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[2017] ZAGPPHC 154
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United Ulama Council of South Africa v United Ulama Council of South Africa and Another (50187/16) [2017] ZAGPPHC 154; 2019 BIP 79 (GP) (23 March 2017)
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
24/3/2017
CASE
NO: 50187/16
Reportable:
Yes
Of
interest to other judges: Yes
In
the matter between:
UNITED
ULAMA COUNCIL OF SOUTH
AFRICA
Applicant
and
UNITED
ULAMA COUNCIL OF SOUTH
AFRICA
First
Respondent
REGISTRAR
OF TRADE
MARKS
Second
Respondent
JUDGMENT
Tuchten
J
:
1.
One of the features of this case which makes it unusual is that the
name of the applicant is the same as the name of the first
respondent. At a formal level, the case concerns a trade mark: no.
2011/15858 (class no. 41), registered by the first respondent.
The
applicant applies for orders under ss 10(3), 10(7) or 27(3) of the
Trade Marks Act, 194 of 1993 (the Act) directing the removal
of the
mark from the trade marks register.
2.
The mark in question is a word mark: "United Ulama Council of
South Africa". The first respondent has used the mark
in
conjunction with a logo which the applicant claims is associated with
the applicant and not the first respondent. The first
respondent
contends that by reason of the registration of the mark at its
instance, the applicant is not entitled to use the mark
without the
first respondent's permission. The applicant, however, contends that
the first respondent had no
bona fide
claim to proprietorship
of the mark or was
mala
fide
in making application for
the registration of the mark or that the mark was registered without
any
bona fide
intention to use it and was in fact not used by
the first respondent.
3.
I said that the application was at a formal level a dispute about a
trade mark. This court must of course consider the issues
raised in
the light of the legislation and principles applicable to trade marks
but the dispute cannot be understood without an
exposition of the
underlying issues between the parties which have brought them into
dispute.
4.
The parties are groupings of South African Sunni Islamic scholars.
The expression "Islamic scholars" translates in
Arabic or
Urdu to
ulama
(singular
ahlim).
The immediate dispute
between the parties arises from the positions they take up in
relation to a bill called the Muslim Marriage
Bill (MMB) which is
currently being debated by interested persons outside parliament,
ultimately in the hope, on the side supported
by the applicant, that
the MMB will serve before parliament and be enacted into the secular
law of the land.
5.
The grouping which the first
respondent serves, however, regards the MMB as an abomination,
haram
in Arabic (literally:
forbidden), and that any proponent of the contrary view must justly
be designated a
kafir,
an
infidel or unbeliever.
[1]
Haram is a very strong term. It is used in Islamic discourse to
denote something entirely alien and repugnant to proper Islamic
practice. The first respondent's position, as it appears from the
papers and as developed in argument by its attorney Mr Omar,
is that
certain principles of Islamic family law, notably those relating to
the status of women in marriage and in relation to
divorce and to
same sex unions are irreconcilably at variance with South African
secular constitutional principles. It would be
an abomination, thus
the first respondent, for Muslims to advocate that a secular statute
subordinate those Islamic principles
to the secular law.
6.
I do not want to be misunderstood. I am not called upon to decide and
I am not qualified to decide the underlying disputes between
the
parties. This court takes no position whatsoever in relation to these
disputes. I relate them, doing what I hope is justice
to the
exposition of their positions by the parties, to give background to
my adjudication of the trade mark dispute.
7.
I must give some further background to the dispute. In 1970, the Port
Elizabeth municipal authorities gave notice to the Muslim
community
of its decision to expropriate and demolish the Pier Street mosque to
make way for a proposed freeway. But the parties
are in agreement
that in Islam a mosque cannot be alienated or used for another
purpose. Land so dedicated to Allah as a place
of Islamic worship
must remain so forever.
8.
This imminent catastrophe united the ulama as never before. Using
such powers of persuasion and peaceful resistance available
in those
pre-constitutional days to a community marginalised by discriminatory
laws, the Muslim community firmly resisted the expropriation
of the
Pier Street mosque. In this campaign of resistance, the ulama played
a prominent role. Ultimately, a compromise was reached.
The dome of
the mosque was removed but the mosque itself was preserved as a place
of worship.
9.
The unity of purpose demonstrated by the response to the Pier Street
mosque crisis prompted certain ulama to seek to create voluntary
associations of ulama to advance the shared values. The papers show
that the creation of such voluntary associations is a common
cultural
practice within the community of ulama.
10.
The principal deponent for the first respondent is Ahmed Sadek Desai.
He is a man in his late seventies, a qualified
ahlim
and a
mufti,
which is translated as jurisconsult. He was referred to
during argument as Mufti Desai. He is the
ameer
(head or
president) of the first respondent, having been such, he says, since
the inception of the first respondent in 1989 except
for a brief
period between 2010 and 2013.
11.
Although in 1989 Mufti Desai was a relatively young man, he was
entrusted by a number of senior and revered ulama with the
administrative tasks relating to the formation and conduct of the
respondent. Pursuant to the mandate so entrusted to him, Mufti
Desai
states that in 1989 he prepared both a primary Islamic constitution
and a secular secondary constitution for an organization
to be called
the United Ulama Council of South Africa. Both these constitutions,
so Mufti Desai testifies, were duly enacted and
the first respondent
came into being.
12.
The applicant does not admit that these constitutions were so
enacted. But the applicant specifically disavowed any intention
of
seeking a referral of this case to evidence and accepted that I must,
pursuant to the procedural rule in
Plascon-Evans,
decide this
case on the respondent's version.
13.
The applicant claims to be an
umbrella body comprising seven major South African Muslim theological
formations. In support of its
application, the secretary general of
the applicant, Maulana
[2]
Yusuf Patel, deposed to its founding affidavit. In the founding
affidavit, the applicant relied upon a constitution which it said
was
adopted in March 2010. This was placed in dispute by the first
respondent. In essence, the first respondent's contention was
that
the applicant was an imposter and moreover one of very recent
vintage.
14.
In reply, the applicant demonstrated that groupings of ulama in
sympathy with the applicant's approach to matters of cultural
and
legal significance from an Islamic perspective had been debating the
formation of an organisation such as the applicant since
1979. This
culminated in a written invitation by a prominent figure amongst the
ulama, Sheikh Nazim Mohamed, to a meeting of a
body which he called
in the invitation the United Ulama Council of South Africa, to be
held in Pretoria on 14 October 1994.
15.
Minutes were kept of the proceedings at this meeting. The adoption of
a draft constitution was proposed and accepted. A press
release was
issued regarding the formation of the organisation. Matters were
taken forward and on 6 June 1996, a meeting was held
at which all the
founder members of the applicant named in the draft constitution were
present. Numerous acts of advocacy were
undertaken by this body in
the years which followed, including interactions with South African
secular authorities in relation
to matters ultimately dealt with in
the MMB.
16.
One of the primary incentives for the formation of the applicant was
what the grouping now represented by the applicant regarded
as the
opportunity presented by the advent of the secular democratic era in
South Africa. This grouping took the view that the
time was
propitious to advocate for the adaptation of certain aspects of
Islamic secular tradition by secular legislation. This
would
inevitably mean that secular constitutional outcomes would prevail in
certain spheres over those outcomes which had previously
been
produced.
17.
At an early stage, the applicant decided to use a logo in conjunction
with its chosen name. This was resolved at a meeting in
1995. The
applicant uses as its logo a map of southern Africa with the
geographical area of the Republic highlighted and upon which
a
crescent moon and a star have been superimposed.
18.
At a meeting on 8 March 2010, office bearers of the applicant were
elected and all members agreed that they endorsed the then
current
constitution of the applicant and agreed to be bound by it. On 4 July
2011, the applicant's constitution as itthen read
was signed on
behalf of the five bodies described in that document as founder
members which were identified in the body of the
document. The
applicant's case is that its constitution was amended from time to
time and that the constitution of 2010, signed
on 4 July 2011, was
merely one of the versions of an organic process by which the
applicant's foundation document was adapted through
time as its
members saw fit.
19.
Clause 2 of the applicant's constitution of 2010 proclaims that the
applicant will exist in its own right, independent of its
members,
continue to exist even when its membership changes and will be a
non-profit organisation.
20.
The first respondent criticises the applicant for what it describes
as the introduction of new matter in reply in relation to
its
constitution and seeks to have it struck out. I do not think this
criticism is justified. In its founding affidavit, the applicant
was
called upon merely to demonstrate that it had attributes necessary to
enable it to litigate in its own name. The historical
process
culminating in the constitution of 2010 became relevant only when the
first respondent mounted its challenge in the answering
affidavit.
21.
Even if some of this matter constituted new matter put up for the
first time in reply (which I do not think it was), the rules
relating
to new matter in reply are not those, as it has been put, of the
Medes and the Persians, ie immutable and subject to no
exceptions.
This is preeminently the kind of case in which a party, if it felt
disadvantaged by something put up by its opponent,
would seek and
would be granted leave to address in a further affidavit. No such
request was made in the present case. I have a
discretion in this
regard. If I am called upon to exercise such a discretion, I do so in
favour of the applicant. See
Shephard v Tuckers Land and
Development Corporation (Pty) Ltd
(1)
1978 1 SA 173
W 177-8 where
the following was held:
[The
application to strike out] is founded on the trite principle of our
law of civil procedure that all the essential averments
must appear
in the founding affidavits or the Courts will not allow an applicant
to make or supplement his case in his replying
affidavits and will
order any matter appearing therein which should have been in the
founding affidavits to be struck out.
...
This is not however an absolute rule. It is not the law of Medes and
Persians. The Court has a discretion to allow new matter
to remain in
a replying affidavit, giving the respondent the opportunity to deal
with it in a second set of answering affidavits.
This indulgence,
however, will only be allowed in special or exceptional
circumstances.
22.
It follows that the application to strike out certain matter in the
replying affidavit cannot succeed.
23.
The first respondent contends that the applicant has not shown itself
to be a body with universal succession, capable of suing
and being
sued. In response to that challenge, the applicant put up the latest
version of its constitution which was adopted in
2013. In clause
13.4.10, the board of the applicant is given express power in
relation to legal proceedings, if the conduct of
the board in that
regard is approved by at least two thirds of the initial members. In
the constitution of 2006, the board is given
by clause 13.3 the power
do all things necessary to advance the objectives of the applicant.
24.
The main objectives of the applicant are said in all the several
versions of its constitution which are before me in summary
to
include the preservation and promotion of the broad Islamic school of
Islamic thought to which its members and affiliates adhere
and to
speak with a unified voice on behalf of the Muslims of South Africa.
I have no doubt that the present litigation falls within
the objects
of the applicant.
25.
The applicant put up in its founding affidavit resolutions of itself
and its founding members to show that the applicant and
all its
founding members unanimously approved the institution of the present
proceedings. It has therefore been proved that the
applicant had the
power to bring this litigation and that it carries the unanimous
approval of its members. There is nothing to
suggest that any member
or affiliate of the applicant has taken a position against the
institution of the present proceedings.
26.
I need not decide whether the applicant was established as an
organisation with universal succession in 1994, or indeed in 2011.
In
establishing its standing to bring this case, it was in my judgment
necessary only for the applicant to show that it existed
under its
name at the time the application was instituted. That fact, coupled
with the fact that the respondent relied on the mark
in its efforts
to prevent the applicant from advocating under its name, was
sufficient to entitle the applicant to bring proceedings
to attack
the registration of the mark.
27.
A point was taken on behalf of the first respondent of the fact that
Maulana Patel was not expressly authorised by the applicant
to depose
to its founding and other affidavits. But authority was given to the
applicant's attorneys to conduct the case. It is
within the authority
given to an attorney in this connection to decide which witnesses
should be called to present his client's
case to its best advantage.
Manifestly, the applicant's attorney decided that Maulana Patel, a
person with personal knowledge of
many of the issues which required
to be addressed, would be the best person to present the evidence in
the affidavits in question.
A witness does not require authority to
testify on behalf of a litigant. It is sufficient if the witness is,
as is presently the
case, called by the litigant to testify on its
behalf.
28.
It was submitted that when an association institutes motion
proceedings, it must appear that the person who makes the application
on its behalf is duly authorised to do so. The person who made the
application on behalf of the applicant was its attorney. The
authority of the attorney to represent the applicant in making the
application was not challenged.
29.
For these reasons, I consider that the applicant has demonstrated
that when the application was launched, the applicant had
standing to
institute the proceedings and that the witness who deposed to its
founding and replying affidavits was competent to
do so.
30.
A further technical (in the sense that it does not address the actual
dispute between the parties) matter raised by the first
respondent
was that the applicant has more than twenty members, something that
is prohibited by s 30(1) the old Companies Act,
61 of 1973. I am by
no means persuaded that the provisions of the Old Companies Act are
applicable. The point was not taken in
the answering affidavit and
was raised for the first time in supplementary heads of argument
submitted to the court on the day
of the hearing. But to my mind the
short answer to the point is that the section prohibits an
association to be formed where it
has as its object the acquisition
of gain by the association.
31.
"Gain" in this context means financial gain. It does not
extend to the objects of the applicant, which is expressly
stated in
clause 2.3 of the 2010 constitution to be a non-profit organisation.
The object of the applicant broadly is the acquisition
of spiritual
gain and the promotion of the values held by its members and
affiliates. Section 30(1) of the old Companies Act does
not impact
upon the attribute of the applicant as an association with universal
succession.
32.
A further such point taken by the first respondent is that because a
litigant should not apply for a declaratory order where
there is a
real and
bona fide
dispute of fact, the applicant should be
non-suited. Whether there is such a dispute of fact which disables
this court from coming
to the relief of the applicant is something I
shall proceed to determine. The applicant cannot however be faulted
for coming to
court on motion because s 24 of the Act prescribes that
an interested person may
apply to court
to remove an entry
wrongly made in the register.
33.
The way is now clear for me to
address the trade mark dispute. A trade mark is defined in the Act
[3]
to mean, subject to exceptions not presently relevant:
...
a mark used or proposed to be used by a person in relation to goods
or services for the purpose of distinguishing the goods
or services
in relation to which the mark is used or proposed to be used from the
same kind of goods or services connected in the
course of trade with
any other person.
34.
The common position adopted by the parties is that they claim to
provide services. Those services are the advocacy of positions
which
promote the objects identified in their constitutions. It was not
suggested that the mark was not registerable as such because
the
services the parties respectively provide are not connected with each
other "in the course of trade."
35.
An application for the registration of the mark was filed on 29 June
2011. The mark itself was registered on 6 March 2013. During
2010,
the applicant was engaged by the Department of Justice to review
every clause of the MMB in consultation with members of
the legal
fraternity. It was at that time public knowledge that the applicant
endorsed the MMB.
36.
By notice of motion dated 29 March 2011, an organisation called the
Society for the Protection of Our Constitution brought an
application
in the Johannesburg High Court under case no. 13095/2011 for an order
declaring that the third respondent in the case,
which it cited as
United Ulama Council of South Africa, was not a lawfully constituted
voluntary association and that a resolution
purportedly taken by that
body was null and void. The hostility between the parties arose from
the fact that the body so described
had adopted a certain position in
regard to the MMB.
37.
The applicant claimed in its founding affidavit that the present
attorney for the first respondent, Mr Omar, was the attorney
of
record for the applicant in the Johannesburg case and that Mr Omar
was a public opponent of the MMB, stating that his client
was openly
criticising the applicant for its stance in this regard as being
contrary to Islamic law.
38.
On 27 May 2013, Maulana Patel received a letter from a representative
of the first respondent warning himto desist from using
the name
United Ulama Council of South Africa as that name was a legally
registered trade mark for the exclusive use of the first
respondent.
The applicant then consulted its attorney. The applicant's attorney
wrote a registered letter to the first respondent
addressing matters
raised in the letter received on 27 May 2013 and asking for copies of
certain documents pertinent to the first
respondent and its claim to
the mark, including the first respondent's constitution a copy of the
trade mark registration certificate.
The registered letter was
returned unclaimed.
39.
On 26 June 2013, the applicant's attorney received an email from the
first respondent. A copy of the first respondent's latest
bulletin
was attached to the email. The name and font of the letterhead of the
bulletin are identical to those used by the applicant.
The
applicant's logo was also incorporated in the letterhead. The
bulletin addressed several topics of importance for Muslims,
including the appropriate method of determining the sighting of the
crescent moon, an identification of proper slaughter practice,
a
discussion of the holy month of Ramadan and the MMB. The bulletin
takes the position that the MMB is in stark violation of Islamic
law
and should be opposed.
40.
On 26 June 2013, the applicant received a letter from Mr Omar, the
first respondent's attorney of record. In this letter, the
first
respondent recorded that it was the registered proprietor of the
mark, which was registered under no. 2011/15858, and that
the use by
the applicant of the mark was not authorised.
41.
I should mention that there is no suggestion in the papers that the
first respondent announced publicly to the
ummah,
the
community which it serves, that it was in the process of registering
a trade mark or that it had succeeded in doing so. There
is of course
no need under trade mark law for such notice to the community and
there is equally no suggestion that the registration
was defective
for want of any notice prescribed by the Act. Nevertheless, it is
significant that an advocacy organisation such
as the first
respondent should have taken such a step so discreetly.
42.
I digress from the narrative to say this: it is equally significant
that the respondent did not, from 1994 to 2013, declare
to the ummah
that the applicant was an imposter. It is striking that from the time
when, as I pointed out in paragraph 14 above,
Sheikh Nazim Mohamed
issued the invitation
in the name of United Ulama Council of South
Africa
to the meeting that led to the formation of the applicant
until the registration of the mark, neither Mufti Desai nor anyone
else
representing the first respondent objected to the use of the
name by others. It is even more striking when one recalls that the
name was being openly used by not only another grouping but by one
that advocated to the ummah views to which the respondent is
so
strongly opposed. One would have expected a fierce and sustained
protest. But there was none.
43.
I return to the narrative. On 15 July 2013, a further bulletin was
put out by the first respondent, again using the name in
dispute and
the applicant's logo. The thrust of this later bulletin was that the
first respondent was an organisation that had
been formed decades
before to "conduct itself with neutrality without compromising
an iota of Islamic law.
44.
On 11 September 2013, the first respondent wrote to Maulana Patel. On
this occasion, the applicant's logo was not included in
the first
respondent's letterhead. The first respondent recorded that a
committee within the first respondent had concluded that
the MMB was
in serious violation of Islamic law and urged Maulana Patel "as
a member organisation of UUCSA to propagate this
view of the
Haqq
[truth] of the
Deen
[correct governance of the
community]". Maulana Patel regarded this letter as being very
audacious in the light of the fact
that the applicant and Maulana
Patel himself had personally promoted the MMB.
45.
The first respondent continued to issue bulletins using the mark and
the logo of the applicant. The bulletins of 11 September
2013 and 12
September 2013 are before the court. In the first of these, positions
are taken against the MMB on the grounds that
its provisions would
violate Islamic law. In the second, advice is given on the question
of who are men of Allah and who are "deviants
who have drifted
far from mainstream Islam". In a letter dated 22 October 2013,
the first respondent addressed the Minister
of Justice, again using a
letterhead with the same font as that used by the applicant and with
the applicant's logo. In the letter
the first respondent stated to
the Minister that Maulana Patel and Sheikh AH Gabier were holding
themselves out as office bearers
in the organisation, while in truth
Maulana Patel was not the secretary of UUCSA and Sheikh Gabier was an
imposter.
46.
The applicant submitted that these documents show that the first
respondent sought the registration of the mark to steal the
identity
of the applicant and to mislead the public about the applicant's true
views regarding the MMB so as to garner support
from the public
against the MMB on the strength of the applicant's reputation in the
Muslim communities in South Africa.
47.
The broad position advanced by the applicant in argument in this case
rests on three propositions. The first of these propositions
is that
at least since 1994 organisations and individuals in sympathy with
the philosophy which the applicant espouses have publicly
advocated
propositions using the name United Ulama Council of South Africa and
that the applicant itself has consistently so advocated,
under its
name, since its incorporation as a voluntary association.
48.
The second such proposition is that except through the documents
which I have discussed above, the first respondent has not
advocated
or operated at all under the name United Ulama Council of South
Africa at all. Using the language of the Act, the applicant
asserts
that the first respondent has never used the mark in question for the
purpose of distinguishing its services in relation
to which the mark
is used or proposed to be used from the same kind of services
connected in the course of trade with any other
person. Conceding for
the purposes of this case, as it must, that the first respondent
enacted a constitution in 1989 in which
it described itself as the
United Ulama Council of South Africa, the applicant contends that the
first respondent has never advocated
under that name and that Mufti
Desai has consistently advocated under his own name or under that of
other organisations.
49.
The third such proposition is that the first respondent does not
intend advocating under the name United Ulama Council of South
Africa
at any time in the foreseeable future and that the registration of
the mark was designed by the first respondent, and Mufti
Desai in
particular, to weaken the force of the applicant's advocacy by
forcing the applicant to change its name and enabling the
first
respondent to advocate on the strength of the reputation built up by
the applicant.
50.
On the strength of these three propositions, the applicant submits
that the mark should not have been registered and are liable
to be
removed from the register.
51.
The applicant relies on ss 10(3) and 10(7) of the Act which provide:
The
following marks shall not be registered as trade marks or, if
registered, shall, subject to the provisions of sections 3 and
70, be
liable to be removed from the register:
…
(3)
a mark in relation to which the applicant for
registration has no
bona fide
claim to proprietorship;
…
(7)
a mark the application for registration of which was made
mala
fide.
52.
The applicant relies also on s 27(1)(a) which provides:
Subject
to the provisions of section 70 (2),
[4]
a registered trade mark may, on application to the court, or, at the
option of the applicant and subject to the provisions of section
59
and in the prescribed manner, to the registrar by any interested
person, be removed from the register in respect of any of the
goods
or services in respect of which it is registered, on the ground ... –
(a)
that the trade mark was registered without any
bona fide
intention
on the part of the applicant for registration that it should be used
in relation to those goods or services by him or
any person permitted
to use the trade mark as contemplated by section 38, and that there
has in fact been no
bona fide
use of the trade mark in
relation to those goods or services by any proprietor thereof or any
person so permitted for the time being
up to the date three months
before the date of the application.
53.
The evidence for the first proposition is overwhelming. The applicant
has shown numerous acts of public advocacy in its name.
In addition,
the applicant has put up minutes of meetings and routine
correspondence that simply cannot be, and were not, described
as
manufactured for the purpose of building a case. I mention merely
some of these documents below.
54.
There is the minute of the meeting on 14 October 1994 at the Pretoria
Muslim School in Laudium of an organisation which called
itself
United Ulama Council of South Africa. The Council of Muslim
Theologians (Majlisul- a-lmmah) of Kimberley wrote a letter
dated 16
January 1995 to the secretary of the Fordsburg Jamiat Office,
pledging their full support for the principles and ethics
of and
seeking to be included in the UUCSA. There is a series of letters
relating to the content of the applicant's draft constitution
and of
minutes of meetings regarding the choice of a logo for the UUCSA. On
7 March 1997, a body in sympathy with the applicant
and not with the
first respondent and calling itself the UUCSA held a meeting to
consider the position of the organisation at a
proposed meeting with
the SA Law Commission regarding Muslim personal law. There is a
series of letters between the organisation
styling itself UUCSA and
members of the South African executive and representatives of other
countries. On 24 May 2004, Maulana
Patel wrote to the Deputy Minister
of Education to invite the latter to a meeting of the organisation to
a discuss the very issue
that in truth divides the parties today, ie
the question whether the core principles of Islamic law might be
subject to constant
test and changes as the
...
legal system works on the principle that nothing is infallible or
immutable. In the event of there being a conflict between
the
Constitution and Islamic Law, it is quite conceivable that the
Constitution would prevail.
55.
As to the second proposition: the applicant has put up a series of
documents issued by an organisation of which Mufti Desai
is the head
called the Mujlisul (Council or Association of) Ulama of South Africa
(MUSA). One of these documents, a letter dated
8 April 2010 written
by Mufti Desai on behalf of MUSA to the Minister of Justice is most
significant. In the letter, Mufti Desai
responds to a letter written
by UUCSA. He writes to refute the claim that UUCSA represents the
Muslim community in South Africa.
There is no single organisation, he
says, which can claim to be the representative of this community. The
MMB, he says, was "vehemently
rejected by the greater majority
of the Muslim community." In numbered paragraph 7 of the letter,
he says:
URGENT
MEETING: UUCSA has requested an 'urgent meeting' with your honourable
self. We must emphasize that a meeting with only one
segment of the
community, namely the pro-MPL
[5]
group, to the exclusion of the anti-MPL group which constitutes the
majority, will be palpably unfair and unjust. The honourable
Minister
will not gain a true picture by talking only with the pro-MPL group.
56.
The significance of this document in the context of the case before
me is that Mufti Desai did
not
suggest in his letter that the
organisation calling itself the UUCSA was an imposter and that he,
Mufti Desai, was the authentic
representative of UUCSA. On the
contrary, in his letter Mufti Desai was at pains to distinguish UUCSA
from MUSA.
57.
In a pamphlet or booklet dated 2 April 2009, MUSA, of which Mufti
Desai is the head, wrote a scathing attack on the United Ulama
Council of South Africa, seeking to refute the claim by that
organisation to represent the consensus of ulama in South Africa and
to castigate the position taken up by this body. It makes clear that
The
purpose of this disclosure is to make the authorities aware that
UUCSA does not represent the Ulama of South Africa nor the
entire
Muslim Community.
58.
The publication states that it is imperative that the government
understands that the overwhelming majority of the Muslim community
rejects the MPL Bill. There is a section in the publication headed
THE
ERROR AND SKULDUGGERY OF UUCSA
59.
Again, the irresistible conclusion from this document is that Mufti
Desai recognised the existence of UUCSA as an organisation
distinct
from that which Mufti Desai represented. The document is
irreconcilable with the position taken by Mufti Desai in the
present
case that he has represented UUCSA since the adoption of the
constitutions of 1989.
60.
The first respondent has not pointed to a single document which
demonstrates advocacy by it under the name of United Ulama Council
of
South Africa or UUCSA before the registration of the mark. On the
contrary, the position of Mufti Desai as put in argument by
Mr Omar
on behalf of the first respondent is that Mufti Desai regards the
name of United Ulama Council of South Africa as illegitimate
for the
very reason that the ulama are not united on the burning issue of the
day. The purpose of the registration, thus Mr Omar,
is to prevent the
propagation of doctrine or advocacy inconsistent with the prescripts
of the Holy Quran.
61.
So the purpose of the registration of the mark, on the first
respondent's version, was not to distinguish the advocacy services
of
the first respondent from those of its competitors. Because the ulama
are not united on the burning issue of the day, the first
respondent
has no intention of providing advocacy services under its name. To do
so in the present circumstances, thus Mufti Desai
as his position was
explained in argument, would violate
haqq.
The true purpose of
the registration was to disable the applicant from so advocating. The
first respondent has no secular objection
to the propagation of what
it regards as an abominable doctrine by the applicant or its office
bearers, members and affiliates.
What the first respondent objects
to, and what the first respondent seeks to prevent by recourse to its
trade mark, is the use
by the applicant of a name that implies that
the applicant claims to speak for
all
the ulama in the
Republic.
62.
The irresistible conclusion, then, is that the bulletins and the
letter written by the first respondent after the registration
of the
mark were written in the name of the United Ulama Council of South
Africa not for the purpose of advocating the first respondent's
position but to confuse the public and to weaken the force of the
applicant's advocacy. This conclusion is reinforced by
the fact that
the respondent used the applicant's logo in the bulletins and the
letter in question.
63.
I think that in the light of this analysis, the case must be decided
against the first respondent on the simple basis that the
mark was
never intended, in the language of the definition of trade mark in s
1 of the Act, to distinguish the advocacy services
of the first
respondent in relation to which the mark is used or proposed to be
used from the same kind of services connected in
the course of trade
with any other person. That conclusion, as I see it, means that the
mark was registered
mala
fide
as contemplated by s
10(7) or was registered without any
bona fide
intention on the
part of the first respondent that it should be used in relation to
those goods or services by it and that there
has in fact been no
bona
fide
use of the trade mark in relation to those goods or services
by the first respondent.
64.
Furthermore, in my view the
applicant has shown that the first respondent has no
bona
fide
claim to
proprietorship of the mark as contemplated by s 10(3) of the Act. In
Moorgate Tobacco
Co
Ltd v Philip Morris Inc
(a
judgment of Mr Justice WA Trollip in a determination under the
predecessor to the Act delivered on 21 May 1986 and adopted in
Victoria's Secret Inc v
Edgars Stores Ltd
[6]
),
it was held that
An
applicant can rightly claim to be the common law proprietor of a
trade mark if it has gained the reputation as indicating that
the
goods and services in relation to which it is used are his.
65.
Now the furthest that the first respondent or Mufti Desai can go is
to say that in 1989 Mufti Desai created the first respondent
in the
pious anticipation that the unity displayed by the ulama in the Pier
Street mosque crisis would be sustained thereafter
and that the ulama
of South Africa could, through the vehicle of the organisation so
created and after due deliberation, speak
with a united voice on
matters of moment for the spiritual wellbeing of the ummah.
66.
But that pious anticipation was, as Mufti Desai has observed, not
born out by subsequent events. And for that reason the first
respondent remained dormant and Mufti Desai refrained from, to use
the language of
Moorgate,
indicating that the advocacy
services of Mufti Desai or any organisation which he represented were
associated with the mark - until
he did so for the limited purpose of
seeking to stifle or detract from the advocacy services provided by
the applicant.
67.
For that reason, I think that the first respondent has no
bona
fide
claim to proprietorship of the mark as contemplated by s
10(3) of the Act.
68.
In the light of these conclusions, it follows that there is no
dispute of fact which would preclude the resolution of this case
on
the papers.
69.
I must mention one further matter. The first respondent succeeded on
17 August 2016, while the present case was pending, in
obtaining
under case no. 50187/2016 in this court from Teffo J an interdict by
default against the "UNITED ULAMA COUNCIL OF
SOUTH AFRICA CASHEL
AVENUE ATHLONE, WESTERN CAPE". The contents of the court file
have been placed before me. The terms of
the interdict restrain the
applicant from using the first respondent's mark. The applicant has
applied to rescind that order. The
application for rescission is
pending. On 13 October 2016, the execution of the interdict granted
by Teffo J was suspended by Diedericks
AJ.
70.
I need only say that for present purposes, I do not consider that the
interdict granted by Teffo J is any bar to the present
proceedings.
Indeed, the fact of the interdict was only conveyed to this court as
part of the first respondent's supplementary
heads of argument, upon
which the fact of the suspension order was made known to the court by
counsel for the applicant.
71.
The applicant seeks in addition to the relief I have mentioned an
order declaring that the first respondent is guilty of an
offence
under s 61 of the Act by making false representations or deceiving or
influencing the second respondent for the purpose
of procuring the
registration of the mark. I do not think that the applicant has made
a case for this relief or that it would be
appropriate for this court
to make a declaratory order in what ought to be criminal proceedings.
72.
There was some debate during argument about whether I should direct,
pending any appeals against any order I might make in the
application, that the parties should be known by interim names
designed to avoid confusion and I invited the parties to submit
suggestions as to such interim names. The first respondent made a
suggestion. But the applicant has not responded to my invitation
and
I think it would be imprudent and premature if I pronounced on this
issue without full argument and evidence.
73.
Finally, as to costs: both sides asked for costs to follow the
result. I consider that this is a case whose complexity and
importance justify the employment of both senior and junior counsel.
In addition, the applicant asks that I make a special costs
order
rendering Mufti Desai personally liable for the costs. I take into
account that neither the first respondent nor Mufti Desai
is
litigating for reasons of personal financial gain and that their
position is that they are defending institutions of the profoundest
value. They have in some instances been obstructive in this
litigation but not to such a degree that a punitive costs order is
warranted. The position of Mufti Desai is that I have found him, on
what I regard as a proper application of the
Plascon-Evans
rule,
to represent an organisation he played a part in founding. On that
basis, I can see no reason for fixing him with personal
liability for
defending on behalf of the first respondent the trade mark which the
second respondent, albeit in retrospect wrongly,
saw fit to register.
74.
I make the following order:
1. It is declared that when the first
respondent caused the trade mark registration no. 2011/15858 (class
41) "United Ulama
Council of South Africa" (the mark) to be
registered, the first respondent had no
bona fide
claim to its
proprietorship as contemplated by s 10(3) of the Trade Marks Act, 194
of 1993 (the Act).
2. It is declared that the mark was
registered ma/a
fide
as contemplated by s 10(7) of the Act.
3. The second respondent is directed
to remove the mark from the trade marks register.
4. The first respondent must pay the
applicant’s costs, including the costs consequent upon the
employment of both senior
and junior counsel.
____________________
N
B Tuchten
Judge
of the High Court
23
March 2017
For
the applicant:
Adv
AR Bhana SC and Adv T Darymple
Instructed
by Knowles Husain Lindsay Inc
Johannesburg
For the first respondent:
Mr Z Omar of
Zehir
Omar Attorneys
Springs;
and
Mr
ME Seedat of
Seedat
Attorneys
Pretoria
[1]
The term kafir is one used in Islamic legal discourse to identify a
person whose beliefs or practices conflict with Islamic law.
Although it is the origin of the similar sounding term used in this
country as an extreme racial insult, the term is not used
in that
sense either in the papers or in this judgment.
[2]
A title accorded to a respected aahlim.
[3]
Section 1
[4]
Section 70(2) is of no application in the present case.
[5]
Muslim Personal Law
[6]
[1994] ZASCA 43
;
1994 3 SA 739
A 744