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[2020] ZAGPPHC 136
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Stable Brands v LA Group (Pty) Ltd and Another (33268/18) [2020] ZAGPPHC 136 (21 February 2020)
IN THE HIGH
COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
(1)
REPORTABLE:
YES
/NO
(2)
OF
INTEREST TO OTHER JUDGES:
YES
/NO
(3)
REVISED.
CASE NO.:
33268/18
21/2/2020
In the
(counter-application) matter between:
STABLE BRANDS (PTY)
LTD
Applicant
and
LA GROUP (PTY)
LTD
First Respondent
THE REGISTRAR OF
TRADE MARKS
Second Respondent
JUDGMENT:
APPLICATION FOR LEAVE TO APPEAL
VAN DER WESTHUIZEN, J
[1] The first respondent,
as applicant, applies for leave to appeal against my judgment
and
order delivered and granted on 29 November 2019. The applicant in the
counterapplication, now the respondent, opposes the application
for
leave to appeal.
[2] At the hearing of this
application, Mr Bowman SC who appeared with Ms Joubert on
behalf of
the present respondent, raised objections to an apparent expansion of
the grounds in the applicant’s written heads
of argument that
go beyond the grounds pled in the notice of application for leave to
appeal. The submission is that a party may
not go beyond the grounds
raised in the notice of application for leave to appeal, unless a
formal application is made for leave
to expand the pled grounds. No
formal application was made, other than a request in general terms,
from the bar to amend the notice
of application for leave to appeal.
Rule 49(1)(b) of the Uniform Rules of Court requires that the grounds
upon which leave to appeal
is sought, are set out. Such exposition is
to be clearly and succinctly stated to enable the court and the
opposition to be fully
informed what case is to be considered and
adjudicated upon. See in this regard
Songono v Minister of Law and
Order
1996(4) SA 384 (ECD). It would follow that where grounds
that are intended to be relied upon at the hearing of the application
for leave to appeal are not so stated in the notice, it may not be
raised later. See in this regard
Kilian v Geregsbode, Uitenhage
1980(1) SA 808 (AD) at 814C-815F. One of the grounds raised in the
applicant’s heads of argument relate to an alleged
constitutional
issue. No basis for that issue is laid in the notice
of application for leave to appeal. It follows further, that in the
absence
of leave to amend a notice of application for leave to appeal
to include grounds not initially raised, a party may not rely
thereon.
It is recorded earlier that no formal application was
launched to amend the notice of application for leave to appeal,
except for
an informal request to do so. I made no ruling on this
issue, but heard argument on the non-raised grounds. However, for
what follows,
the non-raised issues do not sway one way or the other.
[3] The argument on behalf
of the applicant in respect of the merits followed a different
approach to that raised in the main application. The applicant now
relies upon, what it calls, “a brand” to enable
it to
discharge its onus in the counterapplication, and to sway this court
to grant leave to appeal. There is no substance in that
submission.
The various sections of the Trade Mark Act, 194 of 1993 (the Act),
dealing with the basis upon which a registered trade
mark may be
expunged, relates to the specific registered mark and not “a
brand”. Mr Ginsburg SC, on behalf of the applicant,
sought to
temper the approach with reference to the discretion that the court
has in deciding whether to expunge or not. In this
regard, there is
specific reference to a constitutional point that there should not be
arbitrary depravation of property, and if
a lesser stringent order
may be granted, it should. Such approach would obviate a party of
discharging its onus and slide through
the cracks in the floor
boards.
[4] A number of grounds are
listed in the application for leave to appeal. I do not intend
to
deal with each and every ground and will refer to them with reference
to particular categories.
[5] A general ground is
raised in that I should have dismissed the counterapplication
per
se
. That in itself, constitutes no ground upon which leave to
appeal can, or ought to be granted. Furthermore, as a catch-all
phrase,
it cannot assist a party who does not stipulate the grounds
for leave to appeal clearly and concisely.
[6] In oral argument, Mr
Ginsburg primarily made submissions on the issue of distinctiveness,
the issue of interpretation of section 10(13) of the Act and the
constitutional point. He did not abandon the submissions made
in the
heads of argument and remains to rely thereon. For what follows, I
shall deal with the issue of distinctiveness in the relevant
context.
[7] The applicant relies
upon the ground that I should have dismissed the counterapplication
for want of joinder of another party, The Polo/Lauren Company LP.
There is no merit in that submission for the following:
(a) There is no finding that the
registered trade marks of that party is prone to be expunged
from the
register. The reference to that party is made in the context of the
manner in which the applicant has used its trade marks
as provided
for in section 10(13) of the Trade Marks Act, 194 of 1993;
(b) The manner of use on the part
of the applicant cannot be ascribed to that party and hence
it was
not necessary for that party to be be joined. Nor does that party
have a substantial interest in the order that may be granted;
(c) I found that the
applicant had failed, for the reasons stated in my judgment, to
distinguish its marks from those found in the market.
[8] The applicant contends
in its grounds for leave to appeal that I had erred in finding
that
the present respondent retained its
locus standi
despite the
main application for an
interim
interdict being withdrawn.
There is no merit in that ground. In a separate
ex tempore
judgment on that issue, I comprehensively dealt with the principles
applicable to counter applications and the issue of
locus standi
.
See
Lubbe NO et al v Millenium Style (Pty) Ltd
2007 BIP 133
(SCA).
[9] Reliance is placed on
the provisions of section 42 of the repealed Trade Marks Act,
62 of
1963, the so-called seven-year incontestability clause. In my
judgment I dealt with the issue whether the applicant’s
marks
remain on the register wrongly and in that regard dealt with the
dictum
in
Roodezandt Ko-operatiewe Wynmakery Ltd v
Robertson Winery (Pty) Ltd et al
, 2014 BIP 294 (SCA). There is no
merit in that ground.
[10] The applicant contends that I
erred in not applying the proviso in section 10 of the Act. In
this
regard it relies on the alleged large amounts spent on advertising
and sales. It is one thing alleging large expenditure and
another
proving that it was in respect of the relevant trade marks which are
the subject of scrutiny. The applicant conceded that
it could not
prove the use of the relevant registered trade mark in respect of the
particular item upon which it is alleged to
have been used. Sales of
goods is not necessary proof of use of the relevant trade mark in
connection therewith, unless that particular
use is proven. Proof of
selling an item of clothing is one thing,
non constat
that it
proves that a particular trade marks is used in respect of that item
of clothing. The applicant submits now that when regard
is had to the
“brand”, defined as the word POLO, the device marks etc.,
then the evidence provided musters the relevant
test. There is no
merit in that ground. The relevant sections of the Act relied upon by
the respondent do not lean to such interpretation.
[11] The ground raised in respect of
the findings relevant to the provisions of section 10(2)(a)
of the
Act has no substance. I have already dealt with the issue of the
proviso to section 10 of the Act. In the judgment the findings
are
not limited to a dictionary meaning, but also deal with the extent of
the use of the word
polo
in the relevant industry. The
applicant now attempts to rely on a further dictionary meaning in
support of its arguments. Those
definitions prove the contrary to the
argument raised by the applicant.
[12] There is no substance in the
attack on the findings in respect of the provision of section
10(2)(b) of the Act. The alleged support of the said criticism, the
dictum
in the
Century City
matter relied upon by the
applicant is considered out of context. A reading of the particular
dictum
in its context, does not support the applicant.
[13] The applicant has raised no
specific criticism in respect of the findings relating to section
10(2)(c) of the Act. As such, that is not a ground upon which leave
to appeal can be sought.
[14] It is submitted on behalf of the
applicant that the requirements in section 10(13) of the Act
in
respect of the use of the mark and relating to confusion and
deception, are different to the meaning of those concepts as intended
in sections 10(14) and (15) of the Act. In this regard, Mr Ginsburg
referred to English authority on a similar provision in the
UK Trade
Mark Act, though different in content and context. There is no
substance in that submission. There is no explanation why
the
Legislature would use the same words, confusion and deception, in
different sections of the same Act, yet intend different
meanings to
be ascribed thereto.
[15] There is no merit in the attack on
the findings relating to section 27(1)(b) of the Act. This
ground of
attack is to be considered in the context upon which the applicant
has dealt with it in its evidence placed before the
court. I have, in
my judgment, comprehensively dealt with the applicant’s
evidence it provided and the value to be ascribed
thereto. I do not
intend to dealt with that in this judgment. It will suffice to refer
to the test laid down in the
New Balance
matter and the
findings in that regard, in particular in respect of the inference
that is to be drawn. As recorded earlier, the
sale of an item does
not necessarily translate into the alleged use of a registered trade
mark, unless clearly shown by the party
on whom the onus lies. The
applicant’s reliance on the provisions of section 31(1) of the
Act, is non-specific and generalised.
Furthermore, the applicant has
failed to raise any specific grounds for leave to appeal the order in
respect of trade marks that
the applicant has failed to prove use
thereof. No blanket leave to appeal can be sought, nor granted.
[16] In respect of the leave to appeal
the findings and order relating to section 27(1)(a) of the
Act, the
applicant has not shown that the evidence it seeks to rely upon, is
clear and unambiguous and to the point. In the absence
thereof, there
is no merit on the ground that is relied upon for leave to appeal.
The applicant submits that the section requires
compliance with two
jurisdictional requirements: an intention not to use the mark, and
actual non-use thereof. The applicant submits
that the respondent
bears the onus to prove, on the part of the trade mark proprietor, no
intention to use the trade mark. There
is no substance in that
submission. The intention of using a trade mark, or not, lies within
the peculiar knowledge of the trade
mark proprietor, not within the
knowledge of its competitor. Actual non-use of a trade mark would
warrant an inference of an intention
of non-use thereof.
[17] There is no merit in the
lamentation that marks were set aside on multiple bases
simultaneously.
One ground would suffice for an expungement and even
if the applicant may be successful on appeal on only one of multiple
grounds,
the remaining grounds for expungement would prevail. Such an
appeal would be merely of academic nature and of no practical effect,
and in particular with reference to the ground that the judgment in
the
Meltz
matter was not followed. Whether that judgment was
to be followed in itself would not be of any assistance to the
applicant where
the other grounds for leave to appeal are of no
substance. The various marks of the applicant were attacked on a
number of grounds
provided in the Act and adjudication of each attack
is required and necessary.
[18] The attack relating to the
Meltz
matter is two-fold, i.e. that there is no joinder of The Polo/Lauren
Company LP, with which I dealt with earlier and secondly,
that the
Polo trade mark would in terms of that judgment not fall to be
expunged in terms of the provisions of section 10(2)(b)
of the Act.
In the latter instance, the
dicta
by the Supreme Court of
Appeal in the
Century City
matter applies. There is no
substance in respect of the grounds raised in respect of the
Meltz
matter.
[19] For all of the foregoing, I am not
persuaded, nor convinced, that there are reasonable prospects
that
another court, seized with the same set of facts, would reach
different conclusions than I have. In this regard see
S v
Notshokovu
2016 JDR 1647 (SCA). See also MEC for Health, Eastern
Cape v Mkhitha 2016 JDR 2214 (SCA) at [16] - [17].
[20] Furthermore, the applicant has not
shown, other than the relevant facts in this matter and which
were
before me and dealt with in the judgment, that there are compelling
reasons why the appeal should be heard. This ground was
not raised in
the notice of application for leave to appeal.
[21] The submissions by the applicant
that the findings in the judgment are arbitrary and amounts
to
deprivation of the applicant’s property in terms of the
provisions of section 25(1) of the Constitution, are without
substance. The findings contained in my judgment are made with
reference to the provisions of the Act and the evidence before me.
They were certainly not made arbitrarily and in an irrational manner.
Reasons for each finding are provided. If a party fails to
prove its
onus, it cannot lament the fact that a negative finding is made
against it. It does not constitute an arbitrary and irrational
finding. There is no substance in this ground that leave to appeal
should be granted on this ground. This ground was not raised
in the
notice of application for leave to appeal and I have dealt with that
issue earlier in this judgment.
[22] It follows that the application
for leave to appeal cannot succeed.
I grant the following order:
1. The application
for leave to appeal against the judgment and order delivered
and
granted on 29 November 2019 is dismissed;
2. The applicant
(first respondent
a quo
) is to pay the costs of the
application for leave to appeal, such costs to include the costs
consequent upon the employ of two
counsel.
C J VAN DER
WESTHUIZEN
JUDGE OF THE
HIGH COURT
On behalf of
Applicant/First Respondent
a quo
: P Ginsburg SC
Ms P Cirone
Instructed
by:
Adams & Adams
On behalf of
Respondent/Applicant
a quo
:
L Bowman SC
Ms I Joubert
Instructed
by:
Spoor & Fisher
Date of
Judgment:
21 February 2020