Moosa NO and Others v Urban Gateway (Pty) Ltd (formerly Zitonox (Pty) Ltd) (9255/2017) [2018] ZAWCHC 12 (31 January 2018)

Moosa NO and Others v Urban Gateway (Pty) Ltd (formerly Zitonox (Pty) Ltd) (9255/2017) [2018] ZAWCHC 12 (31 January 2018)

The court found that the respondents’ use of the marks 'Urban°' and 'URBAN°' in relation to clothing and retail services was sufficiently similar to the registered trademarks of Tresso Trading 594 (Pty) Ltd to create a likelihood of confusion among consumers. The evidence established that the respondents operated in the same market and used marks that were visually and conceptually similar to the registered trademarks. The respondents failed to provide credible evidence of a valid license agreement authorising such use, and any purported license would have been voidable as it conflicted with the interests of the concursus creditorium. Accordingly, the applicants were entitled to a final...

Citation
[2018] ZAWCHC 12
Parties
Applicant: Osman Moosa N.O; Applicant: Asma Abdool Gafaar Khamissa N.O; Applicant: Chavonne Badenhorst St Claire Cooper N.O; Applicant: Juanita Martin Damons N.O; Respondent: Urban Gateway (Pty) Ltd (formerly Zitonox (Pty) Ltd); Respondent: Moira Tanya O’Reilly; Respondent: Marcel Philip Joubert; Respondent: Merchant Commercial Finance 1 (Pty) Ltd
Court
Western Cape High Court, Cape Town
Jurisdiction
South Africa
Judgment Date
31 January 2018
Case Number
9255/2017
Procedural Posture
Urgent Application / Final Interdict Application Before the High Court
Outcome
Final interdict granted in favour of the applicants; respondents restrained from infringing the registered trademarks and ordered to remove offending marks. Costs awarded against first and second respondents, including costs of two counsel and costs for postponed hearings.
Judges
Davis
Legal Topics
Trade Mark Infringement, Likelihood of Confusion, Unauthorised Use of Trademark, Liquidation and Concursus Creditorium, License Agreement Dispute
Intellectual Property Commercial and Corporate Trade Mark Infringement Likelihood of Confusion Unauthorised Use of Trademark Liquidation and Concursus Creditorium License Agreement Dispute

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Parties

Osman Moosa N.O

Applicant

Asma Abdool Gafaar Khamissa N.O

Applicant

Chavonne Badenhorst St Claire Cooper N.O

Applicant

Juanita Martin Damons N.O

Applicant

Urban Gateway (Pty) Ltd (formerly Zitonox (Pty) Ltd)

Respondent

Moira Tanya O’Reilly

Respondent

Marcel Philip Joubert

Respondent

Merchant Commercial Finance 1 (Pty) Ltd

Respondent

Procedural Posture

Urgent Application / Final Interdict Application Before the High Court

Legal Issues

  1. 1 Whether the respondents infringed Tresso Trading 594 (Pty) Ltd’s registered trademarks by using similar marks in the course of trade.
  2. 2 Whether the respondents’ use of the marks was likely to deceive or cause confusion among consumers.
  3. 3 Whether the respondents had a valid license agreement permitting use of the trademarks.

Ratio Decidendi

The court found that the respondents’ use of the marks 'Urban°' and 'URBAN°' in relation to clothing and retail services was sufficiently similar to the registered trademarks of Tresso Trading 594 (Pty) Ltd to create a likelihood of confusion among consumers. The evidence established that the respondents operated in the same market and used marks that were visually and conceptually similar to the registered trademarks. The respondents failed to provide credible evidence of a valid license agreement authorising such use, and any purported license would have been voidable as it conflicted with the interests of the concursus creditorium. Accordingly, the applicants were entitled to a final...

Court Disposition

Final interdict granted in favour of the applicants; respondents restrained from infringing the registered trademarks and ordered to remove offending marks. Costs awarded against first and second respondents, including costs of two counsel and costs for postponed hearings.

Orders

  • A final interdict is issued restraining the first, second, and third respondents from infringing Tresso Trading 594 (Pty) Ltd’s registered trademarks by using identical or similar marks likely to deceive or cause confusion.
  • The marks 'Urban°' and/or 'URBAN°' are specifically included within the scope of the interdict.