South Africa Case Law

Akzonobel Coatings International B.V and Another v Dumax Paints (Pty) Ltd and Others (1723/2023)

Akzonobel Coatings International B.V and Another v Dumax Paints (Pty) Ltd and Others (1723/2023) [2023] ZAFSHC 450; 2023 BIP 10 (FB) (9 November 2023)

Court

Free State High Court, Bloemfontein

Case number

1723/2023

Judge

JP Daffue

The court found that the applicants' Dulux trade mark is well-known and enjoys substantial reputation and goodwill in South Africa. Although the marks Dulux and DUMAX are not identical, the respondents' use of DUMAX and DUMAX PAINTS is sufficiently similar to the Dulux mark to take unfair advantage of its distinctive character and repute. The respondents failed to provide a convincing explanation for the choice of the DUMAX mark, and the evidence showed an intention to benefit from the applicants' established brand. The court held that the requirements for relief under s 34(1)(c) of the Trade…

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• Trade Mark Infringement
• Dilution
• Passing Off
• Trade Marks Act
• Company Name Dispute

Oracle International Corporation and Another v Black Oracle Consortium (Pty) Ltd and Others (26133/2020)

Oracle International Corporation and Another v Black Oracle Consortium (Pty) Ltd and Others (26133/2020) [2023] ZAGPPHC 2062 (10 October 2023)

Court

North Gauteng High Court, Pretoria

Case number

26133/2020

Judge

Flatela Luleka

The court found that the Respondents' use of 'Black Oracle' and 'Black Oracle Consortium' in their company and domain names constitutes trade mark infringement under section 34(1)(a) of the Trade Marks Act. The dominant feature 'Oracle' is distinctive and the addition of 'Black' or 'Consortium' does not sufficiently distinguish the Respondents' mark from the Applicants'. The Respondents operate in the same IT sector, and their use of the mark is likely to deceive or confuse consumers into believing there is an association or connection with the Applicants. The Respondents' conduct also amount…

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• Trade Mark Infringement
• Passing Off
• Company Name Dispute
• Abusive Domain Registration
• Unlawful Competition
• Consumer Protection

Agility Holdings (Pty) Ltd v Company Tribunal and Others (92630/2019)

Agility Holdings (Pty) Ltd v Company Tribunal and Others (92630/2019) [2022] ZAGPPHC 70 (11 February 2022)

Court

North Gauteng High Court, Pretoria

Case number

92630/2019

Judge

N Davis

The High Court reviewed and set aside the Companies Tribunal’s refusal of a default name-change order and upheld costs against the Tribunal.

• Company Name Dispute
• Registered Trademark Infringement
• Review Of Tribunal Decision
• Costs Award Against Statutory Body
• Company-name-dispute
• Trademark-infringement

South African Dance Foundation v Phiri and Others (53311/2013)

South African Dance Foundation v Phiri and Others (53311/2013) [2022] ZAGPPHC 31 (25 January 2022)

Court

North Gauteng High Court, Pretoria

Case number

53311/2013

Judge

Matshitse AJ

The High Court interdicted use of “DanceSport South Africa (DSSA)” after finding it infringed the applicant’s registered trade marks, but dismissed one prayer and ordered no costs.

• Trade Mark Infringement
• Passing Off
• Interdict
• Company Name Dispute
• Trade-mark-infringement
• Passing-off

Highly Nutritious Food Company (Pty) Ltd v Companies Tribunal and Others (91718/2016)

Highly Nutritious Food Company (Pty) Ltd v Companies Tribunal and Others (91718/2016) [2017] ZAGPJHC 471 (22 September 2017)

Court

South Gauteng High Court, Johannesburg

Case number

91718/2016

The court held that the Companies Tribunal erred by focusing only on delay, not the merits, when assessing good cause under section 160 of the Companies Act.

• Company Name Dispute
• Good Cause Requirement
• Judicial Review
• Trade Mark Confusion
• Remittal For Reconsideration
• Company-name-dispute

Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others (164/2015)

Lucky Star Ltd v Lucky Brands (Pty) Ltd and Others (164/2015) [2016] ZASCA 77; 2017 (2) SA 588 (SCA); 2016 BIP 180 (SCA) (27 May 2016)

Court

Supreme Court of Appeal

Case number

164/2015

Judges

Ponnan, Petse, Swain, Dambuza, Kathree-Setiloane

The court held that the appellant failed to establish that the respondents' marks 'Lucky Fish' and 'Lucky Fish and Chips' were so similar to the appellant's registered 'Lucky Star' trade marks as to be likely to deceive or cause confusion. The dominant elements of the marks ('Star' versus 'Fish') were sufficiently distinct, and the shared use of the word 'Lucky' was of minor significance given its generic nature. The court found no likelihood of deception or confusion among consumers, even considering notional use of the registered marks. The appellant's claims under s 34(1)(a), (b), and (c)…

Source excerpt

• Trade Mark Infringement
• Likelihood Of Confusion
• Company Name Dispute
• Distinctiveness Of Marks
• Dilution Of Trade Mark
• Companies Act Section 11

Global Vitality Incorporated v Enzyme Process Africa (Pty) Limited and Others (20884/2013)

Global Vitality Incorporated v Enzyme Process Africa (Pty) Limited and Others (20884/2013) [2015] ZAWCHC 111; 2015 BIP 520 (WCC) (21 August 2015)

Court

Western Cape High Court, Cape Town

Case number

20884/2013

Judge

J Cloete

The applicant established substantial reputation and goodwill in the ENZYME PROCESS trade mark in South Africa since 1995, predating any involvement by the respondents. The respondents' use of the ENZYME PROCESS mark and similar marks, including on goods not supplied by the applicant, was likely to cause confusion and deception among customers. The trade mark registrations by the second respondent were made without bona fide claim to proprietorship and in bad faith, warranting cancellation under the Trade Marks Act. The first respondent's company name, ENZYME PROCESS AFRICA, is confusingly si…

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• Passing Off
• Trade Mark Expungement
• Company Name Dispute
• Domain Name Transfer
• Bona Fide Proprietorship
• Abusive Registration

National Academy of Recording Arts and Music Inc. v Africa Grammy Award (Pty) Ltd (CT001Feb2015)

National Academy of Recording Arts and Music Inc. v Africa Grammy Award (Pty) Ltd (CT001Feb2015) [2015] ZACT 59 (23 July 2015)

Court

Competition Tribunal

Case number

CT001Feb2015

Judge

K Tootla

The Tribunal found that the First Respondent's company name 'AFRICA GRAMMY AWARDS' is not identical to the Applicant's 'GRAMMY' trade mark, thus Section 11(2)(a)(iii) does not apply. However, the name is confusingly similar and likely to mislead the public into believing an association exists, contravening Sections 11(2)(b)(iii) and 11(2)(c)(i) of the Companies Act. The Tribunal emphasized that the test is whether the ordinary reasonable careful person would be confused or misled, and found that the Respondent's intent to associate with the Applicant was evident. The Tribunal does not have ju…

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• Company Name Dispute
• Trade Mark Confusion
• Well Known Trade Mark
• Companies Act Section 11
• Memorandum Of Incorporation

Ramada International Inc. v Ramada Investments (Pty) Ltd (CT030Mar2015)

Ramada International Inc. v Ramada Investments (Pty) Ltd (CT030Mar2015) [2015] ZACT 66 (22 July 2015)

Court

Competition Tribunal

Case number

CT030Mar2015

Judge

K. Tootla

The Companies Tribunal found Ramada Investments’ name confusingly similar to the RAMADA trademark and ordered it to change its name within 90 days.

• Company Name Dispute
• Confusingly Similar Trademark
• Trade Mark Protection
• Memorandum Of Incorporation Amendment
• Company-name-dispute
• Confusingly-similar-trademark

Sasol Ltd v Seasol Industry (Pty) Ltd (CT011Jan2015)

Sasol Ltd v Seasol Industry (Pty) Ltd (CT011Jan2015) [2015] ZACT 64 (14 July 2015)

Court

Competition Tribunal

Case number

CT011Jan2015

Judge

Lizelle Haskins

The Companies Tribunal found Seasol Industry’s name confusingly similar to Sasol’s mark and ordered a name change under the Companies Act.

• Company Name Dispute
• Confusing Similarity
• Trade Mark Infringement
• Memorandum Of Incorporation Amendment
• Company-name-dispute
• Confusing-similarity