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[2013] ZASCA 151
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Legea SRL v Acanfora (75/13) [2013] ZASCA 151; 2013 BIP 298 (SCA) (11 November 2013)
THE SUPREME COURT OF APPEAL OF
SOUTH AFRICA
JUDGMENT
NOT REPORTABLE
Case
No: 75/13
In the
matter between:
LEGEA
SRL
.....................................................................................................
APPELLANT
and
GIOVANNI
ACANFORA
...............................................................................
RESPONDENT
Neutral citation:
Legea SRL v Acanfora
(75/13)
[2013] ZASCA 151
(11 November 2013)
Coram:
Lewis, Maya, Leach, Willis JJA and Zondi AJA
Heard:
1 November 2013
Delivered: 11 November 2013
Summary:
Where a court order has no practical effect, an appeal against
another court order not to rescind that order on the basis
that it
was erroneously given, is moot. Appeal dismissed.
ORDER
On appeal from
North Gauteng High Court, Pretoria (Hiemstra AJ
sitting as court of first instance):
The appeal is dismissed with costs.
JUDGMENT
Lewis JA
(Maya, Leach and Willis JJA and Zondi AJA
concurring
):
[1] This is an appeal against an order of the North Gauteng High
Court, Pretoria (Hiemstra AJ), dismissing an application for the
rescission of a default judgment (an interdict) taken against one Kim
Jong Hun, the manager of the football team of the Democratic
Peoples’
Republic of Korea. The application was brought by the respondent in
this matter, Mr Giovanni Acanfora, who claimed
to have the trademark
Legea in the class of clothing (25) registered in his name. The
application was brought on an urgent basis
during the period when the
FIFA World Cup was being hosted in South Africa. Neither Mr Hun nor
the Democratic Peoples’ Republic
of Korea Football Association
(the Football Association) by which he was employed opposed the
application. The record before this
court does not indicate whether
the Football Association was cited as a respondent. But Mr Hun is on
record as saying that he would
not oppose the application himself.
[2] Mr Hun was ordered by the North Gauteng High Court (Seriti J) not
to allow any member of the football team to wear any sportswear
on
which the Legea trade mark was depicted. However, the court suspended
the operation of the order until the conclusion of the
World Cup, or
until ‘such time as the North Korean Football Team’s last
World Cup 2010 match is completed’. The
order was in fact
granted on 25 June 2010, at which stage the football team had already
played its last match. It was accordingly
of no practical
significance at the time it was granted.
[3] Nonetheless, the appellant, Legea SRL, an Italian company, sought
rescission of that order some two years later on the basis
that it
had been erroneously granted. Legea SRL also claimed the right in the
Legea trademark, and Mr Luigi Acanfora, the managing
director of
Legea SRL and the brother of Giovanni Acanfora, alleged that Giovanni
had withheld material facts from the court and
had placed incorrect
facts before it. It is apparent that there has been a feud between
the Acanfora brothers about the right to
the trade mark. But in
neither the application for the urgent order sought by Giovanni nor
the application for rescission sought
by Legea SRL was the dispute as
to the right in the trade mark in issue. That is the subject of other
litigation.
[4] The appeal record does not reveal precisely what was alleged by
Giovanni when he applied for the interdict. Nor does it reveal
whether a contract concluded between Legea SRL and the Football
Association on 9 February 2010 was placed before Seriti J. In terms
of the contract, called a ‘Technical Kit Supplier Licence and
Merchandising Contract’, the coaching staff and the team
players were obliged to wear clothing bearing the Legea trademark
during the 2010 FIFA World Cup.
[5] Hiemstra AJ held that Legea SRL was an affected party in terms of
Rule 42(1)
(a)
of the Uniform Rules of Court and thus had locus
standi to bring the application for rescission of the judgment. That
rule provides
that a court may, on the application of any party
affected by an order, rescind or vary an order or judgment
‘erroneously
sought or erroneously granted in the absence of
any party affected thereby’. The high court considered that
Legea SRL had
a direct and substantial interest in the order: it
affected its rights under the contract with the Football Association.
And it
had not been given notice of the application such that it
could have intervened in the proceedings.
[6] However, the court considered that there had been a clear
infringement by the Football Association of the trade mark in terms
of s 34(1)
(a)
of the Trade Marks Act 194 of 1993 (there had
been unauthorized use of the Legea trade mark, in the course of
trade, in relation
to goods in respect of which the trade mark was
registered and that was likely to deceive or cause confusion). The
trade mark was
registered in the name of Giovanni and accordingly the
high court held that the earlier order granted by Seriti J had not
been
erroneously sought or granted.
[7] In fact the application for the order had been brought in terms
of s 34(1)
(c)
of the Act. But it is not necessary to consider
whether Hiemstra AJ correctly found that there was an infringement
under s 34(1)
(a).
He did, however, in granting leave to appeal
to this court, indicate that he may have erred in finding that the
infringing use
was in the course of trade. But he did not limit the
leave to appeal to that issue.
[8] The questions whether the Football Association was guilty of any
infringement of the Act (ss 34(1)
(a)
or
(c)
), and
whether the order interdicting Mr Hun from allowing the team players
to wear clothing depicting the Legea trade mark was
erroneously
granted, are now of no practical significance. Curiously, the order
was granted only against Mr Hun. He did not oppose
the application
for the order, as I have said, advising Giovanni that the disputes in
the Acanfora family as to the rights to the
trade mark were not his
concern. And when Legea SRL brought an application for rescission two
years after the interdict was granted,
the general secretary of the
Football Association advised Legea SRL’s attorneys that it did
not wish to be joined in that
application and Mr Hun confirmed that
he too did not wish to be joined as a party: as he put it, ‘the
dispute is one between
Legea SRL and Mr Giovanni Acanfora’ and
that ‘the Association should be left out of the dispute’.
There is nothing
to prevent Legea SRL from seeking the expungement of
the registration of the Legea trade mark in Giovanni’s name.
There is
thus no point in rescinding the order against Hun even if it
was erroneously given.
[9] Moreover, the contract between the Football Association and Legea
SRL was due to expire before the hearing of the appeal, and
although
it made provision for a tacit renewal there is no suggestion that the
contract has been so renewed. The matter is thus
entirely moot.
Section 21A(1) of the Supreme Court Act 59 of 1959 provides that at
the hearing of an appeal, if the ‘issues
are of such a nature
that the judgment or order sought will have no practical effect or
result, the appeal may be dismissed on
this ground alone’.
[10] Counsel for Legea SRL was unable to point to any practical
result or effect of reversing the order refusing rescission. Only
speculative consequences were suggested. The interdict did not ever
have any practical effect and the person interdicted has no
interest
in its rescission. In my view the appeal is moot and should be
dismissed on that ground alone.
[11] The appeal is dismissed with costs.
_______________
C H Lewis
Judge of Appeal
APPEARANCES:
For
the Appellant: L G Kilmartin
Instructed
by:
Adams
& Adams, Pretoria
Honey
Attorneys Inc, Bloemfontein
For the Respondent: D R Harms
Instructed by:
Spoor & Fisher, Pretoria
Phatshoane Henney Attorneys, Bloemfontein