KARE v CHITAITAI CHEMICALS (PRIVATE) LIMITED (157 of 2024) [2024] ZWHHC 157 (23 April 2024)

TERRENCE KARE versus CHITAITAI CHEMICALS (PRIVATE) LIMITED HH 157-24 HC 4482/23 HIGH COURT OF ZIMBABWE ZHOU J HARARE, 20 March & 23 April 2024 Opposed Application N Chakandida, for the applicant T Zhuwarara, for the respondent ZHOU J: This is an application for an interdict restraining the respondent from using the trademark registered under the mark “CHITAITAI-CHEMICALS” on the grounds that the trademark belongs to the applicant and that the applicant has withdrawn its consent to the use thereof by the respondent. The applicant also seeks an order for the respondent to deliver to it all materials bearing the trademark or resembling it. The relief is being sought in terms of s 9A of the Trademarks Act [Chapter 26:04]. The application is opposed by the respondent. BACKGROUND The applicant is a former director and shareholder of the respondent. He states in his founding affidavit that he withdrew from both the shareholding and directorship owing to disputes that he did not disclose in the papers. Following his departure from the respondent, applicant addressed a letter to the respondent dated 29 June 2023, demanding that the respondent stops using the CHITAITAI-CHEMICALS trademark because it belonged to him. The respondent did not respond to the letter. It continued to use the trademark, hence the instant application for the relief referred to above. In the opposing affidavit the respondent states that the applicant was its director and secretary whose responsibility it was to register the CHITAITAI-CHEMICALS trademark on its behalf. It contends that the registration of the trademark in the applicant’s personal name was fraudulent and should not be countenanced by this court. FACTS THAT ARE COMMON CAUSE These following facts are common ground: HH 157-24 HC 4482/23 1. The respondent is Chitaitai Chemicals (Private) Limited, a company duly incorporated in accordance with the laws of Zimbabwe. The company is in the business of manufacturing floor polish and other related materials for the maintenance of floors. 2. The applicant is a former director and shareholder of the applicant. He also did not dispute that he was its company secretary, and must thus be taken to admit that fact, see Fawcett Security Operations (Pvt) Ltd v Director of Customs & Excise & Others 1993 (2) ZLR 121(S) at 127F; Chihwayi Enterprises (Pvt) Ltd v Atish Investments (Pvt) Ltd 2007 (2) ZLR 89(S); Minister of Lands & Ors v Commercial Farmers Union 2001 (2) ZLR 457(S) at 494C-D, Chindori-Chininga v National Council for Negro Women 2001 (2) ZLR 305(H) at 308H-309A ). 3. An application for the registration of a trademark, which is the trademark in dispute in casu, was made and granted. 4. The communication pertaining to the registration of the trademark was on the respondent’s letterhead, bearing its address. 5. The applicant signed the communication, and endorsed the title of director below his signature. 6. A payment to the relevant Government Department for the registration of the trademark was made by the respondent. The receipt is in the name of the respondent and the respondent is also recorded as the ‘customer’. 7. A subsequent payment was receipted in the name of the applicant as the ‘customer. And the address given is not an address as such but the name of the applicant. THE LAW Section 9A of the Trademarks Act provides as follows: “9A. Entitlement to and nature of civil remedies for infringement (1) Subject to this Act, an infringement of a registered trade mark shall be actionable at the suit of the proprietor and any registered user of the mark. (2) Subject to this Act, in any proceedings for an infringement of a registered trade mark there shall be available to the plaintiff all such remedies by way of damages, interdict, attachment, the rendering of account, the delivery of improperly marked goods or of articles used or intended to be used for marking goods or otherwise, as are available in respect of the infringement of any other proprietary right.” HH 157-24 HC 4482/23 In casu the remedy sought is that of a final interdict. The requirements for such an interdict are settled. These are set out in the leading case of Setlogelo v Setlogelo 1914 AD 221 at 227 as follows: (1) A clear right; (2) An injury actually committed or reasonably apprehended; and (3) The absence of similar or adequate protection by any other ordinary remedy. See also Bulawayo Dialogue Institute v Matyatya NO & Ors 2003 (2) ZLR 79(H); Rowland Electro Engineering (Pvt} Ltd v Zimbank 2003 (1) ZLR 226(H) at p. 230 All of these requirements must be established in order for the applicant for a final interdict to succeed. If any of them is not proved then the application cannot succeed. The word ‘clear’ in relation to the requirement for a clear right to be established relates to the degree of proof that is required to establish the right. The existence of a right is a matter of substantive law; whether that right is clearly established is a matter of evidence. B. Prest, Interlocutory Interdicts p. 47; Movement for Democratic Change (Tsvangirai) & Ors v Lilian Timveous & Ors SC 9 – 22. The right must be established on a balance of probabilities. APPLICATION OF THE LAW TO THE FACTS The applicant produced the registration certificate to prove his title to the trademark. Section 70 of the Trademarks Act provides that the fact that a person is registered as the proprietor of a trademark is prima facie evidence of the validity of the registration. Prima facie proof is insufficient for the purposes of a final interdict, as shown by the authorities cited. What is required is clear proof. In the instant case the registration in the name of the applicant is being challenged on the basis that the applicant fraudulently registered in his own name the trademark of the respondent. In support of its case, the respondent has tendered proof in the form of the application for registration as well as a payment made in connection therewith. The letter dated 19 August 2013 informing the Intellectual Property office of the application to register the trademark is on the letterhead of the respondent as noted earlier on. The signature of the applicant in that letter shows that he signed in his capacity as director of the respondent and not in his individual capacity. Another letter written on the same day is also on the respondent’s letterhead and makes reference to “our application to register our trademark”. The letter was meant to explain the English name for “Chitaitai”. Again, the applicant signed that letter in his capacity as director. HH 157-24 HC 4482/23 A receipt dated 14 March 2014 in respect of a payment of a sum of US$80 for the application for the trademark was issued in the name of the respondent which is recorded as the customer. The address in the receipt is that of the respondent. This shows that the payment for the application was made by the respondent. However, in a surprising turn of events, another receipt dated 9 June 2014 records the name of the applicant as the ‘customer’. Where the address is supposed to be stated what appears is the applicant’s name rather than an address. The contents of this receipt raise a suspicion regarding the circumstances in which it was obtained and the motive thereof. The address on the certificate is that of the respondent albeit the certificate is in the name of the applicant. Applicant’s counsel confirmed during the hearing that the respondent’s address was not at any time the applicant’s personal address. This too raises questions about the manner in which the applicant handled the application for the trademark. While the court does not readily make a factual finding that a fraud has been committed on the papers, the facts revealed in this case would point to fraudulent conduct. If the trademark was meant to be the applicant’s personal property there was no reason for him to use the respondent’s letterhead in matters concerning its registration. The respondent would not have been made to pay for the applicant’s personal property, and have its name and address recorded as the “customer”. Equally, the certificate would not have carried the respondent’s address. The least that can be said is that the facts in casu are in dispute, and the applicant cannot obtain a final interdict on the basis of facts that are in dispute. This is so because he has failed to establish a clear right to the trademark on the papers before this court, see Nument Security (Pvt) Ltd v Mutoti & Others 2002 (2) ZLR 300(S); Phillips Electrical (Pvt) Ltd v Gwaunza 1988 (2) ZLR 117(H) at p. 123; Zezere v Earthwales (Pvt) Ltd & Another HH 26 – 24, at p.4 These authorities show that where there is a material dispute of facts the applicant would have failed to establish a clear right to justify the grant of a final interdict. The applicant’s case fails on this basis alone. DISPOSITION In the result, IT IS ORDERED THAT: HH 157-24 HC 4482/23 1. The application be and is dismissed with costs. Chakandida & Associates, applicant’s legal practitioners Moyo Chikono & Gumiro, respondent’s legal practitioners