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[2016] ZAGPJHC 103
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De Freitas v Jonopro (Pty) Ltd and Others (2015/41435) [2016] ZAGPJHC 103; 2017 (2) SA 450 (GJ) (9 March 2016)
GAUTENG
LOCAL DIVISION, JOHANNESBURG
CASE
NO: 2015/41435
DATE:
09 MARCH 2016
In
the matter between:
DE
FREITAS, MARIO LINO
SOUSA
...................................................................................
Applicant
And
JONOPRO
(PTY)
LTD
................................................................................................
First
Respondent
BETTENCOURT,
JARDIM
ESVALDO
................................................................
Second
Respondent
PANDAZIS,
CHRISTOS
............................................................................................
Third
Respondent
BLACK
BALL
FEVER
............................................................................................
Fourth
Respondent
JUDGMENT
SPILG,
J:
9
March 201
INTRODUCTION
1.
The application seeks two forms of relief.
Following the sequence in the notice of motion they are;
a.
to declare that Messrs J Bettencourt and C
Pandazis are in contempt of an order granted by Georgiadis AJ on 13
December 2015 (incorrectly
stated as 2016 in the notice of motion)
together with costs against them on the attorney and own client scale
jointly and severally
the one paying the other to be absolved
b.
an interim interdict pending an action or
application to be instituted within 21 days restraining all the
respondents, being the
previous mentioned parties to the suit and
Jonopro (Pty) Ltd trading as Cheeky Tiger (‘
Jonopro’)
from conducting the business known as
“SA’s Hottest Action Bar” located at 29 Pretoria Rd
Kempton Park. Costs
are sought against anyone opposing.
2.
The case has been before this court
previously.
On
23 November the applicant brought an urgent application set down for
1 December. It is necessary to repeat verbatim the main
orders
sought;
“
1.
Interdicting the first respondent (Jonopro) from opening its business
under the name and style of Cheeky Tiger at 29 Pretoria
Road, Kempton
Park, Gauteng
2.
Interdicting the first, second and third respondents (ie; Jonopro,
Bettencourt and Pandazis) from passing off the name Cheeky
Tiger and
the get up utilised by the applicant.
3.
Interdicting either the first, second or thirds respondents from
using the name Cheeky Tiger without the consent of the applicant”
3.
Prior to the application all the
respondents had been represented by attorneys Jack Hajibey Inc
although at the time of the launch
of the proceedings the firm had
not yet agreed to accept service of the papers. The application in
those proceedings claimed,
as in the present one, that the applicant
is the owner of the name Cheeky Tiger and which the applicant
describes as a “
distinctive type
of business pioneered by me which I would describe as an adult
entertainment centre targeted at a niche market
catering for the
lower to middle income class”
4.
The applicant set out the history of when
he opened his first business in January 2013 under the name Cheeky
Tiger and how the name
came to be distinctive of his business and why
the name is associated in the minds of a particular section of the
public with a
particular and distinctive type of entertainment having
regard to the facilities and nature of entertainment provided.
5.
The applicant also mentioned the close
personal relationship he had with Bettencourt spanning some 20 years.
It was stated in the
founding papers that in May 2011 they had
thought of the name and discussed in broad terms the concept of adult
entertainment targeting
the lower to middle income groups. The
applicant however contended that nothing further transpired and
Bettencourt continued to
run his own business which was a tavern in
the Midrand trading under the name Ipi-Tombi.
6.
The applicant contended that he had
single-handedly implemented the concept and contracted Mr Figueiredo,
an expert in the field
to design, construct, install and set up
businesses in the hospitality and retail industries. The unique
colour scheme primarily
consisting of red and green and a distinctive
logo for Cheeky Tigers was created. He claimed that other distinctive
features were
established. The applicant also set out how he had
invested money and time to create and build the reputation of Cheeky
Tiger “
in the area”.
7.
The interdict was sought in order to
prevent the respondents from opening their business at an address
approximately 100 metres
from that of the applicant. The respondent
disputed the distance, contending that it was some 300 metres. In a
letter dated 13
November 2015 the respondents’ attorneys
confirmed that the business would open under the name Cheeky Tiger.
8.
The applicant contended that the sole
purpose of opening so close to his business was to capitalise on and
exploit the goodwill
built up by the applicant’s business and
filch customers by misleading them into believing that the two
businesses were associated.
The applicant also sought to demonstrate
that the interior layout would be substantially similar and added
that Figueiredo’s
team had allegedly been poached. The
applicant claimed that he expected to lose some 50% of turnover.
9.
In the founding affidavit the applicant
disclosed the contents of a letter received from the respondents’
attorneys on 13
November 2015. The salient paragraphs read;
“
It
is correct that our clients have entered into an agreement of lease
for premises in Kemsquare and our clients intend trading
at these
premises under the name Cheeky Tiger. Your client is well aware that
our client , Mr Bettencourt , entered into an agreement
with Jerson
Ezequiel Christovao Figueiredo for the purchase of Mr Figueiredo’s
members interest in Taxiarhis Investments
CC and 4RCA Investments CC
and our clients purchased the rights to the name , as well as the
right to open businesses under the
name , wherever our client wishes.
It
is in fact Mr Figueiredo who is restrained from opening businesses
under the name Cheeky Tiger in competition to our client.
Furthermore,
the only agreement entered into between our clients and your client
was an agreement between our client, Mr Bettencourt
and your client,
when your client agreed to change the name Cheeky Tiger at his
business in Kempton Park, to another name and our
clients went so far
as to show their willingness to assist your client with the cost of
changing the name.
In
the circumstances, our clients being the owners of the name Cheeky
Tiger, are entitled to use the name and it is in fact your
client who
must desist from using the name Cheeky Tiger and our clients reserve
their rights to take such action as is necessary
to protect their
rights to the name, Cheeky Tiger.
In
the circumstances, we are instructed to record that there is no basis
whatsoever for your client to prevent our clients from
trading under
the name Cheeky Tiger at the leased premises and any action taken by
your client will be vigorously opposed.”
The
respondents’ position was therefore that Figueiredo’s
member’s interest was purchased by Bettencourt in 2
close
corporations, Taxiarhis Investments CC and 4RCA Investments CC and
that he had also purchased the rights to the name and
to open
businesses under that name wherever Bettencourt wished. It was also
contended that after the fall out between them Bettencourt
and the
applicant concluded an oral agreement in terms of which the latter
agreed to change the name of the business to Manhattan
Nights and
that Bettencourt would assist with the cost of changing the name.
10.
The founding affidavit then set out to
refute the respondents’ version. Firstly the applicant
contended that in April 2013
he had consented to Figueiredo and
Bettencourt opening a Cheeky Tiger in Bree Street in order to develop
the brand (para 30). Figueiredo
created an almost identical Cheeky
Tiger place of entertainment all with the applicant’s consent.
This business operated
under 4RCA.
Another
Cheeky Tiger establishment was opened during September 2013 in Park
Street, Germiston by Figueiredo and Bettencourt. They
operated the
business under Taxiarhis.
The
proposed Randburg operation in the name of Cheeky Tiger was to be
operated by 4 RCA with the applicant, Bettencourt and Figueiredo
having the members’ interest.
11.
Accordingly the sale of agreements in
respect of the members’ interests in Taxiarhis and 4 RCA
related only to the businesses
operated at Bree Street and Park
Street as well as the business to be opened in Randburg.
12.
Moreover while there was a restraint
agreement it was only in respect of Figueiredo being restrained from
opening a business of
Cheeky Tiger or a similar type of business in
competition to Bettencourt. It is common cause that the applicant
never signed a
similar restraint. I consider this to be significant.
The
applicant’s averments were supported by Figueiredo
13.
Bettencourt opposed the first application
and contended that Jonosol was the proprietor and franchisor of the
Cheeky Tiger trademark.
Bettencourt effectively controls Jonosol. It
was contended that Jonosol would seek an interdict restraining the
applicant from
utilising the mark in the course of trade either in
Kempton Park or elsewhere. It is however evident that trademarks of
the name
and logo, being a stylised tiger’s head, was only
applied for electronically on 13 November 2015. This was while the
applicant,
to Bettencourt’s knowledge, was utilising the same
name and adopted a tiger print superimposed over a woman’s form
or face at his Cheeky Tiger establishment in Kempton Park.
14.
Bettencourt furthermore disputed
applicant’s alleged ownership of the name and contended that
the applicant was obliged to
show that he had acquired a common law
right in the mark and that the mark had become distinctive of the
recreational services
rendered by him under it. It was alleged that
the applicant had failed to make out such a case in his founding
papers.
15.
Bettencourt also demonstrated that the
first Cheeky Tiger type concern had in fact opened in about 2000
under the style Ipi Tombi
and that he had changed the name to Cheeky
Tiger in 2011. However Cheeky Tiger in Midrand was completely
destroyed in a fire in
June 2014 and not rebuilt. It however appeared
that the business did not trade as Cheeky Tiger although there were
large mural
sized pictures of women over whom a tiger print had been
superimposed or painted. The words Cheeky Tiger appeared on the
picture.
.
16.
The answering affidavit averred that
subsequently Figueiredo bought a minority interest in Bettencourt’s
Cheeky Tiger venture.
The next Cheeky Tiger opened in Bree Street in
March 2014 although Bettencourt alleges that preparatory work had
commenced in November
2013. The Germiston operation opened in June
2014 and the Randburg one in January 2015.
17.
An affidavit of a Mr More was used in
support. He claimed to have been responsible for the design, printing
and installation of
the Cheeky Tiger logo and the images used. He
also confirmed the dates on which the various operations under
Bettencourt commenced
in the name of Cheeky Tiger.
18.
Perhaps the two most significant
allegations were that the applicant could not demonstrate reputation
in the Cheeky Tiger name,
logo or get-up and that the applicant had
agreed to no longer use the Cheeky Tiger name and change it to
Manhattan Nights.
19.
It is unnecessary to deal in further detail
with the answering affidavit, save to state that the respondents
claimed that there
were irreconcilable disputes of fact raised on the
papers.
20.
The replying affidavit then attempted to
demonstrate that the applicant’s version was correct and that
the respondents were
untruthful.
21.
The case came before Georgiadis AJ in the
urgent court and on 4 December 2015 the following order was
granted;
1.
The respondents are hereby interdicted from commencing and/or trading
business under the name and style of Cheeky Tiger at 29
Pretorius
Road Kempton Park
2.
The order in prayer 1 operate as an interim interdict pending the
outcome of an application for final order to be instituted
by the
applicant within 10 days of this order
3.
Costs of this application are to be paid by the first, second and
third respondents jointly and severally
THE
CONTEMPT OF COURT ORDERS
22.
It is common cause that after the court
order the respondents commenced trading near the applicant’s
business. It is also
common cause that it does not use the name
“
Cheeky Tiger”.
23.
The applicant contends that every other
significant element of the applicant’s get-up and layout is
similar and that the respondents
have deliberately gone about to
replicate the Cheeky Tiger brand in all but name. By way of
illustration the respondents replicated
at their Kempton Park
establishment the identical front boarding which is at the Germiston
premises save for deleting the words
“
Cheeky
Tiger
”.
24.
The court was concerned that Georgiadis AJ
had decided to only grant prayer 1 of the notice of motion
which was confined
to an interdict preventing the respondents
from trading under the name and style of Cheeky Tiger and enquired if
it was permissible
to have regard to the judge’s findings on
what had been passed off as the applicant’s aside from the
name.
Adv Mpofu
for
the applicant contended that if one had regard to the judgment the
court
a quo
had
in fact found a passing off and that the judgment should be
interpreted to give effect to that.
25.
While the reasons for a decision between
the same parties in respect of the same subject matter may create an
issue estoppel it
would still require the concept of contempt of
court, or even a type of constructive contempt, to be stretched. One
need not consider
this further since no case is made out that the
respondents were not entitled to interpret the judgement in its terms
particularly
since the court did not grant the other two orders
prayed for which would have covered the passing-off of the
applicant’s
business or get-up even if the trading name was not
utilised.
26.
Accordingly the applicant is unable to
demonstrate the essential requirement that the court order was
breached deliberately and
male fide
.
See
Fakie NO v CCII Systems(Pty) Ltd
[2006] ZASCA 52
;
2006 (4) SA 326
(SCA) at para 9.
THE
INTERDICT
27.
Adv Bester
for
the respondents submitted that it is not competent for the applicant
to apply for an interdict. It already did so and has an
order to that
effect. He also argued that the applicant was unable to demonstrate
that it is the proprietor of the mark and get-up
in the sense that it
has become distinctive to him.
28.
Since the applicant is not a statutory
proprietor he is compelled to rely on the common law relief of
passing off. In order
to succeed the applicant must show that the
mark or get-up is distinctive of its services and that the
respondent is passing
off its services as that of, or as associated
in the conducting of its business with, the applicant. Adv
Bester referred
to the following well known passage in
Caterham
Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd and Another
[1998] ZASCA 44
;
1998 (3) SA 938
(SCA) at para 21;
‘
The
nature of the reputation that a plaintiff has to establish was well
stated by Lord Oliver in a judgment referred to at
the outset
of this judgment, namely Reckitt & Colman Products Ltd v Borden
Inc and Others
[1990] UKHL 12
;
[1990] RPC 341
(HL) ([1990]
1 All ER 873)
at 406 (RPC)
and 880g --h (All ER):
'First,
he must establish a goodwill or reputation attached to the goods or
services which he supplies in the mind of the purchasing
public by
association with the identifying ''get-up'' (whether it consists
simply of a brand name or a trade description,
or the
individual features of labelling or packaging) under which his
particular goods or services are offered to the public, such
that the
get-up is recognised by the public as distinctive specifically of the
plaintiff's goods or services.'
(My
emphasis.) See also Lord Jauncey at 417 (RPC). The words emphasised
are pertinent and echo those of Nicholas J that
'the
plaintiff must prove that the feature of his product on which he
relies has acquired a meaning or significance, so that it
indicates a
single source for goods on which that feature is used'.
(Adcock-Ingram
Products Ltd v Beecham SA (Pty) Ltd
1977 (4) SA 434
(W) at 437A--B.)
Put differently, reputation is dependent upon distinctiveness (cf Van
Heerden and Neethling at 169).’
29.
Moreover the respondents contended that the
applicant had agreed no longer to trade under the name Cheeky Tiger
and that Bettencourt
had agreed to assist him financially to effect a
name change.
I
proceed to deal with each in turn.
30.
The applicant indicated that it was obliged
to seek an interdict in the present case as an alternative to the
contempt proceedings
in case the order of Georgiadis AJ did not cover
the respondents’ passing-off of the applicant’s get-up.
In my view
this does not offend the
res
iudicata
principle. The decision of
Georgiadis AJ purported to deal with both the mark and the get-up (as
I will show later) but the
order only dealt with the name. It
is therefore evident that the court did not consider the possibility
that the respondent would
use the get-up without the name. However
that situation has now materialised and if the applicant can make out
a case of passing
off of the get up then it must be able to obtain a
remedy, provided the earlier court’s pronouncement was not
intended to
refuse that relief.
31.
In the present case Georgiadis AJ expressly
stated that there had been a passing off of at least part of the
applicant’s get-up.
Accordingly the issue of
res
iudicata
does not arise.
32.
But Adv Mpofu contends that the
applicant is nonetheless entitled to rely on the judgment and the
respondent cannot go behind
it, even if the judgment is wrong. At the
moment it stands and until set aside on appeal is binding between the
parties. For this
reason he submits that the respondents’
argument that the applicant has not shown reputation is irrelevant;
the decision
by the Georgiadis AJ found that the applicant was the
proprietor of the name and the get-up and that there was a passing
off. These
findings were binding unless and until a court on appeal
said otherwise and it was urged that this court has no competency to
revisit
that decision.
33.
In my view the issue is resolved on the
basis of whether the requirements of issue estoppel have been
satisfied. Issue estoppel
is a species of
res
iudicata.
See
Smith
v Porritt and Others
2008 (6) SA 303
(SCA) para 10 where Scott JA said;
'Following
the decision in Boshoff v Union Government
1932 TPD 345
the ambit of
the exceptio res iudicata has over the years been extended by the
relaxation in appropriate cases of the common-law
requirements that
the relief claimed and the cause of action be the same (eadem res and
eadem petendi causa) in both the case in
question and the earlier
judgment. Where the circumstances justify the relaxation of these
requirements those that remain are that
the parties must be the same
(idem actor) and that the same issue (eadem quaestio) must arise.
Broadly stated, the latter involves
an inquiry whether an issue of
fact or law was an essential element of the judgment on which
reliance is placed. Where the plea
of res iudicata is raised in the
absence of a commonality of cause of action and relief claimed it has
become commonplace to adopt
the terminology of English law and to
speak of issue estoppel. But, as was stressed by Botha JA in
Kommissaris van Binnelandse
Inkomste v Absa Bank Bpk
1995 (1) SA 653
(A) at 669D, 667J – 671B, this is not to be construed as
implying an abandonment of the principles of the common-law in favour
of those of English law; the defence remains one of res iudicata. The
recognition of the defence in such cases will however require
careful
scrutiny. Each case will depend on its own facts and any extension of
the defence will be on a case-by-case basis (Kommissaris
van
Binnelandse Inkomste v Absa (supra) at 670E – F). Relevant
considerations will include questions of equity and fairness,
not
only to the parties themselves but also to others. . . .'
34.
It is therefore evident that where only the
elements to support issue estoppel arise there is no hard and fast
rule that a court
is compelled to preclude a party from revisiting
the issue. The question is not determined as a matter of principle
but is dealt
with casuistically. Factors such as equity and fairness
may in a particular case militate against applying issue estoppel.
35.
This very situation arose in
Prinsloo
NO v Goldex 15 (Pty) Ltd
2014 (5) SA
297
(SCA). Brand JA stated at paras 16 and 17 that;
‘
[16]
The appellants' argument that the application of issue estoppel in
these proceedings would result in unfairness and inequity
derives
from two hypotheses. First, that it was not necessary for Webster J
to arrive at any final decision as to whether or not
Prinsloo
committed fraud in order to dismiss the trust's application to compel
specific performance. Secondly, that Webster J could
not and should
not have decided the disputed issue of whether fraud was committed on
motion proceedings without the benefits inherent
in the hearing of
oral evidence, including discovery of documents, cross-examination of
witnesses, and so forth.
[17]
I think both these propositions are well supported by authority….’
36.
Adv Bester argues that the decision of
Georgiadis AJ regarding whether the applicant could show reputation
and could prove a passing-off
were conclusions and that there were no
findings in that regard.
37.
I disagree. The judgment must be considered
as a whole and it is evident that the learned judge found that;
a.
The applicant had claimed that the
following features were distinctive of his business; the colour
schemes (predominantly red and
green) , the lay out, the logo and the
turnstile;
b.
The respondents had raised the issue of no
protectable right and relied on
Caterham;
c.
The respondents had also contended that
factual evidence was lacking to establish the nature and extent of
use and evidence of a
representative selection of a relevant section
of the public dealing with whether they associated the two businesses
as being owned
by the same person;
d.
The respondent had argued that only
unsubstantiated allegations had been made that the applicant had
acquired distinctiveness and
reputation on the mark and brand; in
other words the applicant had made submissions only, unsupported by
facts;
e.
The applicant only has to demonstrate a
prima facie right though open to some doubt for interim relief;
f.
The applicant stated that it has operates
in the Kempton Park area for some time and that it has built up a
reputation and goodwill;
g.
There is no doubt in the court’s mind
that if the respondents were allowed to open a similar business with
the same and identical
name and set up ( this is assumed from the
overall context as the word is left blank in the judgment) some 300
metres away then
that that will cause confusion, be detrimental to,
and irreparably harm, the applicants business.
38.
It must be recalled that the case was heard
as a matter of urgency and the judgment appears to have been
ex
tempore
. It therefore cannot be
scrutinised with a fine toothcomb.
39.
I am satisfied that having regard to the
summary of the judgment the court had regard to the allegations made
by the applicant and
because the test is a prima facie one, accepted
the applicant’s version.
40.
The present case is also one for interim
relief. Accordingly the considerations that weighed in
Prinsloo
are not present. Nor did Adv Bester
argue that the considerations in that case applied. I believe he was
correct not to.
41.
Accordingly the respondents’ argument
that the applicant has failed to demonstrate reputation, that there
will be confusion
and that there are irresoluble disputes of fact
are met by issue estoppel.
42.
Issue estoppel also operates to counter the
allegation that the applicant cannot show a
prima
facie
right because there was a
subsequent agreement not to trade. Independent of issue estoppel the
papers do establish a
prima facie
right
in favour of the applicant because of the following facts stated, or
admitted, by Bettencourt ;
a.
Bettencourt and the applicant were close
friends for some 20 years;
b.
Bettencourt allowed the applicant to
implement the concept in Kempton Park without paying anyone a royalty
or other amount for the
mark or the lay-out;
c.
While the applicant owned the Cheeky Tiger
establishment in Kempton Park, the two companies or Bettencourt
personally operated the
other establishments in Randburg and
Germiston as well as Midrand (on Bettencourt’s version);
d.
At no stage did Bettencourt require the
applicant to desist, despite the identical mark and similar if not
identical branding;
e.
After they fell out Bettencourt and the
applicant agreed to part ways. They finalised an oral agreement
towards the end of January
2015 in terms of which the applicant would
inter alia change the name and convert the Kempton Park operation
from Cheeky Tiger
to Manhattan Nights. Bettencourt contended that the
applicant already operated a number of “Manhattan” bars;
f.
The applicant could not immediately change
the Kempton Park operation because he was finding his Vereeniging
operation that had
already opened as Manhattan Nights costly and
nothing further occurred until the urgent application was launched by
the applicant;
43.
Accepting Bettencourt’s version, he
had allowed the applicant to conduct a Cheeky Tiger establishment in
Kempton Park and
all other Cheeky Tiger ventures did not enter the
physical perimeter of the other but were widely separated.
44.
On Bettencourt’s own version he had
obtained the applicant’s agreement to converting his operation
from Cheeky Tiger
to Manhattan Nights without disclosing that he
intended opening a similar entertainment operation (irrespective of
name) that would
draw on the applicant’s customer base. I would
consider this a material and actionable non-disclosure. On the papers
before
me it is reasonable to conclude having regard to the timing
that Bettencourt intended to capture the customers who
frequented
the applicant’s Cheeky Tiger Kempton Park
establishment and take the applicant’s goodwill in that
business, including
its customer base, without compensation.
This would have been financial suicide for the applicant and
Bettencourt confirms
that he did not offer to pay for the goodwill of
the customer base. On these facts it therefore
prima
facie
appears that if there was an
agreement to stop trading as Cheeky Tiger then Bettencourt
deliberately concealed from the applicant
his own plans to open up a
Cheeky Tiger operation close to the applicant’s establishment .
There
would be a legal duty to disclose because Bettencourt knew that if he
informed the applicant of his plan to open a Cheeky
Tiger
establishment immediately after the applicant removed the last
vestige of his Cheeky Tiger operation and renamed and reconfigured
it
for a Manhattan Nights bar his customers would go to what was
familiar to them.
45.
In effect the applicant would unwittingly
destroy the goodwill he had built up under Cheeky Tiger and its
familiar branding. But
instead of the goodwill disappearing its
familiar logo and ambiance would simply transfer to Bettencourt’s
bigger operation
and the applicant would then have to compete under a
new brand unfamiliar to the customer base in the area.
46.
In my view the evidence of Bettencourt is
clear: Under the extant agreement there would be no physical
proximity competition as
each Cheeky Tiger establishment
(irrespective of membership composition) would be a significant
distance from the other.
Even if the agreement relied on by
Bettencourt had been concluded I would consider it an actionable
non-disclosure not to have
disclosed that the moment the applicant
abandoned the trading name and get up of Cheeky Tiger Bettencourt
would take them up in
an establishment that would be effectively
alongside the applicant’s re-branded one.
One
does not need affidavits from patrons to draw the reasonable
conclusion that they would go to what was familiar to them and
believe that it is simply a continuation of the applicant’s
business, or one associated with it, save that it was now
operating in larger premises.
47.
The applicant in reply denied the alleged
agreement. He also stated elsewhere that during a conversation in the
first week of November
2015 Bettencourt “
vehemently
denied he was opening a Cheeky Tiger”
.
I however accept that the point of material non-disclosure was not
raised in the alternative. I did however raise the issue with
Adv
Bester during his argument. The respondents pleaded the agreement as
one of several defences to the applicant’s case.
It is the
respondents who relied on the agreement and there can be no prejudice
to them in considering whether the agreement can
stand having regard
to what was claimed to have been discussed and what was divulged in
the affidavit. The issue is one of law
and the respondents were given
an opportunity to deal with it in argument and the respondents did
not seek to lead oral evidence
but continued to deal with the matter
on paper.
48.
If the judgment of Georgiadis AJ does not
constitute issue estoppel then I would have been satisfied for the
reasons given that
prima facie
there
was a duty to make the disclosure, if only based on the requirements
of good faith in the circumstances of the relationship
and the
consequences of the alleged bargain struck. The applicant in the
simplest terms would have been duped to give up at no
cost the
goodwill he had built up, in the area, of the name and brand in
circumstances where he would have believed that
his customer base
would remain intact and would not be under threat from Bettencourt.
49.
Adv Bester said in arguing the case under
passing off that the result offends ones sense of fairness. It does.
And the reason it
does is because of the business relationship that
existed between the parties. The actionable non-disclosure would
render the alleged
January 2015 oral agreement null and void
ab
initio
. See generally the majority
judgment of Galgut AJA (at the time) in
Glaston
House (Pty) Ltd v Inag (Pty) Ltd
1977
(2) SA 846
(A) and more recently Spenmac (Pty) Ltd v Tatrim CC
2015
(3) SA 46
(SCA) ; see an application of the principles in
Refco
Ltd v Amicor Investments
1964 (3) SA
184
(FC).
50.
This does not leave a void because, in the
circumstances of the case, the pre-existing relationship is
resurrected as it requires
a superseding valid agreement to amend its
terms. The terms of the pre-existing relationship are readily
established by the conduct
of the parties.
51.
It appears therefore that the alleged
agreement to change the name of the applicant’s establishment
from Cheeky Tiger might
be rendered void because
prima
facie
the factual and legal
requirements of actionable non-disclosure are present. This
makes it unnecessary to consider Adv Bester’s
argument that
there was a spill-over of reputation between the Cheeky Tiger
businesses operated by Bettencourt and that operated
by the
applicant. I also believe that in the context of passing-off the
effect of spill-over is a factual enquiry not determined
simply
because each exploiter of the same mark has a website that is
accessible throughout the country. Nor is the analogy of a
distributorship helpful since in the present case there is not the
payment for the right of use to a single controlling distributor
or
central franchise holder.
52.
Adv Bester referred to
Horseshoe
Caterers (Green Point) (Pty) Ltd v Burnkloof Caterers (Pty) Ltd
1975 (2) SA 189
(C) at 195 E which
stated that one trader cannot restrain the use of a mark and get up
by another trader . This is because the
reputation generated by such
use and which attached to that mark and get up would vest in each of
the traders.
53.
My difficulty is that the case was not
concerned with the situation of where a geographic or other
limitation is imposed on each
trader limiting his ability to attract
customers to purchase goods or services at a specific locality only
however wide the advertising
is disseminated. That goes to
relationships inter se that may not be governed exclusively by the
delictual laws of passing-off
but may also be impacted by contractual
relationships whether express or implied.
54.
This leaves the question of what mark or
get-up has now been passed off as that of the applicant or associated
with his business.
55.
It is evident from the judgment of
Georgiadis AJ that aside from the name Cheeky Tiger (which it
is common cause is not being
used in the respondents’
establishment) the applicant’s distinctive get-up at Cheeky
Tiger in Kempton Park comprises
the predominantly red and green
colour scheme , the lay out and the turnstile. The difficulty is that
the court seemed to consider
them in totality with the logo.
56.
I bear in mind that the respondents
can eliminate a feature of the get up which may colour the entire
situation. It is therefore
necessary to return to basic principles
and ask what name, logo or get up of the respondents’ business
is likely to lead
the client base from where the applicant’s
business is drawn to believe that that respondent's business is that
of, or associated
with, applicant's business and is likely to divert
custom from applicant's business to that of the respondents.
57.
In my view aside from the name and style of
Cheeky Tiger which is the subject of the current interim interdict,
there is the predominant
colour combination of red and green as well
as the depiction of the woman face or body whether in part or whole
having superimposed
on it or superimposing on, whether selectively or
otherwise, the colouring or features of a tiger. There is also the
logo. Moreover
I believe that there would be the same confusion with
any other feline, canine or any other living species of whatever
nature or
form. The reason being that the distinctive feature of the
establishment is the superimposing of an animal’s or other
species
colouring or features on to a woman’s form or face
would lead the ordinary clientele to believe that it is part of the
branding
of the same business or one associated with it.
58.
While part of the lay-out and turnstile may
be identical and distinctive, the applicant accepted that there were
points of departure
or of a non-exclusive nature making it impossible
to single out. The only distinctive element of the lay-out was the
jungle theme.
ORDER
59.
I accordingly grant an order that;
1.
Pending the outcome of the application
instituted by the applicant against the respondents under the above
case number and in addition
to the interim interdict granted by
Georgiadis AJ on 4 December 2015. The first second and third
respondents are forthwith interdicted
and restrained from utilising
the following logos and get ups at the business located at 29
Pretoria Road and currently known as
SA’s Hottest Action Bar;
a.
a woman’s face with tiger features or
colouring on any part of it;
b.
the
Cheeky
Tiger
logo;
c.
the depiction of a woman’s face or
body whether in part or whole having superimposed on it or
superimposing on, whether selectively
or otherwise, the colouring or
features of any feline, canine or any other living species of
whatever nature or form;
d.
the use of red and green as the predominant
colour combination anywhere at the establishment, whether interior or
exterior and whether
on permanent or movable fixtures or fittings;
e.
the adoption of a jungle theme
anywhere at the establishment, whether interior or exterior and
whether on permanent or movable
fixtures or fittings.
2.
The applicant is awarded two thirds of the
total costs on the attorney and client scale, such costs to include
the engagement of
two counsel, to be paid by the second and third
respondents jointly and severally, the one paying the other to be
absolved.
SPILG
J
Date
of Hearing; 8 March 2016
Date
of judgment; 9 March 2016
Legal
representatives:
For
applicant: Adv. D Mpofu SC;
Adv.
S Cohen
De
Jager Du Plessis attorneys
For
Respondents: Adv A Bester SC
Jack
Hajibey Inc