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[2015] ZAGPPHC 394
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Tekno-Medical Optik Chirurgie GmbH v Tekno Surgical And Medical (Pty) Limited and Others (69392/2013) [2015] ZAGPPHC 394; 2015 BIP 273 (GP) (17 June 2015)
IN
THE HIGH COURT OF SOUTH AFRICA
(GAUTENG
DIVISION, PRETORIA)
Case
number: 69392/2013
Date:
17 June 2015
In
the matter between:
TEKNO-MEDICAL
OPTIK CHIRURGIE
GmbH APPLICANT
And
TEKNO SURGICAL AND
MEDICAL (PTY) LIMITED FIRST
RESPONDENT
REGISTRAR
OF TRADE
MARKS SECOND
RESPONDENT
TEKNO
INSTRUMENTS AND MANUFACTURING CC THIRD
RESPONDENT
JUDGMENT
PRETORIUS
J,
[1]
This
is an interlocutory application in terms of Rule 10 of the Uniform
Rules of Court.
[2]
The
applicant requests the court to join the third respondent in the main
application in trade mark rectification proceedings against
the first
respondent, “Tekno Surgical and Medical”. The
second respondent, the Registrar of Trade Marks is cited
as the
second respondent in the main application where the applicant is
seeking an order cancelling the registration of Trade Mark
no.
2002/05799 in class 10. Although counsel for the applicant
dealt with the merits of the main application in his heads
of
argument I must agree with counsel for the first and third
respondents that it is not necessary for this court to deal with
the
main application, which was instituted on 13 November 2013.
[3]
The
first respondent filed an answering affidavit on 3 January 2014 and
raised the defence that the first respondent had been cited
incorrectly due to the fact that the relevant trade mark, which is
the subject of the rectification proceedings, had been assigned
to
Tekno Instruments and Manufacturing CC, which is an entirely
different and separate legal entity from that of the first
respondent.
[4]
This
resulted in the present application to have Tekno Instruments and
Manufacturing CC joined as the third respondent. The
first and
third respondents oppose the application for joinder.
[5]
Rule
10(3) of the Uniform Rules of Court provides:
“
Several
defendants may be sued in one action either jointly, jointly and
severally, separately or in the alternative, whenever the
question
arising between them or any of them and the plaintiff or any of the
plaintiffs
depends
upon the determination of substantially the same question of law or
fact which, if such defendants were sued separately,
would arise in
each separate action.
”
(Court’s
emphasis)
[6]
The
third respondent is an entirely different and separate legal entity
from that of the first respondent. In the present
application
it was conceded by counsel for the applicant that the first
respondent has no substantial and direct interest in the
order the
court may grant in the main application. It is clear that the
applicant has cited the wrong entity due to some
negligence by the
applicant by not ascertaining who the proprietor of the relevant
trade mark is before instituting the main application.
The
applicant is attempting to salvage the application by applying for
joinder of the third respondent.
[7]
The
first respondent has no interest in the outcome of the main
application, nor will any judgment in the main application have
any
impact on the first respondent.
[8]
In
Dreyer
v Tuckers Land and Development Corporation (Pty) Ltd 1981(1) SA 1219
(T)
at 1224F – 1225B it was held:
“
It
will be noted that the Rule requires the questions of law and fact
upon which the applicants' right to relief depend must be
"substantially" the same
.
In the Afrikaans text of the Rule the word "wesenlik" is
used. The authorities indicate that the meaning of those two
words
may vary considerably according to the context in which they occur.”
(Court’s
emphasis)
[9]
In
this instance the third respondent’s name appears opposite the
relevant trade mark in the trade mark register and would
therefore be
the appropriate entity to cite in an application for the expungement
of the trade mark. If the applicant had
attended to it before
launching an application, the wrong party would not have been before
court.
[10]
It
is abundantly clear that any prior proprietor of the trade mark can
and should have no interest whatsoever in the outcome of
a dispute in
the main application. Such a party should not be joined in the
main application as any order granted in the
main application will
not affect the first respondent.
[11]
The
deed of assignment is dated 6 February 2013 and the recordal of the
assignment and a certificate confirming the assignment is
dated 26
June 2013. These dates are prior to the date of the launching
of the main application. It is thus clear that
the applicant
had not gathered all the relevant information and facts before
instituting the main application against the first
respondent.
[12]
The
applicant could thus not have brought separate applications against
the first and third respondents as intended by Rule 10(3)
in respect
of the issue of entitlement to the trade mark as there will be no
“
determination
of substantially the same question of law or fact which, if such
defendants were sued separately, would arise in each
separate
action
”.
[13]
The
applicant’s argument that relief is sought only from the second
respondent and therefore it is immaterial who the registered
owner
is, cannot be upheld. Although it is correct that the Registrar
of Trade Marks is the true respondent in rectification
proceedings,
it is still necessary to cite the party, the registered proprietor of
the trade mark, who may be affected by the outcome
of rectification
proceedings.
[14]
The
respondent relied on the
dictum
in
Gulf
Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk
1963(2) SA 10 (TPD)
where it is set out by Trollip J at p19C-E:
“
Obviously
it was not envisaged by the Act or Rules that the Court should
itself, or that the proprietor should himself, alter the
register
when the Court orders rectification under sec. 136. I think that only
the Registrar can do that. Consequently, having
regard to the
aforementioned functions of the Registrar, I think that the only
effective relief that can and must be claimed in
an application under
sec. 136 is an order directing (or perhaps authorising) the Registrar
to rectify the register by removing
the trade mark therefrom.
He
is therefore the true respondent in such proceedings and should be
cited as such
.”
(Court’s
emphasis)
[15]
This,
however, does not exonerate the applicant to cite the proprietor of
the trade mark. If the proprietor of the trade mark
is not
cited, it will be unjust and unfair as the proprietor will not have
an opportunity to oppose such an expungement application.
[16]
Should
the court grant the application for joinder of the third respondent,
it will have the result that the affidavits, which constitute
evidence under oath, will have to be amended to accommodate the third
respondent, as the affidavits presently relate to the first
respondent. It is trite that affidavits cannot be amended and
the applicant indicated that it will cure the problem by filing
supplementary affidavits in the main application.
[17]
I
must agree with counsel for the first and third respondents that the
applicant is attempting to cure a fatal mistake on the applicant’s
part, by applying for joinder of the third respondent. The
concession by the applicant that the first respondent has no interest
in the main application has the result that the main application
should have been withdrawn against the first respondent.
The
proceedings against the third respondent will have to be instituted
afresh to ensure that the correct parties are cited.
[18]
Therefor
I make the following order:
1.
The
application of joinder of the third respondent to the main
application is dismissed.
2.
The
applicant is ordered to pay the costs of the application for joinder.
_____________________
Judge C Pretorius
Case
number
: 69392/2013
Appeal heard on
: 4 June 2015
For the
Applicant
:
Adv. R Michau SC
Instructed
by
: ADAMS & ADAMS
For the
Respondent
: Adv. CJ van der Westhuisen SC
Instructed
by
: HAHN & HAHN INC
Date of
Judgment
: 17 June 2015