants an order of costs against it. In the circumstances, the respondent must pay the costs on the normal scale being party and party.

The Order

[59] Consequently I make the following order:

[a] That the respondent's use of the trademark CGL or CGL150s or CGL200F infringed the applicant's trademark registration no. 2002/08317 CGL125 in class 12, in terms of the provisions of section 34(1)(a) of the Trade Marks Act;