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[2013] ZAGPPHC 558
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Dayani v Talium Investments (Pty) Ltd and Others (9148/2012) [2013] ZAGPPHC 558 (26 February 2013)
IN
THE HIGH COURT OF SOUTH AFRICA
(NORTH
GAUTENG HIGH COURT. PRETORIA)
CASE
NO
: 9148/2012
DATE
:
2012-11-02
26/2/2013
Reportable:
No
Of
interest to other judges: No
Revised.
In
the matter between
DAY
NI (ODED
DAYANI)
Applicant
and
TALIUM
INVESTMENTS (PTY) LTD & 4
OTHERS
Respondent
JUDGMENT
DE
KLERK A
J: As I have indicated, I have made notes as I went
through the papers, so this is the judgment in the matter of Day NI
(Oded Dayani)
versus Talium Investments (Ply) Limited and 4 others.
1.
This is a review application arising from a dispute submitted for
adjudication in accordance with the .ZA Domain name, alternate
dispute resolution regulations (the regulations) promulgated in terms
of the Electronic Communications and Transactions Act (ECT
Act}, Act
25 of 2002 under Government Gazette Number 29405.
The
dispute complied in all material ways with the provisions of the
regulations read together with the South African Institute
of
Intellectual Property Laws supplementary procedure, when submitted
for its Resolution.
2.
The subject matter of the dispute was the disputed domain names,
kingo.co.za and kingnumbers.co.za.
3.
Having satisfied itself that all formal requirements had been met, an
adjudicating panel consisting of the 2
nd
, 3
rd
,
and 4
th
respondents requested the 5
th
respondent to suspend the domain name and on 15 November 2011, the
5
th
respondent acceded to this request and suspended the
domain, pending the adjudication of the said dispute.
4.
Initially the adjudicating panel had to decide whether to submit to
the 1st respondent's request, not to submit its full reply
to their
Registrant's answering affidavit to the Registrant. It will be noted
that to avoid confusion, I have used the terms "answering
affidavit" for the Registrant's "response" and "reply"
for the complainant's "response" to the
Registrant's
response. The decision was that "unless there was a truly
compelling reason not to do so, the complainant's full
case must be
made available to the Registrant to allow for proper response ·
thereto." - The complainant being the
1st respondent in today's
proceedings and the Registrant being the applicant in the present
proceedings.
5.
In compliance with the regulations the following material was placed
before the adjudicators.
5.1. The dispute (complaint) -
Regulation 16(1).
5.2. The Registrant's response -
Regulation 18.
5.3. The reply to the Registrant's
response - Regulation 19(1).
It
is to be noted that the adjudicator has a discretion to request
further statements relevant to the matters mentioned in the previous
sub-paragraphs in terms of Rule Regulation 26, whilst the Regulation
29(1) obliges the adjudicators to decide the dispute in accordance
with the principles of law on the basis of the dispute, response and
reply, if any, and further statements or documents submitted
in terms
of the Regulations.
6.
It is clear from the adjudicator's decision that the documents
referred to in paragraph 5 above, was properly considered (and
summarized) by the 2°d, 3rd and 4th respondents. In the first
paragraph, under the heading "4") "Discussion
and
Findings" the following is stated: (I refer to page 88 of the
papers)
"The crux of this decision is who
owns 'kingo'? It is settled law that the person who has appropriated
a mark for use in respect
of goods or services as a trade mark, may
claim to be the proprietor. Legal precedent defines "appropriation
as the origination,
adoption or acquisition of a mark
(Victoria's
Secret Incorporated v Edgars Stores
Limited
[1994] ZASCA 43
;
1994 (3) SALR
739
(A).)"
One
could- have particular regard to the passage appearing at page 752 (D
- F) of the Edgar-decision:
"Application of the Law to the
facts.
In determining which of competing
claimants should prevail, the guiding principle is encapsulated in
the maxim
qui prior est tempore potior est jure:
'He has the
better title who is first in point of time.' In the Moorgate judgment
MR TROLLIP said: 'In a situation in which competing
applications for
the registration of the same or similar marks are filed in the RSA,
the general Rule is that all else being equal,
the application prior
in point of time of filing, should prevail and be entitled to proceed
to registration. In a 'quarrel' of
that kind, 'blessed is he who gets
his blow in first.""
Later
on and with reference to previous decisions the 2
nd
, 3
rd
and 4
th
respondents supply their reasons for their
findings (at pages 88-91 of the papers) before arriving at their
decision, which appears
at page 91 of the papers.
"5) Decision.
(a) For all the foregoing
reasons in accordance with Regulation 9, the panel orders that the
domain names kingo.co.za and
kingonumbers.co. za be transferred to
the complainant."
The
adjudicators also formally informed the applicant, 1
st
and
5
th
respondents in today's application of their decision
in the decision notification, appearing at page 92 of the papers,
together
with a transcript of Regulation 30 (communication of
decision to parties) and 32 (appeals). The present decision is not
subject
to an appeal as only the decision of a single adjudicator is
subject to an 'internal' appeal.
7.
In paragraph 6 of the founding affidavit, in this review application,
the following is stated:.
"The 1
st
respondent
(complainant) submitted its response as evidence by Annexure C
hereto, but simultaneously requested that such response
was very
confidential and requested that the applicant does not view same
under any circumstances, alleging it would jeopardise
the 1st
respondent's (complainant's) rights. This request for confidentiality
was not entertained by the 2nd, 3rd and 4th respondents
who made the
response from the 1st respondent (complainant) available to the
applicant."
The
grounds of review is set out in paragraph 9 of the founding
affidavit:
"9. The applicant relies upon the
following grounds for this review:
9.1 It is submitted that the
adjudicators, being the 2nd, 3rd and 4th respondents, erred in law
and in consequence committed an
irregularity having regard to the
facts before them at the time of such application."
It
is significant that no reasoning accompanies this paragraph.
8.
Paragraph 10 to 12 of the founding affidavit purports to fortify or
further the grounds of the review in that it is alleged:
8.1. That new facts were introduced in
the 1
st
respondent's reply (without supplying any
particularity thereof);
8.2. The adjudicators relied on such
new facts without affording the applicant the opportunity to deal
with it; (this is in stark
contrast to what was said in paragraph 6,
which was quoted earlier on.)
8.3. The adjudicators found that the
applicant had not substantiated its allegation that the trade mark
"kingo" was the
concept of its employee.
8.4. That the 2
nd
, 3
rd
and 4
th
respondents erred in law and on the facts in
finding that the 1st respondent is the proprietor of the name of
Trade Mark "kingo"
and was the proprietor, both before and
as at the date of registration of the disputed domain names being 29
November 2010.
8.5. That the finding that the same
(that is now referring to the content of paragraph 8.4 immediately
above) merely adds the descriptive/generic
word "numbers"
to the distinctive word "kingo" is bad in law and on the
facts.
9.
The 1
st
respondent delivered a lengthy 'answer' to
paragraph 6 of the founding affidavit to which there was no reply by
the applicant.
Paragraphs 18.4 and 18.8 of the answering affidavit is
of particular significance:
"18.4 Once appointed the
adjudicators, (the 2
nd
, 3
rd
and 4
th
respondents) considered the request and confirmed that in light of
the fact that the Registrant had requested a copy of the reply,
the
adjudicators· could not agree to the complainant's request
that the document not be disclosed to the Registrant.
18.8 In addition, the 1
st
respondent (sic! applicant) did not seek leave from the adjudicators
to contradict, or otherwise dispute what was stated in the
reply. I
respectfully aver that the adjudicators acted quite properly in
considering the reply, which is in essence a rebuttal
of the
applicant's case, (supported by documents) that it is the proprietor
of the trade mark "kingo" entitling it to
have registered
the domain name "kingo.co.za."
10.
Only in the reply the applicant supplies particularity as to its
grounds of review when it states in paragraph 3 at page 114
to the
extent that PAJA might apply to these proceedings, the application is
brought in terms of sub-section 6(2)(b), 6(2)(c),
6(2)(d) and
6(2)(e)(iii) and (vi)."
11.
An important point is made by the 1st respondent in paragraph 23.9 at
page 105 of the answering affidavit:
"I also draw this Court's
attention to the fact that the applicant was represented by an
attorney in the domain name dispute
which attorney is also the
deponent to the applicant's founding affidavit. The attorney was
provided with a copy of the reply filed
by the 1st respondent
(complainant's) and could have, on behalf of the applicant, raised an
objection to any new evidence submitted
by the 1st respondent at that
point in time. Alternatively have requested that the applicant be
afforded an opportunity to respond
to the 1st respondent's
(complainant's) reply. The applicants, for reasons that are
unexplained, did not do so."
Again
there is no reply by the applicant to this statement of the 1st
respondent. All that appears in the replying affidavit, is
a denial
of allegations which are not specifically dealt with and it is
inconceivable in view of paragraph 1 of the founding affidavit,
where
the deponent qualifies himself or describes himself as an attorney,
that such a statement, as in paragraph 23.9 is just generally
denied.
12.
The applicant's deponent to both the founding affidavit and the
replying affidavit has referred to Regulation 29(1), as was
done in
paragraph 5 of this judgment. One of the trite principles of law is
that a respondent can apply to Court to be allowed
to duplicate
(respond) to an applicant's replying affidavit especially where it is
alleged that it includes clearly indicated new
material. There is no
obligation on a Court or the adjudicators to request a litigant to
duplicate. Regulation 26 confers a discretion
on an adjudicator to
request further statements.
13.
It is trite law that an applicant bears an onus to prove his cause of
action and that it is for a respondent to rebut that.
The fact that
.no statement was requested by the adjudicators, does not amount to
·an improper exercise of discretion. The
adjudicators were
aware that the applicant
in casu
was legally represented and
that the legal representative, would advise his client, both in terms
of the regulations and the general
principles of law. If not, then
the remarks by STEYN CJ, in Saloojee vs The Minister of Community
Development
1965 (2) SA 135
(AD) at page 141 may become relevant
where it was stated;
"There is a limit beyond which a
litigant cannot escape the results of his attorney's lack of
diligence or the insufficiency
of any explanation tendered ... The
attorney, after all, is the representative whom the litigant has
chosen for himself and there
is little reason why, in regard to
condonation, for example, of a failure to comply with a rule of
Court, the litigant should be
absolved from the normal consequences
of such a relationship, no matter what the consequences of the
failure are. And lastly...
if he relies upon the ineptitude or
remissness of his own attorney, he should at least explain that none
of it is to be imputed
to himself."
14.
As far as paragraph 8.1 above (dealing with the alleged introduction
of new evidence by the 1
st
respondent, in its reply before
the adjudicators) is concerned, it is apposite to have regard to the
applicant's answer before
the adjudicators, especially paragraph
8.1.2.1, 8.1.2.2 and 8.1.2.4 thereof. I am not going to quote them,
simply to mention that
it smacks of a lack of detail. It is for
example never mentioned at what time the content of these paragraphs
occurred. As can
be seen the content of these paragraphs are vague as
regards time and should have been specific, especially in view of the
maxim
prior est tempore potior est jure.
The
1
st
respondent supplied its "commit" to indicate
that its right to the trademark "kingo" antedates the
applicant's
right. It was not for the adjudicators to advise the
applicant to respond to this, but for the attorney who was supposed
to be
au fait
with both the regulations and ordinary motion
court practice and procedure. As unspecific and vague is paragraph 5
of the replying
affidavit in the instant application. I refer to page
115 of the papers.
"In accordance with these
regulations, and in accordance with the Rules of procedure as
developed in our courts, they ought
either to have disregarded the
new facts, and allegations set out in the 1st respondent's response,
or at the very least to have
afforded the applicant an opportunity of
responding thereto before making their decision, but failed to do
so."
It
must be remembered what has been said in this judgment already about
requesting the 1
st
respondent's reply in the complaint
proceedings in the founding affidavit, for example, itself.
The
new facts in the quote which I have just quoted are not in any
particularity. It cannot come as a surprise that the adjudicators
eventually found that the applicant did not substantiate its
allegations (as referred to in paragraph 8.4 of this judgment). The
adjudicators had regard to the applicable legal principles by
referring to previous decided case law as well as previous decided
complaints. The applicant advanced no reasons in its founding
affidavit why the finding (the 2
nd
sentence of paragraph
12 at page 6 of the papers) is bad in law and on the facts. On the
facts of this case, the reasonable man
would immediately associate
"kingonumbers" ·with "kingo". The last
sentence of paragraph 12 of the founding
affidavit applies equally to
the present applicant and its deponent actually knows that. The last
sentence reads as follows:
"It is trite law, with respect,
that an application stands or falls on the case made out in the
founding affidavit."
15.
Can it be found of the adjudicators that:
15.1. They did not comply with a
mandatory and material procedure or condition prescribed by their
regulations? Or
15.2. Their handling of the dispute
was procedurally unfair? Or
15.3. Their decision was materially
influenced by an error of law? Or
15.4. They took irrelevant
considerations into account and did not consider relevant
considerations? Or lastly
15.5. They acted arbitrarily or
capriciously?
In
my view the answer to all five the above questions must be in the
negative, having regard to the following:
(a) The applicable regulations;
(b) The adjudicators'
consideration of the evidence before them, keeping in mind that the
present applicant was legally represented;
(c) The applicable legal
principles;
(d) The adjudicators' reasons
for their decision;
(e) The case made out in the
founding affidavit as well as the answer and reply thereto.
16.
The relief claimed in the notice of motion is as follows:
"16.1 Reviewing, correcting and
setting aside the decision of the 2
nd
, 3
rd
and
4th respondents as reflected in a document styled Adjudicator
Decision delivered on 3 February 2012;
16.2 Declaring that the Decision of
the 2
nd
, 3
rd
and 4
th
respondents
referred to in paragraph 1 above to be inconsistent and invalid."
Coupled
with this relief the following order as to costs is prayed for:
"4. That the costs are to be paid
by the 1
st
, 2
nd
, 3
rd
and/or 4
th
respondents to the extent that any of the said respondents oppose
this application."
It
needs to be mentioned at this stage that not one of the other
respondents, apart from the 1st respondent did oppose the
application."
17.
In my view no case is made out on the papers to justify granting of
the order prayed for by the applicant. The argument presented
today
on behalf of the applicant was termed by Mr Morley as
trial-by-ambush. The reason being that the fact that the present
applicant
did not have the opportunity to reply to the present 1st
respondent's reply in the complaint, is inexcusable. I have alerted
to
the founding affidavit and I have been referred to e-mails, but
nothing is said about the fact in either the founding affidavit
or in
the heads of argument on behalf of the applicant, which I must say
was filed by different Counsel from the Counsel appearing
in today's
application.
The
point raised by Mr Roux today, appears nowhere in the papers and
therefore cannot be entertained.
18.
The matter is of considerable importance not only to the applicant
but also to the 1
st
respondent. In my view, employment of
Senior Counsel by the 1
st
respondent was a well considered
and wise decision and the Court is indebted to Mr Morley for his
comprehensive heads of argument.
19.
The order I make is the following:
ORDER
The
application is dismissed with costs, such costs to include the costs
of the employment of Senior Counsel.
MR
ROUX
: As Your Lordship pleases.
MR
MORLEY
: As your Lordship pleases.
COURT
ADJOURNS
.