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[2016] ZAWCHC 105
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Bertie Van Zyl (Pty) Ltd v Up To Date Tomatoes (Pty) Ltd (13329/14) [2016] ZAWCHC 105 (28 July 2016)
REPUBLIC
OF SOUTH AFRICA
IN THE HIGH COURT
OF SOUTH AFRICA
(WESTERN
CAPE DIVISION, CAPE TOWN)
Case
Number: 13329/14
DATE:
28 JULY 2016
In
the matter between:
BERTIE
VAN ZYL (PTY)
LTD
...............................................................................................
Applicant
And
UP
TO DATE TOMATOES (PTY)
LTD
..............................................................................
Respondent
Delivered:
28 July 2016
JUDGMENT
BOQWANA,
J
Introduction
[1]
This is an interlocutory application
brought by the respondent against the applicant for an order in the
following terms:
1.1
That the applicant comply with the
respondent’s Notice in terms of Rule 35(12) dated 9 September
2014 and served on the applicant
on 10 September 2014, in particular
paragraphs 1,2 and 4 thereof within a period of 5 (five) days of the
order to be granted by
this Court;
1.2
That the respondent be granted an extension
of 20 (twenty) days from the date on which the applicant complies
with the Court order
in 1.1 above, within which to file its answering
affidavit in the main application under the above case number.
1.3
In the alternative, that paragraphs 7.1 to
7.3 of the founding affidavit of Phillipus Johannes Van Zyl (‘Van
Zyl’) be
struck out as irrelevant matter.
1.4
That the applicant pays costs of this
application.
[2]
The application is opposed. The
respondent is the applicant in this application and the applicant the
respondent. For convenience
parties are referred to as they are in
the main application.
[3]
On 29 July 2014 the applicant
brought an interdict in the main application for an order restraining
the respondent from infringing
its trade mark ROMANITA by making
unauthorised use, in the course of its trade, of the trademarks
YAMANITA and/or I LOVE YAMANITA
or any other trade mark which is
confusingly or deceptively similar to the aforesaid registered
trademark of the applicant; and
from passing-off its goods as those
of the applicant.
[4]
After filing its notice of intention
to oppose, the respondent, delivered a notice in terms of rule 35
(12) on 10 September 2014
requiring the applicant to produce the
following documents for inspection:
‘
1.
Those portions of the Applicant’s records from which the
sales
figures
contained in paragraphs 7.2 and
7.3 of Mr. VAN ZYL’S founding affidavit were extracted;
2.
The
“other advertisements”
and the newspapers in which such advertisements appeared, as referred
to in paragraph 7.4.2 of Mr. VAN ZYL’S founding affidavit;
3. The price tag
referred to in paragraph 2.3 of the affidavit Mr. MALAN CILLIĖ
VAN ZYL;
4. The electronic
records of the Johannesburg Fresh Produce Market from which the
figures contained in paragraph 3.4 of the affidavit
Mr. IMRAAN
DANIELS, as confirmed by the affidavit of Mr JUSTY RANGE, and those
shown in annexure “ID-2”, were obtained.’
[5]
Van Zyl deposed to an affidavit on
behalf of the applicant in reply to the respondent’s rule 35
(12) notice. In regard to
the request in paragraph 1 of the notice
quoted above, Van Zyl alleged that the sales figures were extracted
from the electronic
accounting records of the applicant and to
provide copies of all the accounting records for the years 2005 to
date is simply not
feasible. He attached to his affidavit screenshots
produced by the applicant’s accounting system in respect of
sales figures
referred to in paragraphs 7.2 and 7.3 of the
applicant’s founding affidavit in the main application. He
invited the respondent,
upon prior arrangement, to visit the offices
of the applicant in Moeketsi and view the electronic accounting
system of the applicant,
should they regard the screenshot annexures
as not being sufficient.
[6]
As regards other advertisements
requested in paragraph 2 of the notice, Clive Garret (‘Garret’)
who deposed to a supporting
affidavit on behalf of the applicant
stated that he had not been able to gather all advertisements
relating to the ‘ROMANITA’
trade mark as they appeared in
newspapers and elsewhere, as they (presumably members of the
applicant) would not necessarily keep
copies of the advertisements as
part of their records. He attached copies of advertisements appearing
in Letaba Herald newspaper
and website Guzzle which he alleged he
could locate.
[7]
In regard to paragraph 3 of the
notice dealing with the price tag, Van Zyl alleged that the price tag
which appears in the photograph
annexed to his affidavit (in the main
application) was neither in his nor the applicant’s possession
or control.
[8]
His response to paragraph 4 of the
notice was that the sales figures indicated and referred to in Justy
Range (‘Range’)’s
affidavit were obtained by
accessing the electronic records of the Johannesburg Fresh Produce
Market via their electronic sales
processing system; the electronic
records of the Johannesburg Fresh Produce Market were
therefore,
not in possession or under the control of the applicant
.
Further, that the applicant already tendered inspection of
the
copies of the report printed from the electronic records
of
the Johannesburg Fresh Produce Market which is voluminous, upon prior
arrangement (in paragraph 1.3 of Range’s affidavit).
If
necessary, arrangements could be made for the respondent to meet with
Range,
in order for Range to access the
electronic records of the Johannesburg Fresh Produce Market
,
in the presence of the respondent.
[9]
Paragraph 3 was not persisted with
because of the allegation by Van Zyl that he was not in possession
nor in control of the price
tag annexed to his affidavit in the main
application nor was the applicant.
[10]
Parties have since the hearing of
this matter managed to reach agreement in respect of paragraphs 1 and
2. What remains to be determined
is the request in paragraph 4 of the
notice and the issue of costs. Parties sent me a letter pursuant to
my directives dated 27
June 2016 detailing terms of the agreement and
issues that remained for determination. I need not repeat contents of
the letter
as they are self-explanatory. I wish to thank the
parties for their efforts in reaching agreement on the issues they
have.
Brief
background
[11]
Before considering the remaining
issues of the electronic records of the Johannesburg Fresh Produce
Market and costs, it is appropriate
to sketch a brief background of
what the issue is in the main application. In paragraph 7.7 of the
founding affidavit in the main
application, Van Zyl alleges on behalf
of the applicant that the applicant has made continuous use of its
ROMANITA trade mark for
nearly a decade and has acquired a
substantial reputation and goodwill in South Africa and qualifies as
a well-known mark for the
purpose of the Trade Marks Act 194 of 1993
(‘Trade Mark Act’).
[12]
He further alleges that the
applicant uses a special transparent bag with a solid green border at
the bottom with the trade mark
ROMANITA appearing in a distinct font
and colour green, with a white border, which no other producer has
ever offered for sale,
its midi and mini plum tomatoes in similar
packaging as the applicant does in the 500g weight division, except
for the respondent
who has recently commenced to do so using the
trademark YAMANITA or I LOVE YAMANITA. The trademarks used by the
respondent, so
the applicant alleges, are visually and phonetically,
confusingly similar to the applicant’s trademark ROMANITA and
the only
difference is the YA and RO appearing infront of MANITA.
[13]
The applicant contends further that
not only would it suffer loss in sales with the public purchasing the
respondent’s product
believing it to emanate from the
applicant, its reputation would suffer if the quality of the
respondent’s product
is not the same as its own.
[14]
Van Zyl alleges that the applicant
has acquired a significant reputation and goodwill in its ‘get-up’,
on its own as
a result and in view of the substantial sales figures
mentioned in paragraph 7.3 of its founding affidavit to the main
application.
He also refers to the affidavit of Imraan Daniels
(‘Daniels’) to support the applicant’s contention.
[15]
Daniels is a market agent working in
the tomato division of RSA Market Agents at the Cape Town Market, he
deposed to an affidavit
in support of the applicant’s case in
the main application confirming that the applicant had achieved
substantial sales in
respect of its mini and midi plum tomatoes,
bearing the trademark of ROMANITA and that the trademark concerned
can certainly be
regarded as a market leader in the cocktail tomato
field. He attached to his affidavit a schedule setting out sales
figures of
ROMANITA tomatoes sold from the Johannesburg Fresh Produce
Market for the years 2008 until 2014 to illustrate the extent of the
applicant’s reputation in its tomatoes. He also included in his
affidavit a schedule reflecting the sales figures for the
Johannesburg Fresh Produce Market, expressed in Rands and units of
ROMANITA tomatoes sold in the 500g weight division, compared
to the
total amount of tomatoes sold, for the years 2008 to 2014.
[16]
Daniels further alleged that he
obtained the sales figures referred to in his affidavit and annexed
schedule from Range, the IT
Specialist of RSA Market Agents.
According to him, Range attained this information from
the
electronic records of the Johannesburg Fresh Produce Market via their
electronic sales processing system (SPS)
.
He confirmed that the affidavit of Range would be filed with his and
that he was advised that it was not possible to obtain similar
figures in respect of the Cape Town Market, as the information was
captured on the system, using a generic code as reference and
not the
trademark ROMANITA. Range deposed to a supplementary affidavit
confirming that he accessed the electronic records of Johannesburg
Fresh Produce Market as alleged by Daniels.
The issue of
electronic records of the Johannesburg Fresh Produce Market
[17]
In a nutshell, the respondent’s
contention on this aspect is that it is
entitled to inspect the records the applicant relies on. It alleges
that Van Zyl has set out no basis why the applicant should
be excused
from complying with the rule in this regard. In its view, the
respondent is entitled to test the evidence relied upon
by the
applicant in its case against it to the fullest extent, if the
applicant chooses to rely on records of another entity, it
should
ensure that those records would be fully available to the respondent
to exercise its right. According to it, t
he
tender made by the applicant for Range to access the electronic
records again in the respondent’s presence does not comply
with
rule 35 (12). It submits that should the applicant not be in a
position to make such reco
rds
available, it should not be allowed to rely on the evidence in its
case against the respondent.
[18]
The applicant on the other hand
submits that the sales figures referred to in the main application by
Daniel came from a report
printed out by Range from the electronic
records of the Johannesburg Produce Market. Such electronic records
were neither the applicant’s
nor those of RSA Market agents.
Daniels did not have access to these records himself and they were
accessed by Range via electronic
sales processing system of the
Johannesburg Produce Market. It further contends that inspection of
the report printed by Range
has been tendered and the applicant has
even gone further by stating that if necessary, arrangements could be
made to meet Range
in order for him to once again access the
Johannesburg Produce Market electronic system in the respondent’s
presence. In
the circumstances, the applicant contends that it has
complied with the Rule 35 (12) notice.
[19]
Whilst the
applicant points out that the document mentioned by Daniels is a
report which has been tendered for inspection, it does
not seem to be
pressing hard on the point that the electronic records are not the
document mentioned by Daniel. It appears to be
ambivalent on this
issue, in my view, because on the one hand it notes that reference is
made to printed records by Daniels whilst
on the other extending an
invitation for the electronic records to be accessed by Range, if
necessary, in the presence of the respondent.
This can be interpreted
to mean that the applicant does not believe that the respondent is,
in any event, entitled to the electronic
records because they are not
the document mentioned by Daniel from where the sales figures were
derived and therefore it is merely
doing the respondent a favour by
tendering access by Range in the manner suggested by it. It can also
be taken to mean that indeed
the applicant acknowledges that it has a
duty to make the electronic records from which the report were
printed available to the
respondent for inspection but that it cannot
give access because the records do not belong to it nor to RSA Market
Agents as it
alleges.
[20]
I deal with
these issues in turn. Rule 35 (12) provides as follows:
‘
Any
party to any proceeding may at any time before the hearing thereof
deliver a notice as near as may be in accordance with Form
15 in the
First Schedule to any other party in whose pleadings or affidavits
reference is made to any document or tape recording
to produce such
document or tape recording for his inspection and to permit him to
make a copy or transcription thereof. Any party
failing to comply
with such notice shall not, save with the leave of Court, use such
document or tape recording in such proceeding
provided that any other
party may use such document or tape recording.’
[21]
In
Uniliver
plc and Another v Polagric (Pty) Ltd
2001 (2) SA 329
(C) at 336 G-I, Thring J held:
‘
It
is clear from these decisions that, otherwise than is the case with
discovery under Rule 35(1) and (2) read with Rule 35 (13),
a
defendant or respondent does not have to wait until the pleadings
have been closed or his opposing affidavits have been delivered
before exercising his right under Rule 35 (12):
he
may do so at any time before the hearing of the matter. It follows
that he may do so before disclosing what his defence is, or
even
before he knows what his defence, if any, is going to be.
He is entitled to have the documents
produced “for the specific purpose of considering his position”
(Own emphasis)
[22]
In
Protea
Assurance Co Ltd and Another v Waverley Agencies CC and Others
1994 (3) SA 247
(C) at 248 G-I, Marais J compared the case of
Erasmus
v Slomowitz
(2)
1938 TPD 242
at 244
where Murray J held that, ‘
...the
terms of the Rule do not require a detailed or descriptive reference
to such documents, nor is any distinction made between
documents upon
which the action or other proceedings is actually founded and
documents possessing merely evidentiary value
.’
[23]
The respondent’s entitlement
to the electronic records of Johannesburg Fresh Produce Market relied
upon by the applicant does
not seem to be a strenuously contested
issue as I have already indicated. Even if it were, my view is that
Van Zyl’s assertions
of the applicant’s alleged
reputation and the goodwill of its trademark are based, inter alia,
on Daniels’ allegations
in respect of electronic accounting
records of the Johannesburg Fresh Produce Market from which
information relating to sales figures
was attained.
[24]
The respondent submits that it is
not enough to tender a report printed from the electronic records of
the Johannesburg Fresh Produce
Market, it is entitled to access
records from which the report was taken. I agree with its contention
in this regard because reference
by Daniels and Range is made to the
electronic records which Range had access to. He then printed a
report from those records.
[25]
The applicant is therefore obliged
to produce the document for inspection subject to the limitations
such as that it is not in its
possession and therefore cannot produce
it which the court cannot compel it to do so. See
Gorfinkel
v Gross, Hendler & Frank
1987 (3)
SA (C) 766 at 774G-I) where the Court held:
‘…
the
rule should, to my mind, be interpreted as follows: prima facie there
is an obligation on a party who refers to a document in
a pleading or
affidavit to produce it for inspection if called upon to do so in
terms of Rule 35 (12). That obligation is subject
to certain
limitations, for example, if the document is not in his possession
and he cannot produce it, the Court cannot compel
him to do so…,
the onus would be on the recipient of the notice to set up facts
relieving him of the obligation to produce
the document’
[26]
In a recent Supreme Court of Appeal
decision of
Centre For Child Law v
Hoërskool Fochville and Another
2016 (2) SA 121
(SCA) at para [18] having noted differing views on
the issue of onus, after having referred to the passage in
Gorfinkel
mentioned above
,
Ponnan JA, without deciding on the
point, expressed the following in relation to rule 35 (12) and the
issue of onus at para [18]:
‘
For
my part, I entertain serious reservations as to whether an
application such as this should be approached on the basis of
onus
.
Approaching the matter on the basis of
onus
may well be to misconceive the nature of the enquiry. I thus deem it
unnecessary to attempt to resolve the disharmony on the point.
That
notwithstanding, it is important to point out that the term
onus
is not to be confused with the burden to adduce evidence (for example
that a document is privileged or irrelevant or does not exist).
In my
view, the court has a general discretion in terms of which it is
required to try to strike a balance between the conflicting
interests
of the parties to the case. Implicit in that is that it should not
fetter its own discretion in any manner and particularly
not by
adopting a predisposition either in favour of or against granting
production. And, in the exercise of that discretion, it
is obvious, I
think, that a court will not make an order against a party to produce
a document that cannot be produced or is privileged
or irrelevant.
[27]
In
Tracklot
General Trading (Pty) Ltd v Sethole and Another
(7406/2015)
[2016] ZAGPPHC 214 (23 March 2016) at para 24, Olivier AJ referring
to Ponnan JA’s remarks above, postulated that
a court had a
discretion which it should exercise by striking a balance between
interests of various parties and in doing this
it should be guided by
the justifications given by the party for resisting the delivery of a
particular document. ‘
In other
words if a party resists the delivery of a particular document he
should adduce evidence why he is resisting. It is only
with this
evidence that the court would be in a position to exercise its
discretion properly and appropriately. But it is important
that
neither party should be prejudiced unfairly in the process.'
[28]
The applicant claims that it is not
in possession of the electronic records from which the report printed
by Range was derived containing
sales figures. It needs to set up
facts to support its claim. In
Moulded
Components and Rotomoulding South Africa (Pty) Ltd Coucourakis and
Another
1979 (2) SA 457
(W) at 461
C-D, the court held, inter alia, that:
‘…
It
seems to me that it is easy to conceive of cases where a document is
not in the actual possession of a party, but where the Court
would
nevertheless not hesitate to make an order in terms of Rule 35 (12)
.
I agree also with the qualification expressed by counsel for the
applicant, namely that where the party in question cannot produce
the
document, it is obvious that the Court will not make an order against
him in respect of such a document…
’
(Own
emphasis)
[29]
I am in agreement with Olivier AJ in
Tracklot
supra at para [28] that ‘
at least
a reasonable attempt should be made to find the document and produce
it. If such an attempt was made, but unsuccessfully,
this should be
confirmed by affidavit. Where a document is simply not in possession
of the party and he has no knowledge of where
it can be found, a
court would not be able to force compliance.
But
if the party knows where the document can be found, it must at least
make an attempt to find it…
(Own emphasis)
[30]
The respondent argues that no
explanation has been given as to how and why it was possible for the
applicant to have access to the
electronic records of Johannesburg
Fresh Produce Market which it relies on but it is not possible to
have those produced for inspection
by the respondent. The respondent
wishes to have access to the document in the same manner as Range
did, so as to draw its own
conclusions from the documents, which
conclusions may be different from Range’s.
[31]
In my view, the point raised by the
respondent is a valid one. The applicant knew when it relied on the
sales figures derived from
the electric records of Johannesburg Fresh
Produce Market that the document did not belong to it but then went
ahead to rely on
it to support its case. It is not stated how it was
possible for Range who worked as an IT Specialist of RSA Market to
access the
Johannesburg Produce Market electronic records via an SPS
if it was not possible for similar access to be arranged in
respect
of the respondent. The respondent should be allowed to
inspect the electronic records in the same way the applicant was able
to.
[32]
There is no explanation as to
whether any attempts were made to approach the third party requesting
access to its electronic records
for purposes of making those
available to the respondent. It is also not expressed why access
would only be restricted to Range
or why Range should supervise the
access. The basis upon which Range could conveniently access the
records is not explained, whether
it was by virtue of him being an IT
specialist for RSA Market or whether he made special arrangements;
and why that access could
not be given to the respondent. It is only
fair that the respondent be allowed to inspect the electronic records
so as to consider
its position.
[33]
There was a debate about which
provision would be applicable in the event of non-compliance with
rule 35(12). The respondent’s
counsel was of the view that it
would be entitled to apply for relief in terms of rule 30A to have
the relevant paragraphs struck
out, whilst the applicant’s
counsel argued that the respondent may advance submissions at the
hearing of the main application
as to the weight to be attached to
the documents concerned. According to the applicant, the respondent
may also rely on the built-in
sanction provided for in rule 35 (12)
namely that ‘
[a
]
ny
party failing to comply with such notice shall not, save with the
leave of Court, use such document or tape recording in such
proceeding provided that any other party may use such document or
tape recording’
[34]
The respondent relies on the
decision of
Machingawuta and Others v
Mogale Alloys (Pty) Ltd and Others
2012
(4) SA 113
(GSJ) at para 8 where the court held:
‘
I
am of the view that the applicants are not confined to the relief
provided in rule 35 (12) only. The relief provided in rule 30A
is
wide enough to cover failure to comply with the request made in terms
of rule 35 (12) of the uniform rules of court…’
[35]
Rule 30A provides that:
‘
Where
a party fails to comply with these rules or with a request made or
notice given pursuant thereto, any other party may notify
the
defaulting party that he or she intends, after the lapse of 10 days,
to apply for an order that such rule, notice or request
be complied
with or that the claim or defence be struck out.’
[36]
Ms Joubert who appeared for the
respondent was concerned that these are application proceedings and
if the relevant paragraphs are
not struck out in terms of rule 30A
they would remain and the respondent would not have had the
opportunity the test the veracity
of the said allegations.
[37]
I am in agreement that nothing
precludes the respondent to approach the court in terms of rule 30A.
As Notshe AJ found in the
Machingawuta
case, Rule 30A is wide enough to allow relief when there has been
non-compliance with rule 35(12).
[38]
In regard to where the inspection
should take place, the respondent relied on rule 35 (6) to advance an
argument that the inspection
must be at the attorney’s office
or if a party is not represented by an attorney, at some convenient
place mentioned in the
notice.
[39]
Although rule 35 (12) itself does
not specify the manner in which or the place where documents may be
inspected, I see no reason
why the inspection called for in terms of
that rule should not take place in the manner provided under rule 35
(6). There clearly
should be an element of convenience. Reasonable
efforts should be made to produce and make available for inspection
the electronic
records at the applicant’s attorney’s
office and if that is not feasible, arrangements should be made for
the electronic
records to be made available on a flash drive or disc
to the respondent. If the applicant is unable to produce the
documents for
inspection, the respondent is then permitted to
approach the court in terms of rule 30A.
[40]
In conclusion on this issue, I am of
the view that the offer to inspect copies of a printed report does
not fully comply with the
provisions of Rule 35 (12). As I have
already indicated reliance is placed on the electronic records of the
Johannesburg Fresh
Produce Market as a source document. The printed
report is a product of the electronic records. Secondly, the
respondent is entitled
to inspect the electronic records of
Johannesburg Fresh Produce Market as discussed above and should that
not be possible, the
respondent is entitled to approach the court in
terms of rule 30A.
[41]
I am in agreement with the
respondent that if the applicant wishes to rely on the information
attained from the electronic records
of Johannesburg Fresh Produce
Market, it must make those records available for inspection in terms
of the rules. To rely upon those
documents without affording
inspection to the respondent would, in my view, result in an
injustice as the respondent would not
be able to test the averments
made by Van Zyl with reference to the Johannesburg Fresh Produce
Market.
Costs
[42]
As to costs, the respondent has been
successful in this application. I see no reason why I should depart
from the general rule that
costs follow the result. The matter was
fully argued in respect of all the paragraphs contained in the
application to compel compliance
with the rule 35(12) notice before
some paragraphs were settled as indicated before. Those aspects were
settled only after the
hearing of the matter. Whilst parties were not
far apart, and the applicant had tendered inspection of documents
requested in paragraph
1 of the notice, it seems to me the tender did
not obviate the necessity of the matter being heard. The matter was
resolved in
the respondent’s favour and the settlement also
largely favours it. It therefore seems appropriate in my view that
costs
be awarded in the respondent’s favour.
[43]
For those reasons, I make the
following order:
1.
The applicant is directed to comply with
paragraph 4 of the respondent’s notice in terms of rule 35(12)
dated 9 September
2014 and served on it on 10 September 2014 as
directed in paragraph 39 of this judgment within 10 (ten) days of
this order;
2.
In the event of the applicant not complying
with the order in paragraph 1 above, the respondent shall be entitled
to approach this
court on the same papers, duly supplemented if
necessary, for an order striking out as irrelevant matter, those
paragraphs of the
founding affidavit of the applicant in the main
application in which reference is contained to those in respect of
which the applicant
has not complied with the order in paragraph 1
above.
3.
The respondent is granted an extension of
20 (twenty) days from the date on which the applicant’s
compliance with the order
in paragraph 1 above, within which to file
its answering affidavit (s) in the main application.
4.
The applicant to pay the costs of this
application.
N
P BOQWANA
Judge
of the High Court
APPEARANCES
For the
Applicants: Adv. I Joubert
Instructed by:
Spamer Triebel Inc. Bellville, c/o Norman Wink & Stephens, Cape
Town
For the
Respondents:Adv. S Fergus
Instructed
by: Adams & Adams, Cape Town