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2015
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[2015] ZAFSHC 142
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E-Papa (Pty) Ltd and Another v Die Sakman CC and Another (2419/2015) [2015] ZAFSHC 142 (4 June 2015)
IN THE
HIGH COURT OF SOUTH AFRICA
FREE
STATE DIVISION, BLOEMFONTEIN
Case No:
2419/2015
In the application between:
E-PAPA (PTY) LTD
OOLSNIRP (PTY) LTD
and
DIE SAKMAN CC
PAUL MILNER MURRAY
1st APPLICANT
2nd APPLICANT
1st RESPONDENT
2nd RESPONDENT
CORAM:
C REINDERS, AJ
JUDGMENT BY:
C REINDERS, AJ
HEARD
ON:
4 June 2015
DELIVERED ON:
11 June 2015
[1]
This is an application to interdict the Respondents from infringing
the Second Applicant’s trade mark and passing off
it’s
goods as those of the First Applicant, including ancillary relief.
Initially it was brought as an urgent application
for an interim
interdict, but after the matter was postponed to the opposed motion
roll, a final interdict is now sought by Applicants.
[2] The
Respondents raised the preliminary point that this court does not
have jurisdiction to entertain the claim for passing off
in so far as
it is alleged that the passing off occured outside the Republic of
South Africa. Relying on
Caterham Car
Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd And Another
[1998] ZASCA 44
;
1998
(3) SA 938
(SCA)
, Mr Louw argued that
the fact that the Respondents is resident in the Free State Province
does not clothe the court with jurisdiction
to entertain the
application for relief pertaining to alleged passing off outside the
country’s borders.
[3] Mr
Zietsman on the other hand argued that a distinction should be drawn
between a mandatory and prohibitory interdict, the latter
being the
relief claimed by Applicants in the Notice of Motion. He stressed the
basic principle of effectiveness and the territorial
nature of
jurisdiction would allow this court the required jurisdiction. He
submitted that South African courts are prepared to
restrain incolae
of their own areas of jurisdiction from acting unlawfully anywhere,
refering to
Minister of Agriculture v
Grobler
1918 TPD 483
, where the
respondent was restrained from dealing with certain cattle in
Botswana. Furthermore, the ultimate sanction against the
incolae who
fails to obey the interdict is imprisonment for contempt of court. A
court can insist that a respondent under its power
desist from his
unlawful act and so expunge his contempt.
[4] In
more recent times it has been held by the Supreme Court of Appeal in
Metlika Trading Ltd v
Commissioner, SA Revenue Service
2005 3 SA 1
(SCA)
at par [49] that the court may assume jurisdiction to grant an
interdict in personam no matter if the act in question is to be
performed or restrained outside the court’s area of
jurisdiction, or even outside the Republic. I am satisfied that the
court has jurisdiction to entertain a prohibitory ijnterdict based on
passing-off herein.The preliminary point is accordingly dismissed
and
I now turn to consider the merits of this application.
[5] It
is common cause that First Applicant, E-PAPA (Pty) Ltd (E-PAPA)
manufactures and distributes maize meal throughout South
Africa and
the Kingdom of Lesotho. E-PAPA operates from its millery in Henneman,
Free State Province. Second Applicant is Oolsnirp
(Pty) Ltd
(Oolsnirp) whose principal place of business is also in Henneman.
Oolsnirp is the registered proprietor of a trade mark
for maize meal
and related products in the name of e-PAPA SUPER MAIZE MEAL, and it
has been marked with a distinctive get-up. This
trade mark appears on
all maize meal bags distributed by E-PAPA in the country and Lesotho.
The right to use the trademark
vests in E-PAPA in terms of an
agreement concluded between E-PAPA and Oolsnirp during 2012 for the
exclusive right to use the trade
mark on its products in return for
payment of royalties.
[6]
First Respondent is Die Sakman CC (Die Sakman), a close corporation
with it’s main place of business in Reitz, Free State
Province.
Die Sakman manufactures plastic and nylon bags and prints signage on
them, using a metal plate known as a “stereo”.
Bags were
supplied by Die Sakman to E-PAPA for the latter’s maize meal
(e-PAPA) until May 2014. However, the stereo used
to print the trade
mark of E-PAPA has not been returned to E-PAPA. Second Respondent is
Paul Milner Murray (Murray) a former sales
representative of E-PAPA.
[7]
Applicants allege that Die Sakman is also a distributor of maize meal
under the name of Amigos Maize Meal, that Mr Henk van
Wyk (Van Wyk)
is the “controlling mind” of Die Sakman and that Murruy
is in the employ of Die Sakman. These allegations
are all denied by
Van Wyk in his answering affidavit on behalf of the respondents. Van
Wyk maintains that Murruy is in the employ
of Amigos Milling (Pty)
Ltd (Amigos) in respect whereof a certificate of incorporation as a
private company in Lesotho, dated 6
November 2014, is annexed.
Furthermore, it is in fact Amigos who supplies bags “similar”
to that of E-PAPAS and distributes
maize meal to a former client of
E-PAPAS called Hucksters Import and Export (Hucksters) in Maseru. A
provisional registration
of property rights to the logo and
mark in terms of Rule 47(3) of the Lesotho Industrial Property Order
and Regulations 19
of 89 (dated 19 March 2015) is annexed
as proof of the property rights accrued to Amigos.
[8] It
is also alleged by Applicants that the current sales representative
of E-PAPA (Mr Bekker) was contacted by a client informing
him that
their product is being sold at a competitor’s shop at a lower
wholesale price, whereupon Bekker travelled to Maseru
and discovered
that it was a counterfeit product. Furthermore it is alleged that,
the entire get-up of E-PAPA’s product had
been copied.
Any infringement on Oolsnirp’s trade mark or copying of
E-PAPA’s get-up is denied by Respondents.
[9] The
thrust of Die Sakman’s defence is that Amigos, as a Lesotho
private company, produces, sells, supplies and distributes
maize meal in bags “similar” to the bags used by E-PAPA,
thereby distancing itself from all facets in the supply chain
of the
aleged e-PAPA counterfeit maize.
[10]
Applicants filed a request in terms of Rule 35 (14) on Respondents.
From the answering affidavit thereto as well as Applicants’
replying affidavit, the following emerged:
(a)
Van Wyk is the only director and
shareholder of Amigos as is evident from Amigo’s certificate of
registration, he is
the owner of the provisional rights of the
e-PAPA mark and logo registered in Lesotho (par [9] above, and a also
a member of Die
Sakman;
(b)
A copy of Amigo’s company information
indicates that the main business adddress is situated at Ha Tsolo
Lefoto Building, Maseru.
This is an office block and no maize meal is
produced at the said premises. The director is indicated as Mr
Hendrik Josephus Christiaan
van Wyk of Farm Ramralic, Reitz;
(c)
One Mr Riaan van der Walt of JC Milling was
shown a maize meal mill at Van Wyk’s farm
“Ramralic”
during October/November 2014. Maize meal was
in fact manufactured and bagged in bags displaying the Amigos logo;
(d)
On closer inspection of Amigos Maize Meal
bags it is indicated that the product is packed by Amigos Milling in
Reitz. The cell phone
number displayed is that of Van Wyk;
(e)
Van Wyk admitted that Amigos has not
“effictively commenced trading” in Lesotho. An invoice of
Amigos indicates that
it des not eminate from Lesotho, but in fact
depicts a South African banking account and the e-mail address of Die
Sakman.
[11] Mr
Zietsman argued that the contents of par [10] above is indicative of
the fact that allegations by Die Sakman that it is
in fact Amigos who
produces, sells, supplies and distributes the alleged counterfeit
products, is deliberately untrue and untenable
and that the
Respondent’s version should be disregarded on the papers.
[12] In
Wightman t/a JW Construction v Headfour
(Pty) Ltd and Another
[2008] ZASCA 6
;
2008 (3) SA 371
SCA
at
375 par [12] Heher JA stated the follwing with reference to
Plascon-Evans Paints Ltd v Van Riebeeck
Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A)
“
Recognising
that the truth almost always lies beyond mere linguistic
determination the courts have said that an applicant who seeks
final
relief on motion must, in the event of conflict, accept the version
set up by his opponent unless the latter’s allegations
are, in
the opinion of the court, not such as to raise a real, genuine or
bona fide dispute of fact or are
so
far-fetched or clearly untenable that the court is justified in
rejecting them merely on the papers
.”
(my own emphasis)
And on
the same page at par [13]
When
the facts averred are such that the disputing party
must
necessarily possess knowledge
of them
and be able to provide an answer (or counterveiling evidence) if they
be not true or accurate but, instead of doing so,
rests his case on
bare or ambigious denial
,
the court will generally have difficulty in finding that the test is
satisfied.”(my own emphasis)
[13]
Van Wyk possessed intimate knowledge of the allegations by the
Applicant, but elected to make bare and ambigious denials. He
is
indeed the “controlling mind” of Amigos. His version is
untenable.
[14]
Turning to the Applicants’ version I must determine if a case
was made out for infringement of the registered trade mark
of
Oolsnirp and passing off its goods by Respondents as those of
E-PAPA.
[15]
The studio of E-PAPA was never returned but in stead used to
unlawfully copy the registered trade mark of E-PAPA on bags
which were filled with inferior maize meal milled at Reitz. The
counterfeited product was then exported to Lesotho and sold. The
use
of the trade mark was clearly unauthorised and in the course of
trade. It is clear from the photo copies annexed to the
papers
that the mark on the counterfeited e-PAPA maize meal bags are not
similar but in fact identical to that of the trade mark
of E-PAPA.
[16]
That deception or confusion would result is evident by the fact that
one of E-PAPA’s clients in Lesotho contacted the
sales
representative of E-PAPA and informed him that Hucksters was selling
e-PAPA maize meal at a cheaper price. One Mr Tsung of
Hucksters, a
former client of E-PAPA, was also under the false impression
that the product was that of E-PAPA. The
E-PAPA mark is also
used in relation to goods and services in respect of which the trade
mark is registered , namely White Maize
Meal.
[17]
E-PAPA’s product has no doubt been marked with a distinctive
get-up, with characteristics fully described in the prayers
to follow
below. This get-up has acquired a reputation in the market.
Applicants annexed an extract of E-PAPA’s monthly turnover
pertaining to its Lesotho business, clearly indicative of the
goodwill it enjoyed in Lesotho. The get-up and trade name was
clearly known in the market and acquired a public reputation. Murruy,
as former sales manager of E-PAPA in Lesotho, was well aware
of this.
[18]
Misrepresentation by the Respondents were clear in that there was not
only a likelihood of deception that members of the public
would be
confused, but actual deceit. So for instance was the said Mr Tsung
under the impression that he had in fact purchased
the product of
E-PAPA. The representation by Respondents was false and unauthorised
as is evident from above. That the deceit was
calculated is clear
from the fact that the stereo of E-PAPA was not returned but in stead
used to print the distinctive get-up
of E-PAPA on Respondents’
bags.
[19]
The only question remaining is if the Applicants have met the
requirements for granting of a final interdict. Applicants have
shown
a clear right to Respondents not unlawfully infringing the trade mark
of Oolsnirp and passing of their product as that of
E-PAPA. It is
reasonably apprehended that Applicants will suffer damage until
Respondents’ unlawfull actions are interdicted
and the
Applicants do not have any form of similar protection by any
other ordinary remedy.
[20] I am
thus satisfied that the Applicants have met the requirements for the
granting of a final interdict. Regarding the costs
occasioned by the
postponement of the application of 28 May 2015, I am of the view that
the cost follow suit.
[22]
Accordingly I make the following orders:
1.
The Respondents is interdicted by itself or
through its servants or agents from infringing the Second Applicant’s
rights (lawfully
used by the First Applicant) acquired by Trade Mark
No. 20124/30083, as represented in annexure “X” to the
Notice of
Motion, or any other mark so nearly resembling the
aforesaid registered trade mark as to be likely to deceive or cause
confusion;
2.
The Respondents is interdicted by itself or
through its servants or agents from passing off its goods as those of
the First Applicant
by selling or offering for sale maize meal in
bags exhibiting the following features, viz:
a)
the trade mark as described in para.1;
b)
the words “
THE
PEOPLE’S CHOICE
”,
(hereafter “the slogan”) printed in red at the bottom of
the bag, between two red tram lines with a yellow
background;
c)
two green arrows to the left and right of
the slogan, pointing towards the slogan;
d)
the word “
e-PAPA
”
printed in red followed by the slogan, printed in green, printed
vertical on both the left and right sides of the bag;
e)
a green horse in the middle of the bag with
the words “
Consider your
eenvironment”
printed in white
over the body of the horse;
f)
the words “
The
original taste that stood the test of time”
printed
in red above the horse;
such
features as being depicted in annexure “Y” in the
Applicants’ Notice of Motion;
3.
Respondents are ordered in the presence of
an authorised agent of the Applicants, to destroy all the bags found
in possession of
the Respondents, displaying the features referred to
in para 1 and 2 above;
4.
First and Second Respondent, jointly and
severally, the one paying the other to be absolved, is ordered to pay
the cost of this
application, including the cost of 28 May 2015.
________________
C. REINDERS, AJ
On behalf of applicants: Adv
PJJ Zietsman
Instructed by:
Christo Dippenaar Inc.
BLOEMFONTEIN
On behalf of respondents: Adv
MC Louw
Instructed by:
Phatshoane Henney
BLOEMFONTEIN