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[2013] ZAGPPHC 59
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Pointer Fashion International CC v Adams & Adams Attorneys and Others (11747/2012) [2013] ZAGPPHC 59; 2013 BIP 180 (GNP) (15 February 2013)
REPORTABLE
IN
THE NORTH GAUTENG HIGH COURT.
PRETORIA
/ES (REPUBLIC OF SOUTH AFRICA)
CASE
NO: 11747/2012
DATE:15/02/2013
IN
THE MATTER BETWEEN:
POINTER
FASHION INTERNATIONAL
CC
..........................................................
APPLICANT
AND
ADAMS
& ADAMS
ATTORNEYS
.........................................................................
1
ST
RESPONDENT
DELUXE
HOLDING
AG
.........................................................................................
2
nd
RESPONDENT
COMMISSIONER
OF COMPANIES AND
INTELLECTUAL
PROPERTY
..................................................................................
3
rd
RESPONDENT
SHERIFF
OF THE MAGISTRATE'S COURT,
PRETORIA
SOUTH
EAST
…..................................................................................
4
th
RESPONDENT
JUDGMENT
PRINSLOO.
J
[1]
The applicant applies to file a
supplementary or additional affidavit, as envisaged in terms of the
provisions of rule 6(5)(e) of
the Uniform Rules, after the prescribed
set of affidavits has already been exchanged in the main application
("the main application")
under the same case number
featuring the same parties.
[2]
It is convenient to quote the provisions
of rule 6(5)(e):
"Within
ten days of the service upon him of the affidavit and documents
referred to in sub-rule (5)(d)(ii) the applicant may
deliver a
replying affidavit. The court may in its discretion permit the filing
of further
affidavits."
(Emphasis added.)
[3]
The learned author Harms, Civil
Procedure in the Supreme Court at B-53 offers the following useful
and concise advice as to the
approach to be adopted in respect of an
application in terms of this sub-rule:
"While
the general rule is that only the three sets of affidavits referred
to above are permitted, the court may in its discretion
permit
further sets. The courts are inclined towards the view' that the
parties should be permitted to have the case adjudicated
on the full
facts. The court will not exercise its discretion in the absence of
an explanation of why it is necessary to file the
affidavit concerned
and will always act subject to considerations of fairness and justice
and the absence of prejudice to other
parties. Leave to file further
affidavits requires an indulgence from the court and the applicant
for such filing must show that
he has not been mala fide or culpably
remiss."
See
the authorities listed in the relevant footnotes at B-54.
[4]
The application is opposed by the first
and second respondents. The third and fourth respondents did not play
an active part in
the proceedings before me.
[5]
Mr Da Silva SC appeared for the
applicant and Mr Preis SC assisted by Ms Kilmartin, appeared for the
first and second respondents.
Brief
background notes and a reference to the procedural history of the
case
[6]
The applicant is the erstwhile
proprietor of five registered trade marks (and devices) in, inter
alia, classes 3, 18 and 25. The
names of the trade marks feature the
word "Pointer" after the well-known Pointer dog, an
illustration of which also forms
part of the registered device or
getup. 1 shall refer to these trade marks as "the Pointer trade
marks". The Pointer
trade marks were registered mainly in
respect of leather articles of clothing, imitations thereof and
accessories such as handbags,
travelling bags, umbrellas and so on.
[7]
The first respondent, a well known firm
of attorneys also practising in the field of intellectual property,
used to represent the
applicant. However, a dispute arose between the
first respondent and the applicant with regard to certain fees
charged
by
the former, and this resulted in the first respondent withdrawing as
the applicant's attorneys of record during 2002. Thereafter,
an
action was instituted in the magistrate's court, Pretoria, under case
no 25334/02, by the first respondent against the applicant
for
payment of fees and disbursements. In relation to this action:
1.
a cost
order was granted against the applicant in favour of the first
respondent on 15 July 2005; and
2.
default judgment, together with costs,
was granted against the applicant in favour of the first respondent
on 16 October 2006.
[8]
It is appropriate to point out that the
applicant did not, at any stage, seek a rescission of the judgment or
challenge the validity
of the judgment or the cost order granted. To
date, the amounts due and payable to the first respondent by the
applicant, running
into tens of thousands of rand, remain unpaid.
[9]
On 26 January 2006, the first respondent
issued a warrant of execution based on the cost order of 15 July 2005
which the Sheriff
attempted to execute at the applicant's then
registered address in Claremont Cape Town on 1 February 2007 without
success because
the applicant had left the address. The first
respondent never taxed a bill of costs in respect of the default
judgment of 16 October
2006, believing that the applicant had no
assets.
[10]
In the light of the inability of the
first respondent to recover any corporeal movable or immovable
property from the applicant,
the Pointer trade marks were then
attached by the third respondent on 2 September 2010 pursuant to the
first respondent making
application (on a form TM6 supported by the
relevant documentation) in accordance with the provisions of section
41 of the Trade
Marks Act, 194 of 1993 ("the Trade Marks Act")
read together with
regulation 41
of the
Trade Mark Regulations.
It
was submitted by counsel for the first respondent, correctly in my
view, that the attachment of registered trade marks (which constitute
incorporeal property) is specifically regulated by the
Trade Marks
Act and
the
Trade Mark Regulations and
is therefore dealt with in
terms of these provisions. There is no time bar in the
Trade Marks
Act for
the bringing of such an attachment application. A debtor must
also be given proper notice of such an application.
[11]
The applicant was given such proper
notice of such application for attachment of the trade marks in July
2010. It is noteworthy
that the application for attachment was not
opposed by the applicant. The application was duly served on the
erstwhile attorneys
of the applicant.
[12]
The sheriff duly sold the Pointer trade
marks in execution on 8 September 2011 to the second respondent
pursuant to the attachment
made in terms of the
Trade
Marks
Act. This
was done under cover of the magistrate's court action case
no 25334/2002.
[13]
The details of the proprietor of the
Pointer trade marks were changed by the third respondent on 4
November 2011 to reflect the
second respondent as the proprietor
thereof. On 8 November 2011 the first respondent, in writing,
informed the applicant of the
aforesaid developments.
[14]
Almost three months later the applicant
launched the main application.
The
notice of motion, in part A thereof, contained prayers for urgent
interdictory relief pending the outcome of the relief sought
in part
B of the notice of motion containing prayers for relief in the form
of the setting aside of the sale in execution and ancillary
relief.
The application was set down for 6 March 2012 and heard on 7 March
2012.
The
relevant prayers contained in part A are the following:
"2.1
The second respondent be interdicted and restrained from alienating,
assigning, transmitting, burdening, hypothecating
or in any other way
dealing with the trade marks listed in annexure A hereto (my note:
these are the Pointer trade marks) and 2.2
this order be recorded as
a caveat in the records of the third respondent against the trade
marks set out in annexure A hereto."
The
relief sought in part B of the notice of motion is, firstly, the
setting aside of the execution sale of the Pointer trade marks
on 8
September 2011 to the second respondent under the magistrate's court
case no 25334/02; secondly "cancelling and/or setting
aside the
assignment/transmission or purported assignment/transmission" by
the fourth respondent of the Pointer trade marks
to the second
respondent pursuant to the sale of 8 September 2011; and, thirdly,
directing the third respondent to expunge and/or
delete the
"registration of transfer/assignment/transmission" of the
Pointer trade marks in the name of the second respondent
on 4
November 2011. There is also a prayer for the third respondent to be
directed to reinstate the applicant as the proprietor
of the Pointer
trade marks.
The
issues flowing from the main application
[15]
For purposes of this
rule 6(5)(e)
application it is not necessary for me to pronounce upon the issues
raised in the main application. A mere summary will suffice.
[16]
The main thrust of the application, as
it stands, for the relief mentioned, is based on the provisions of
rule 41 (7)(f)(i) of the
Magistrates Court Rules which read as
follows:
"(f)(i)
Unless an order of court is produced to the sheriff requiring him or
her to detain any movable property under attachment
for such further
period as may be stipulated in such order, the sheriff shall, if a
sale in respect of such property is not pending,
release from
attachment any such property which has been detained for a period
exceeding four months."
It
is argued on behalf of the applicant that at the time of the sale in
execution the attachments had already expired pursuant to
the
provisions of this sub-rule. Therefore, so the argument goes, the
sale in execution was unlawful and the goods sold under the
purported
sale were not under lawful attachment at the date of the sale.
This
argument is countered on behalf of the first and second respondents
on the basis that the sub-rule deals with movable property
whereas a
trade mark is not considered to be movable property -
Oilwell
(Pty) Ltd
v
Protec
International Ltd & Others
2011 4 SA
394
(SCA) at 400A. Here the learned Deputy President stated:
"Reverting to trade mark rights: like all other intellectual
property
rights they are territorial and akin to immovables."
[17]
It was also argued on behalf of the applicant that by reason of the
fact that the sale w'as nothing more than a "purported
sale in
execution", which was unlawful, the provisions of section 70 of
the Magistrates' Court Act do not find application,
even if delivery
of the goods took place pursuant thereto and the sale is not
protected from subsequent impeachment. Section 70
reads: "A sale
in execution by the messenger shall not, in the case of movable
property after delivery thereof or in the case
of immovable property
after registration of transfer, be liable to be impeached as against
a purchaser in good faith and without
notice of any defect."
This
argument is countered on behalf of the first and second respondents
on the basis that section 70 relates to the sale in execution
of
corporeal movables and immovables and therefore irrelevant given that
the subject of the sale was the Pointer trade marks. In
any event,
even if section 70 were to be applicable, there w'as no evidence that
the second respondent acted in bad faith or with
notice of a defect
as foreshadowed by this section.
[18]
There was a third argument advanced on behalf of the applicant namely
that the "assignment or transmission of the Pointer
trade marks
was invalid in the sense that it flew in the face of the provisions
of
section 30
of the
Trade Marks Act in
that one of the Pointer trade
marks, argued to be ’associated’ with those Pointer trade
marks sold in execution, was
in fact not sold or assigned and the
aforesaid provisions prohibit assignment or transmission separately
from ’associated’
trade marks". This argument was
countered on behalf of the first and second respondents on the basis
that these provisions
had been held to be directory and not
peremptory and, in any event, the transfer of ownership following a
sale in execution is
not an assignment or transmission as envisaged
in the
Trade Marks Act.
>
[19]
1 say no more about the merits, or lack
thereof, of these arguments and counter arguments for present
purposes.
The
basis of the
rule 6(5)(e)
application and the court order of 7 March
2012
[20]
The applicant was inspired to launch the
rule 6(5)(e)
application because of yet another technical argument on
the strength of which the sale in execution could be attacked, the
details
of which were only brought to the attention of the deponent
to the supplementary affidavit on the day of the hearing on 7 March
2012 after her attorney was informed of the point the previous day by
counsel.
[21]
The argument is based on the provisions
of section 63 of the Magistrates' Court Act 32 of 1944 ("the
Magistrates' Court Act").
The section is titled "execution
to be issued within three years" and reads as follows:
"Execution
against property may not be issued upon a judgment after three years
from the day on which it was pronounced or
on which the last payment
in respect thereof was made, except under an order of the court in
which judgment was pronounced or of
any court having jurisdiction, in
respect of the judgment debtor, on the application and at the expense
of the judgment creditor,
after notice to the judgment debtor to show
cause why the execution should not be issued."
On
the strength of this provision the applicant wishes to introduce an
argument, in the proposed supplementary affidavit to be filed
in
terms of rule 6(5)(e), to the
effect
that the default judgment of 16 October 2006 became superannuated as
no warrant of execution was ever issued pursuant thereto,
and the
judgment of 15 July 2005 (the costs order) is also superannuated
because more than three years expired between the last
attempted
execution on 30 January 2007 and the next steps to execute in terms
of the provisions of the
Trade Marks Act, whether
it was the notice
of the application for attachment of the trade marks in July 2010, or
subsequent events such as the attachment
by the third respondent on 2
September 2010 or the latest sale in execution on 8 September 2011.
[22]
The application to introduce this argument in the form of a
supplementary affidavit, is opposed by the first and second
respondents,
inter alia
on
the basis of a failure by the applicant to adequately explain why the
argument was not introduced in the first place, alleged
mala
fides
on the part of the applicant and
prejudice in that the respondents are now required to meet an
entirely different case. There are
also other arguments offered by
the first and second respondents. As to the merits of the
section 63
attack, the first and second respondents also argue that
section 63
only applies in relation to attempts to execute in respect of movable
and immovable corporeal property and that the provisions
of the
Trade
Marks Act are
those which apply and which requirements have been met,
so that the sale cannot be attacked on the strength of section 63 of
the
Magistrates' Court Act.
[23]
When the matter came before this court
on 7 March 2012, and probably because of the attempted late
introduction of the section 63
argument, the parties prepared a draft
order which was made an order of court by agreement. In terms thereof
the application was
postponed sine die and, without prejudice, the
first and second respondents undertook not to alienate or assign the
Pointer trade
marks pending the finalisation of part B of the
application or the expiration of a period of six months from the date
of the order,
whichever occurs first. Of course, that period has by
now expired. The second respondent also consented that the order can
be recorded
as a caveat in the records of the third respondent. It
was specifically recorded that, with the exception of the question of
urgency,
the first and second respondents reserved their rights in
regard to the points in limine raised by the first and second
respondents.
These points include an argument that this court has no
jurisdiction to entertain the application. This is a subject which I
will
revert to hereunder.
In
terms of the order it was also recorded that the sum of R200 000,00
paid into the applicant's attorneys' trust account would
be allocated
on behalf of the applicant for the payment of the costs order
obtained in July 2005 and the judgment granted in October
2006 in the
event that the sale in execution is set aside and the balance would
stand as security for the first and second respondents'
taxed costs
in this application. The costs occasioned on 7 March 2012 were
reserved to be determined by the court adjudicating
part B of the
application.
The
argument
in limine
offered
on behalf of the first and second respondents with regard
to
the question of jurisdiction
[24]
' At the commencement of the proceedings
before me, I was urged by Mr Preis,
correctly
in my view, to first decide this argument relating to jurisdiction
before deciding whether or not to consider the merits
of the rule
6(5)(e) application.
[25]
Already in the opposing affidavit to the
main application, the first and second respondents, in limine, argued
that this court does
not have jurisdiction to grant the required
relief against the second respondent. It was argued that the
applicant should have
attached the second respondent's trade marks in
order to found the jurisdiction of this court in terms of
section
41(2)
of the
Trade Marks Act because
the second respondent is a
foreign entity.
[26]
It is alleged on behalf of the applicant
in its founding affidavit in the main application that its registered
address is in Upper
Claremont Cape Town. It is accordingly not
"resident" within the area of jurisdiction of this court.
There is no indication
that its main place of business is situated
within the area of jurisdiction of this court: the deponent to its
affidavits resides
in Cape Town and it also makes use of the services
of attorneys based in Cape Town.
[27]
In the founding affidavit, it is also
alleged that the second respondent is a company with limited
liability, registered according
to the laws of Switzerland, and
having an address in Switzerland at Wallstrasse 13, 4010, Basel,
Switzerland.
In
addition, it is alleged that the second respondent's address for
service and deemed
domicilium citandi et
executandi
for the purpose of
proceedings relating to the relevant entries in the Register
maintained by the third respondent in terms of
section 66
of the
Trade Marks Act, is
that of the first respondent in Lynnwood Manor,
Pretoria.
[28]
By agreeing to the order of 7 March
2012, the respondents did not consent to or submit to the
jurisdiction of this court. I have
pointed out that it is stipulated
in the order that the respondents reserve their rights with regard to
their arguments in limine,
including the jurisdiction argument. The
following is also stated in Poliak On Jurisdiction p9:
"Submission
to the jurisdiction of a court can take two forms. The parties may
agree, either at the time of contracting with
each other or when a
dispute between them has arisen, to submit to the jurisdiction of a
court. Alternatively, a defendant may,
when sued in a court which
would otherwise have no power over him, acquiesce in its
jurisdiction. In each case the
onus
will
be on the plaintiff to prove that the defendant has duly submitted
either expressly or by conduct consistent only with acquiescence."
With
reference to relevant authorities, the learned author also points
out, on p9, that submission or consent
per
se
is insufficient to confer
jurisdiction on the court.
[29]
The argument offered on behalf of the
respondents is that this court does not have jurisdiction to
entertain the relief sought against
the second respondent, as it is a
peregrinus of the republic. It was argued further on behalf of the
respondents that before this
court would have jurisdiction to
consider the relief, it would be necessary for the applicant to apply
to the court for the attachment
of the Pointer trade marks in order
to found and/or confirm jurisdiction against the second respondent.
This has not been done.
I have already pointed out that in the
opposing affidavit to the main application the respondents already
advanced this argument
and suggested that the trade marks should have
been attached in terms of the provisions of
section 41(2)
of the
Trade Marks Act, in
order to found jurisdiction.
0]
In both the opposing affidavit and the heads of argument offered on
behalf of the respondents, this attack on the jurisdiction
appears to
be limited to the relief sought in part A of the notice of motion,
namely an interdict restraining the second respondent
from
alienating, assigning, transmitting, burdening, hypothecating or in
any other way dealing with its own trade marks, properly
transferred
to it by the third respondent as already illustrated. There is also
the relief sought, in part A, for a
caveat
to be recorded in the records of the
third respondent.
I
have to confess that it is not clear to me why the attack on
jurisdiction is limited to the relief sought in part A, neither was
this question ventilated before me during the proceedings. The relief
sought in part B is aimed at depriving the second respondent
of its
trade marks which it legally purchased at an execution sale, paid the
purchase price and had the ownership thereof transferred
into its
name through a lawful process conducted by the third respondent. The
second respondent clearly has a material interest
in the outcome of
the part B proceedings. As I have explained, the relief sought in
part B is also aimed at setting aside the assignment
or transmission
of the trade marks by the fourth respondent to the second respondent
and deleting the registration of the transfer
or assignment of the
trade marks by the third respondent into the name of the second
respondent, thereafter reinstating the applicant
as the proprietor of
the Pointer trade marks. It is true that some of the relief sought in
part B is directed at the fourth and
the third respondents but it
nevertheless materially impacts upon the rights and interests of the
second respondent. I have difficulty
in understanding how it can be
argued that this court does not have jurisdiction to entertain the
part A relief but does have jurisdiction
to entertain the part B
relief. The affected party remains the second respondent
peregrinus.
.
[31]
In responding, in its replying affidavit, to the argument regarding
jurisdiction offered by the respondents in their opposing
affidavit,
the applicant argues that the matter relates to trade marks which are
registered with the third respondent within the
area of jurisdiction
of this court and any act of transfer of a trade mark, in the
records
of the third respondent, will take place w
ithin
the area of jurisdiction of this court which is the proper court to
deal with the matter so that prior attachment of the trade
marks is
not necessary. It is argued that the part A relief includes an order
for a
caveat in the records of the third
respondent who is within the area of this court's jurisdiction.
Finally, as to the relief sought
in part B, the applicant appears to
agree with the respondents by stating "... the setting aside of
the sale in execution,
is clearly not one in which any possible
attachment to found jurisdiction would be required. The interim
relief is incidental to
the main relief."
For
the reasons already mentioned, I find it difficult to accept these
arguments. In my view, in order to effectively exercise jurisdiction
over a
peregrinus
,
a court should, generally speaking, require attachment of property of
that
peregrinus
in
order to found or confirm jurisdiction.
[32]
The position is explained as follows in Herbstein and Van Winsen
The
Civil Practice of the High Courts of South Africa
5
th
edition vol 1 pi 01:
"Where
the plaintiff is an
incola
of
the republic and the defendant is a
peregrinus
of the republic, the court will exercise
jurisdiction on the following grounds:
(i)
that the cause of action arose within the court's area of
jurisdiction and that property belonging to the defendant has been
attached to confirm the jurisdiction
(ad
confirmandam jurisdictionem);
(ii)
that the plaintiff resides within the court's area of jurisdiction
and property belonging to the defendant has been attached
in order to
found jurisdiction
{adfundandam
jurisdictionem)."
The
authority relied upon by the learned authors in this regard is the
case of
Ewing McDonald & Co Ltd
v
M&M Products Co
1991
1 SA 252
(A) at 258D-G.
It
is clear, from the addresses cited in the founding affidavit,
supra
,
that the applicant is an
incola
of
the republic but does not "reside" within the area of this
court's jurisdiction. It is also clear that the second respondent
is
a
peregrinus
of
the republic. The fact that the second respondent chose an address
for service for the purposes of proceedings relating to any
entry
made in the register of the third respondent, as pointed out, does
not, in my view, alter the status of the second respondent
as a
peregrinus.
No
argument to the contrary was presented to me during the hearing.
[33]
I also consider the provisions of
section 41(2)
of the
Trade Marks
Act to
be of some significance for purposes of deciding this issue
relating to jurisdiction. It reads:
"41(2)
A renistered trade mark mav be attached to found or confirm
jurisdiction for the purposes of any proceedings before
the Transvaal
Provincial Division of the Supreme Court of South Africa or the
magistrates' court for the district of Pretoria and
may be attached
and sold in execution pursuant to an order of any such court."
(Emphasis added.)
Judging
by the wording of this subsection, it seems reasonable to assume that
the legislature intended to decrce, and did so, that
a trade mark may
be attached to found or confirm jurisdiction in an appropriate case.
The
question, in my view, is whether this is an appropriate case to
insist that these Pointer trade marks should have been attached
in
order to found or confirm jurisdiction.
[34]
The learned authors, Herbstein and Van Winsen op cit at pi05-108,
under the heading "In respect of what type of claim
is
attachment necessary?" present a useful discussion on the
subject. They summarise the general rule as follows:
"As
a general rule, attachment is necessary whenever a party seeks to
enforce a claim sounding in money against a person who
is not
resident within the Republic of South Africa, unless that person has
submitted to the jurisdiction of a South African court.
Some claims
relating to property also require attachment or submission.
Attachment to found or confirm jurisdiction has no application
to
matrimonial causes or actions
in
personam
which do not have a monetary or
property component."
The
rules laid down in
Ewing McDonald
at
258D, quoted
supra
,
also have a bearing on claims sounding in money where the learned
Judge of Appeal says, at 258C-D, "... it may be helpful
briefly
to recapitulate the grounds, apart from voluntary submission, on
which a Division of the Supreme Court according to current
law and
practice will assume jurisdiction in respect of claims sounding in
money".
[35]
The first question must then be whether
this is a claim sounding in money. In my view, the answer must be in
the negative. Whilst
the original action instituted by the first
respondent against the applicant for outstanding fees is a claim
sounding in money,
the present application, forming the subject of
the dispute before me, clearly does not involve a claim sounding in
money: it is
an application aimed at obtaining the return of the
Pointer trade marks and the reinstatement of the applicant as the
proprietor.
[36]
The next "type of claim"
considered by the learned authors in respect of which attachment may
be necessary, is described
as "claims relating to immovable
property" - see the discussion at pi06-107. The learned authors
refer to Jackaman v
Arkell 1953
3 SA 31
(T) where it was held that
attachment ad fundandam jurisdictionem of immovable property for the
purpose of institution of an action
to compel transfer of the
property was not necessary because the property was situated within
the court's territory. At 34G the
following is stated by the learned
judge:
"In
my opinion the true position is that when the immovable property is
situated within the Court's territory, the Court has
jurisdiction
wherever the defendant may be (see Poliak.
Jurisdiction
ppl 03
et
scq
) and therefore it is not necessary
to attach the property as well as to obtain leave to sue by edict."
Jackaman
w
as quoted with approval in the more
recent case (also mentioned by the learned authors) of
Manna
v Lotter & Another
2007 4 SA 315
(CPD) at 319F-H. The fact that
the learned judge, in Jackaman, held that an applicant is entitled to
ask for attachment of the
property in order to found jurisdiction
does not mean that the applicant was obliged to do so.
In
Manna,
it
was held that an attachment was not necessary in order to compel a
peregrine
defendant
to transfer immovable property situated within the court's
jurisdiction. The learned judge puts it as follows at 319C-D:
"Generally
speaking, in any claim relating to immovable property - whether
in
rem
or
in
personam -
the court within whose
territorial jurisdiction the property is situated (the
forum
rei sitae
) will
always
have jurisdiction to entertain such
claims. In such cases, it is then irrelevant whether the defendant is
an
incola
or
a
peregrinus
."
I
do not propose repeating references to the relevant authorities to be
found in the footnotes in this judgment at,
inter
alia
, 318, 319 and 320.
[37]
As already pointed out, it was argued,
correctly in my view, on behalf of the respondents, that trade mark
rights are akin to immovables.
I was referred to Oilwell (Pt}>)
Ltd v Protec International Ltd & Others, supra, at 400A where (as
mentioned) the following
is said:
"Reverting
to trade mark rights: like all other intellectual property rights
they are territorial and akin to immovables."
See
also
Gallo Africa Ltd & Others
v
Sting Music (Pty) Ltd & Others
2010
6 SA 329
(SCA) at 334E-G. From this authority it appears that an
intellectual property right is limited to the territory of the state
granting
it.
[38]
On behalf of the applicant, 1 was
referred by Mr Da Silva to Rembrandt Fabrikante & Handelaars
(Edms) Bpk v Gulf Oil Corporation
1963 3 SA 341
(AD). The case
involved an application for rectification of the trade marks
Register. The dispute still had to be adjudicated in
terms of the
provisions of the Designs Act 9 of I960, but, in my view, the
principles laid down in the judgment remain valid. An
argument in
limine claiming lack of jurisdiction over the peregrinus respondent,
was dismissed by this court. The argument was
upheld by. the
Appellate Division. At 348D-E the following is said:
"The
first issue argued on appeal, is that of jurisdiction. The court
below found that it had jurisdiction on more than one
ground, one
being that it is the
forum rei sitae.
It
is not necessary to deal with any other ground."
After
analysing some of the general provisions of Act 9 of 1916, the
learned Chief Justice said the following at 348H:
"It
is apparent from these provisions that, generally speaking, the
existence of an exclusive right to a trade mark flows from
and is
dependent upon registration, and the nature and extent of such a
right is determined by the entries in the register. The
right to a
registered trade mark is effectively assigned, transferred, modified,
partly divested of its exclusiveness, or terminated,
by such entries.
It follows, I think, that it is situated where the register is kept
..."
At
349E-F, the learned Chief Justice comes to the following conclusion:
"In
my opinion the court below correctly found that it had jurisdiction
as the
forum rei sitae."
In
the
Trilingual Legal Dictionary
by
Hiemstra and Gonin, 2'
ul
edition, p200, the
forum rei sitae
is
described as follows:
"Hof
van die plek waar die saak gelee is/forum (court) of the place where
the thing in question is situated."
The
trade marks are still registered in the Register kept by the third
respondent in Pretoria. The fact that they were sold in execution
to
a Swiss
peregrinus
does
not, in my view, alter this state of affairs. It is also useful to
revisit my earlier remark
about
the
domicilium
address
chosen by the second respondent in terms of
section 66
of the
Trade
Marks Act. Section
66(2) reads as follows:
"The
address for service furnished by an applicant in terms of this
section shall be deemed to be the
domicilium
citandi et executandi
of such applicant
for the purposes of proceedings relating to any entry made in the
Register in pursuance of the application."
[39]
From the aforegoing, it seems that it
would be correct to accept that the Pointer trade marks constitute
immovable property situated
in Pretoria, within the area of
jurisdiction of this court.
[40]
Reverting to the discussion, supra, by
the learned authors Herbstein and Van Winsen, relating to what type
of claims require attachment
to found or confirm jurisdiction, the
authors also deal under "other claims" at 107, with
interdicts. The following is
stated by the learned authors:
"Where
an interdict is claimed against a
peregrinus,
the court will have jurisdiction if, in
the case of a mandatory interdict, the act is to be carried out in
its area, or in the case
of a prohibitory interdict, the act against
which the interdict is claimed is about to be done in its area."
And,
"... where a court does have jurisdiction to grant an interdict
against a
peregrine
defendant,
no attachment or submission is necessary".
It
seems to me that the interdictory relief sought by the applicant in
part A of the notice of motion, falls within the ambit of
these
observations. The learned authors rely on the authority of the
judgment in Kibe v Mphoko & Another
1958 1 SA 364
(OFS) at
367A-C. In that case, both the parties were peregrini. It seems,
however, from what is stated in the judgment at 367B-C,
that, where
the respondent is a peregrinus, "... it is however clear that in
the absence of any attachment of respondent's
personal property, no
order for the payment of costs should be made against him".
[41
] Against this background, I have come to the following conclusions:
1.
This application is not a claim sounding
in money. If I understood him correctly, Mr Preis also argued
accordingly.
2.
Where it is an application for the
re-transfer of immovable property situated within the area of
jurisdiction of this court, this
court, as the forum rei sitae, has
jurisdiction to entertain the application, even in the absence of an
application for attachment
to found or confirm jurisdiction.
3.
This court also has jurisdiction to
entertain the part A interdict application. This is subject to a
possible argument as to costs,
as I have pointed out.
4.
Where these proceedings, in a real sense
in my view, have a bearing on "any entry made in the Register
..." as intended
by the provisions of
section 66(2)
, supra, of
the
Trade Marks Act, it
seems that the conclusions I have arrived at
may well be fortified by the fact that the second
respondent
had to choose a
domicilium
address
in Pretoria in terms of the requirements of
section 66.
[42]
In the result, the argument in limine,
regarding jurisdiction, falls to be dismissed, and I rule
accordingly.
[43]
I now revert to the merits of the
rule
6(5)(e)
application.
The
merits of the
rule 6(5)(e)
application
[44]
I have dealt with the reason why the
application was launched, namely to enable the applicant to introduce
a further legal argument
based on the provisions of section 63 of the
Magistrates' Court Act ("the section 63 argument").
[45]
I have dealt with the issues flowing
from this application and the arguments and counter-arguments
advanced by the parties.
[46]
I have quoted the useful summary
provided by the author Harms, supra, with regard to the factors to be
considered when confronted
with an application of this nature.
[47]
On a general reading of the papers I am
satisfied that the deponent on behalf of the applicant only became
aware of the section
63 argument on the morning of the hearing of 7
March 2012, and her attorney only the day before. The section 63
argument
was raised in the heads of argument of the applicant handed to the
respondents on 7 March 2012. Most, if not all of the
evidence
relevant to the section 63 argument (steps taken to bring about
execution) already appears in the founding affidavit in
the main
application. This evidence was obtained from the respondents. The
evidence was peculiarly within the knowledge of the
respondents.
[48]
Revisiting the considerations applicable
when dealing with an application in terms of this sub-rule, I see no
indication of mala
jides on the part of the applicant.
I
also am not persuaded that the respondents will in any way be
prejudiced if the application were to be granted. Only a legal point
is being taken. It is not a question of a whole new case having to be
met, as suggested by the deponent on behalf of the respondents.
The
facts underpinning the legal point were already amply set out in the
founding papers. The legal point itself, as I have indicated,
was
mentioned in the heads of argument delivered on 7 March 2012 and the
supplementary affidavit, proposed to be filed in terms
of the
sub-rule, has been in possession of the respondents since 29 March
2012.
Moreover,
in my view, it is arguable that the legal point can in any event be
advanced even without a supplementary affidavit.
[49]
When they received advance notice and a
copy of the proposed supplementary affidavit, the respondents
objected thereto without furnishing
a reason for the
objection.
Indeed, in their opposing affidavit, they did not deal fully or
satisfactorily with the steps that may have been taken
to bring about
execution. In heads of argument on behalf of the respondents it is
submitted that they have not yet dealt with the
issue of
superannuation and will only be required to do so should the
application be granted. In my view, this could have been
done already
in the opposing affidavit to this application. Nevertheless, when
granting the application, as I propose doing, I
will afford the
respondents an opportunity to supplement their papers by dealing with
the question of execution steps and superannuation.
[50]
I see no reason why the application should not be granted. I am alive
to the remarks of
Harms, supra
,
that courts are inclined towards the view that the parties should be
permitted to have the case adjudicated on the full facts.
Obviously,
I express no view on the merits of the section 63 argument, or any of
the other arguments advanced on behalf of the
parties.
The
costs
[51
] Given the background of the case, including the apparently
undisputed debt owing to the first respondent for many years, and
the
relevant complexity of the case, with particular reference to the
jurisdiction issue, I am not prepared to grant costs at this
stage
against the unsuccessful respondents in this rule 6(5)(e)
application. It seems to me that the costs should be reserved to
be
determined by the court adjudicating part B of the application, as
was done in terms of the 7 March 2012
order.
The
order
[52]
I make the following order:
1.
Leave is granted to the applicant to
forthwith file the supplementary affidavit which is annexed to the
notice of motion as annexure
"A" and the aforesaid
affidavit is to be received as evidence in the main application.
2.
Leave is
granted to the respondents, if so advised, to file a further
affidavit dealing with the issue of superannuation, execution
steps
taken at the relevant time and related matters within fourteen days
after filing of the supplementary affidavit.
3.
Leave is
granted to the applicant to reply to such further affidavit, if any,
within ten days after the filing thereof.
4.
The costs of this application are
reserved for determination by the court adjudicating part B of the
main application.
W
RC PRINSLOO
JUDGE
OF THE NORTH GAUTENG HIGH COURT
HEARD
ON: 5 DECEMBER 2012
FOR
THE APPLICANT: C A DE SILVA SC AND D W GESS
INSTRUCTED
BY: SPRINGER NEL ATTORNEYS
FOR
THE 1
st
AND 2
nd
RESPONDENTS: D A PREIS SC AND Ms L G
KILMARTIN
INSTRUCTED
BY: ADAMS & ADAMS