Learn to Drice CC v Van De Weg (133/07) [2007] ZAECHC 86 (7 August 2007)

FORM A

FILING SHEET FOR EASTERN CAPE

JUDGMENT

PARTIES:

LEARN

TO DRIVE CC

APPLICANT

and

PAUL

VAN DE WEG RESPONDENT

Case Number: 133/07

High Court: EAST

LONDON CIRCUIT LOCAL DIVISION

DATES HEARD: 07 August 2007

DATE DELIVERED:

JUDGE(S):

DAMBUZA

J

LEGAL REPRESENTATIVES -

Appearances:

for the applicant(s): Adv Brooks

for the respondent(s): Adv Dugmore

Instructing attorneys:

for the applicant(s): Michael D Wylde

for the respondent(s): Bax Kaplan Inc

CASE INFORMATION -

Nature of proceedings : Application for an interdict

IN

THE HIGH COURT OF SOUTH AFRICA

(EAST LONDON CIRCUIT LOCAL DIVISION)

CASE NO: EL 133/07

ECD 133/07

In the matter between:

______________

JUDGMENT

DAMBUZA J:

1. Each of the parties in this case conducts business as a driving school.

2. The applicant seeks an interdict restraining the respondent from using the trade name “Learn to Drive” or “any other comparable or similar imitation of the said name”, as the name of a driving school which the respondent conducts at No 6 Schweldhelm Centre, Gonubie, East London and in advertisements relating to that business. The application is opposed.

3. Bridget Nichols who holds a 40% interest in the applicant states, in the founding affidavit, that she and her husband Quintin George Nichols who owns the remaining 60% interest, became members of the applicant on 23 April 2004, having acquired an interest from Leslie and Sharon Wium who started the driving school business in 1990.

4. Subsequent to acquiring an interest in the applicant, Mrs Nichols and her husband took over the management of its business. Between 2004 and 2007 the business grew considerably.

5. In October 2004 Mrs Nichols became aware that the respondent was using the same trade name as the applicant, when her attention was drawn to advertisements of the respondent’s business published in the Daily Dispatch newspaper.

6. Thereafter the applicant also published an advertisement in the same newspaper stating that “Learn to Drive The UNO people not associated to (sic) Learn to Drive K53 Uncle Paul. Please contact Quintin at 083 7100 169.” According to Mrs Nichols this was to clear possible confusion amongst members of the public.

7. Thereafter each of the parties regularly advertised their businesses in the Daily Dispatch and elsewhere in and around East London.

8. During August 2006 Mrs Nichols telephoned the Daily Dispatch and reported that the respondent was using the applicant’s name wrongfully and unlawfully. This brought no change to the situation. Thereafter a letter was addressed to the respondent, by the applicant’s attorneys, advising that “Learn to Drive” was the applicant’s registered name and warning the respondent to desist from using the name. This did not help either and ultimately the applicant instituted these proceedings.

9. The trade name in question is similar to the applicant’s registered name, “Learn to Drive CC”. The applicant contends in the founding papers that it acquired rights to sole use of the words “Learn to Drive” through its continuous use thereof as the name of its business which, over a period of about 14 years developed to be the best driving school in East London.

10. The respondent contends that the failure by the applicant to allege in its founding papers, that the words complained of had become a distinctive feature of the applicant’s business, is fatal to the application. It was submitted on behalf of the respondent that the fact that both parties had traded in and around East London for two years without any identified or known instance of confusion amongst their (or the applicant’s) customers indicated that no confusion resulted from their use of the same trade name.

11. Before I deal with the main application, I need to first consider an application brought by the applicant in terms of Rule 30 of the Rules of this Court, to have an affidavit (termed “affidavit in Rebuttal”), filed by the respondent, subsequent to the filing of the applicant’s replying affidavit, set aside. In his answering affidavit, the respondent maintained that the words “Learn to Drive” were generally descriptive words falling in the same category as, for example, “Learn to Cook”, “Learn to Sew” etc. These words, so the argument went, are often used in advertising businesses relating to a particular skill and the respondent had the right to use them. In the answering affidavit filed on behalf of the applicant it was denied that the applicant had the right to use these generally descriptive words. The “affidavit in rebuttal” was then filed by the respondent setting out further examples of use of such descriptive words or expressions, for example, “LRN 2 DRV”, “Learn to Drive in a week end” and “Learn to Cook”.

12. The applicant contends, correctly in my view, that the Rules of Court make no provision for the filing of the affidavit in rebuttal. It (the applicant) also takes issue with the delivery of the “affidavit in rebuttal” outside the 15 day period prescribed by the Rules for delivery of answering affidavits. No application for condonation of the late filing thereof was filed.

13. Mr Dugmore who appeared on behalf of the respondent, submitted that the rebuttal evidence was necessitated by applicant’s denial, in its replying affidavit, that the respondent was entitled to use the words “Learn to Drive” as its trading name or in its advertisements.

14. I find no valid justification for the filing of the “affidavit in rebuttal”. The response to the applicant’s claim is expressed clearly in the answering affidavit wherein the respondent states that “the descriptive words, Learn to Drive and variations thereon are used to describe ‘how to do’ manuals, ‘how to do’ publications, driving schools, and similar activities and publications throughout the world.” It is trite that the number of affidavits usually accepted in motion proceedings is restricted to three. See: Rule 6.

Where further affidavits are filed without the leave of the court, the court can regard such affidavits as pro non scripto. Only in exceptional circumstances will a fourth set of affidavits be received. See: South Peninsula Municipality v Evans & Others 2001 (1) SA 271 (C) at 283A-H. I am mindful of the fact that special circumstances may exist where something unexpected or new emerges from the applicant’s replying affidavit.

15. The examples of newspaper adverts attached to the “affidavit in rebuttal” and the averments made therein, merely support allegations already made by the respondent in his answering affidavit. They do not constitute “new facts” as Mr Dugmore argued. Nothing in the “affidavit in rebuttal” suggests that the affidavit contains new facts. A statement from the bar to that effect is not sufficient. See: Hersman v Jacobsz & Brothers 1931 EDL 284. I am therefore satisfied that the respondent’s “affidavit in rebuttal” falls to be set aside.

16. There is also an application brought by the respondent to strike out certain portions of the replying affidavit. According to the respondent the contents of certain portions of Mrs Nichols’ replying affidavit constitute part of the applicant’s cause of action and should have been part of the applicant’s founding papers. The respondent also takes issue with other portions of the replying affidavit as constituting argumentative and irrelevant matter.

17. The paragraphs of the replying affidavit complained of are the following:

17.1 Paragraphs 2 xviii (AD PARAGRAPH 18), xviii (AD PARAGRAPH 30) and 3 (AD PARAGRAPH 32) in which Mrs Nichols says:

“2.

xviii] AD PARAGRAPH 18

The applicant is always entitled to the protection of its registered name and any use thereof by the respondent is unlawful.

The very examples given by Respondent, namely “Learn to Drive CC” and “Learn to Drive, K53 Uncle Paul” highlight the confusion and prejudice to Applicant. The Respondent has wrongfully appropriated the Applicant’s registered name “Learn to Drive” for himself.

There is no prejudice to Respondent if Applicant is granted the relief it seeks. For instance, in Annexure “Q” hereto, the Respondent does not use Applicant’s registered name. In any event Respondent says he has changed his name to “Learn How to Drive” without any prejudice although this small change does not eliminate the confusion arising from the unlawful use of Applicant’s registered name. The various signs [i.e as reflected in Annexures M1 – 5] remain in place and have not been changed at all.

There are numerous names which the Respondent could use for his business without offending anyone some of which could be:-

Uncle Paul K53 Driving School

Uncle Pauls K53 Driving Tuition

Uncle Pauls K53 Driving Instruction

Uncle Pauls K53 Driving Lessons

Uncle Pauls K53 Driving Teaching

Uncle Pauls K53 Driving Training

Uncle Pauls K53 Tutelage

Uncle Pauls K53 Driving Tutoring

Uncle Pauls K53 Driving Coaching

xviii] AD PARAGRAPH 30

The respondent’s allegations are denied.

What is quite evident is the following:

i] The name “Learn to Drive’ was registered on 8 January 1983 and that since that date it has built up a very successful business under that name.

ii] The Respondent commenced business in 2004.

iii] The Applicant and Respondent compete in the same commercial environment or market place.

iv] The clientele of Applicant and Respondent are from the general public who would easily be misled by the similarity of the two names used by the Applicant and the Respondent.

v] The names used by the Applicant and Respondent are identical.

vi] The name used by the Respondent is identical or very similar to the Applicant’s name and would not be registered by the office of the Close Corporations.

vii] There is no reasonable necessity for the Respondent to use the words “Learn to Drive” as a name.

viii] The Respondent will not suffer any inconvenience if he is prohibited from using the name “Learn to Drive”.

xxxi] AD PARAGRAPH 32

3. It is the Applicant’s respectful contention that the Respondent has wrongfully and unlawfully appropriated the Applicant’s registered name “Learn to Drive” which has gained a reputation which has a distinguishing value. The Respondent’s copying thereof creates the probability of misleading the general public.

The Respondent has unashamedly adopted and copied the Applicant’s registered name, get up and service mark. Since its date of incorporation on 8 January 1993, Applicant’s name has been used exclusively and prominently in East London in respect of all its activities and has acquired a substantial reputation and goodwill.

It is the Applicant’s contention that the Applicant has vested rights in its name or the particular words in its name and that confusion and deception is likely which is causing Applicant damages. The goodwill or reputation attached to the Applicant’s name and services which it supplies, are associated by the purchasing public as a distinctive reputation and name were in existence when the Respondent commenced business. Such reputation still exists.

From the aforegoing, it is respectfully submitted that:-

a) Respondent has directly and indirectly represented his services are those of the Applicant or are connected in the course of trade with Applicant.

b) Respondent has taken undue advantage of Applicant’s concept of a driving school developed at considerable effort and expense and utilising Applicant’s particular expertise.

c) Respondent has reproduced and imitated Applicant’s registered name which is unfair and offensive.”

18. Regarding to the complaint relating to the first two paragraphs referred to as 2 xviii and xviii, (Ad Paragraphs 18 and 30 of the answering affidavit) I could not find anywhere in the papers, an averment by the respondent that he had changed his name to “Learn How to Drive”. Nor am I satisfied that the contents of this paragraph mean that the respondent admits changing his trade name. I do not agree that the contents of these paragraphs set a cause of action. In my view, this is simply a repetition, by the applicant, of its contention that the respondent’s use of the words is unlawful and a response to the allegation, by the respondent, that he would suffer irreparable harm if he had to commence building his business from scratch (i.e. if he were to change his trade name).

19. Whilst I agree that the contents of paragraph 3 of the replying affidavit constitute new matter in that there is no allegation in the founding affidavit, that the words under consideration have gained a distinguishing value, I remain unpersuaded that this portion of the replying affidavit falls to be struck out from the affidavit. It is a material consideration, in an application to strike out, whether the complaining party stands to suffer prejudice as a result of the inclusion of the words complained of. I cannot find that the respondent stands to suffer prejudice as a result of the averments complained of. The relief sought by the applicant in the founding papers is protection of its right to use the words in question. Whether the respondent had made out a case for such relief is a different issue.

The rest of the contents of paragraph 3 are simply an amplification by the respondent of the allegation that the respondent has and continues to use the trade name (or registered name) with which the applicant’s hard-work, has come to be associated over a long time. I am not persuaded that the portions of the replying affidavit complained of fall to be struck out as submitted.

20. Turning to the main application, as Mr Dugmore submitted, the applicant’s complaint is referred to in our law as “Passing-off”. It is constituted by a representation, express or implied, by one person that his business or merchandise or both are, or are connected with, those of another. Brian Boswell Circus (Pty) Ltd & Another v Boswell-Wilkie Circus (Pty) Ltd 1985 (4) SA 466 (A). In Boswell’s case Corbett JA, as he then was, held at 478 G-J that:

“Where they are implied, such representations are usually made by the wrongdoer adopting a name for his business which resembles that of the aggrieved party’s business; and the test then is whether in all the circumstances the resemblance is such that there is a reasonable likelihood that ordinary members of the public, or a substantial section thereof, may be confused or deceived into believing that the business of the alleged wrongdoer is that of the aggrieved party, or is connected therewith. Whether there is such a reasonable likelihood or confusion or deception is a question of fact to be determined in the light of the particular circumstances of the case.”

Therefore whether there is passing off or not is a question of fact. See also: Union Wine Ltd v E Snell & Co Ltd 1990 (2) SA 180 (D) at 182G. The factual question to be considered is whether the name in question has gained secondary meaning that denotes the business conducted or the merchandise marketed under it. In the Union Wine case (supra) at 183D the court quoted with approval the remarks of Didcott J, in Boswell Wilkie Circus (Pty) Ltd v Brian Boswell Circus (Pty) Ltd & Another 1984 (1) SA 734 (N) at 737G wherein he held that:

“A name has a secondary meaning for the purposes of passing off once the association between it and the business or product which bears it is so close that, in the minds of the public, it is distinctive of that specific business or product, identifying such rather than any other. The feature’s importance is obvious. Since a name without a secondary meaning suggests no business or product in particular, the public is unlikely to be misled when one is borrowed.”

21. In Van der Walt v Humansdorp Marketing CC 1993 (4) SA 779 SE the court held that the general principle in a passing off application is that a respondent will be interdicted if he falsely presents that his business is, or he is connected with the business of the applicant. Adoption by the respondent of a name for his business similar to that used by the applicant is not sufficient. The test is whether (1) there is likelihood that the respondent’s use of the name in question for his business will lead the public to believe that the respondent’s business is the same as that of the applicant or that it is, in some way, connected or associated with it and (2) whether such confusion is likely to cause damage to the applicant’s goodwill by diverting customers from his business to that of the respondent.

22. Initially I was under the impression that the applicant’s claim to the right to sole use of the words “Learn to Drive” was premised, amongst others, on its registered name “Learn to Drive CC.” The applicant’s attorneys in their letter to the respondent say:

“Learn to Drive” is the registered name of a duly registered and incorporated Close Corporation.”

However, during argument Mr Brooks explained that the applicant placed no reliance on its registered name for purposes of this case.

23. Where a trader uses a word in its ordinary meaning in connection with her or his goods or business, or uses a trade or service mark or trade name which is a descriptive term, it must be proved that, through use, such word acquired a secondary meaning and designates the plaintiff’s business. See: Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green Point) (Pty) Ltd 1976 (2) SA 930 (A) at 938. In the founding affidavit Mrs Nichols states that “the name “Learn to Drive” has acquired a repute as a result of its advertising methods and the use of its name”. However, the fact that the applicant may have built a reputation for itself does not necessarily mean that the words contained in the applicant’s trade name had developed a secondary meaning such that in the minds of the public they were distinctive of the applicant’s business. Mrs Nichols states in her founding affidavit that “its very name (referring to the applicant’s business), Learn to Drive CC is synonymous with driving schools in this area and the proud reputation it has achieved.” Leslie Patrick Wium, a previous member of the applicant (the founder member) states in his affidavit that the name “Learn to Drive” became synonymous with him. I am unable to find any evidence on the papers on which to conclude that the applicant’s reputation had developed such, that the words in question referred to the applicant’s business in the minds of the public.

24. From the advertisements attached to the papers, it appears that the applicant advertised its business simply as “Learn to Drive” or “LEARN TO DRIVE” whereas the respondent advertised his business as “Learn to Drive K53 legally (sic) Uncle Paul 072 1738 131 or 740 1957”. In some of the respondent’s adverts there would also be a picture of a motor vehicle and the words “Registered, professional driving instructor cell: 072 1738 131, tel 043 740 1957, Tutor experience is your licence to success”.

25. The assertion that the style in which the respondent’s advertisements, is presented was copied from the applicant’s trade name, is not supported by the evidence. In seven out of fourteen examples of the applicant’s advertisements, attached to the founding papers, the words are all written in capital letters as “LEARN TO DRIVE”. In one advertisement the applicant is referred to as “The Original Learn To Drive CC” and Mr and Mrs Nichols’ first names and email address appear on the advertisement. The advertisements published by the applicant are, on their own, dissimilar in style. Some refer to “LEARN TO DRIVE”, others to “Learn To Drive CC” and the rest appear as “Learn to Drive”.

26. I did not gain the impression that the respondent denied that the words in question were generally descriptive of the nature of business that both parties conducted. The words are certainly not fancy or invented.

27. On its own version, the applicant became known as the “UNO PEOPLE” because of its use of UNO vehicles in its business, whereas the respondent used Mazda vehicles. It therefore seems to me that the two businesses were clearly distinguishable and the chances of confusion amongst members of the public were very little, if any.

I am mindful of the fact that it was not necessary for the applicant to prove that anyone had actually been deceived or confused. However the fact that in the two years during which the parties conducted business in and around East London there is no evidence of confusion amongst the members of the public regarding the businesses remains relevant in determining the validity of the applicant’s contention. A plaintiff who fails to prove actual confusion or deception runs the risk of failing to establish the likelihood of confusion. See: Rizla International BV & Another v L Suzman Distributors (Pty) Ltd [1996] 2 ALLSA 414C; 1996 (2) SA 527(C).

28. Consequently the applicant has failed to prove a right to protection of the words in question.

In the result:

1. The affidavit in rebuttal is struck out and the respondent is ordered to pay the costs of the application;

2. The application to strike out certain portions of the replying affidavit is dismissed;

3. The main application is dismissed with costs.

_____

N

DAMBUZA

JUDGE

OF THE HIGH COURT

Applicant’s Counsel: Adv Brooks

Applicant’s Attorneys: Michael D Wylde

2nd Floor, NBS Building

15 Terminus Street

EAST

LONDON

Respondent’s Counsel: Adv Dugmore

Respondent’s Attorneys: Bax Kaplan Inc

Clevedon House

2 Clevedon Road, Selborne

Heard on: 07 August 2007

JUDGMENT: LEARN TO DRIVE CC v PAUL VAN DE WEG: CASE NO: EL 133/07