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[2013] ZAGPPHC 101
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Jump Sport CC t/a World of Sport and Entertainment and Another v Blue Bulls Company (Pty) Ltd (12960/2010) [2013] ZAGPPHC 101; 2013 BIP 251 (GNP) (15 April 2013)
NOT
REPORTABLE
IN
THE HIGH COURT OF SOUTH AFRICA
(NORTH
GAUTENG, PRETORIA)
CASE NO: 12960/2010
DATE:15/04/2013
In
the matter between:
JUMP SPORT CC t/a WORLD OF SPORT
AND
ENTERTAINMENT
......................................................
First
Defendant/First Applicant
DANIE
HAASBROEK
.........................................................
Second
Defendant/Second Applicant
and
BLUE
BULLS COMPANY (PTY)
LTD
................................
Plaintiff/Respondent
JUDGMENT
MAKGOKA.
J:
[1]
This judgment concerns three interlocutory applications. On the one
hand, the defendants (as the applicants) seek firstly, leave
to amend
their plea and counterclaim in terms of rule 28 of the uniform rules
of court. Secondly, the defendants seek an order
compelling the
plaintiff to comply with its notice in terms of rule 35(3) regarding
certain documentation. Both these applications
are opposed by the
plaintiff. The plaintiff, on the other hand, seeks an order that the
defendants furnish security for costs in
terms of rule 47(1). The
application is opposed by the defendants. As would appear more
clearly later, the plaintiff’s demand
for security for costs is
intrinsically linked to the defendants’ application to amend.
For the sake of convenience, I shall
retain the parties’
designations as in the main action.
[2]
The plaintiff is the proprietor of the well-known Bulls and Blue
Bulls rugby teams. The Bulls rugby team plays professionally,
and
participates in international competitions, where it has achieved
notable success. The Blue Bulls team, on the other hand,
play amateur
rugby, and is arguably, the most successful provincial team in the
history of South African rugby. It is common cause
that the plaintiff
is registered as the proprietor of the Bulls logo trade mark
registered in classes 16,18, 21, 25, 28 and 41
of the Trademarks Act,
194 of 1993 (the Act).
[3]
The crux of the dispute between the parties relates to the
proprietorship of the trade marks Bulls Babes and Bulls Babes logo
(the trade marks). The plaintiff claims that it is the proprietor of
the trade marks and that the first defendant was licensed
to use the
trade marks. The defendants, on the other hand, contend that the
first defendant is the proprietor of the trade marks.
[4]
The facts are these. During 2003 the plaintiff and the first
defendant entered into an arrangement (the nature of which is in
dispute) in terms of which the first defendant, for an agreed
remuneration, provided professional dancers to perform as
cheerleaders
at the Bulls’ home matches, played at Loftus
Versveld stadium. The cheerleaders became popularly known as the
‘Bulls
Babes’, and wore apparel paid for by the
plaintiff, sporting a Bulls Babes logo, which was based on, and
deliberately similar
to the plaintiffs well-known Bulls logo. The
second defendant alleges that it was he who proposed the name ‘Bulls
Babes’
for the cheerleaders and that, during April 2006, he,
together with the plaintiffs then chief executive officer, designed
the logo.
This is denied by the plaintiff.
[5]
It appears that the popularity of the Bulls Babes extended beyond
rugby, as often Vodacom sought their appearance at social
functions,
other than rugby. Various attempts to formalise the agreement were
unsuccessful. In February 2010, for the first time,
the second
defendant hinted that the first defendant laid claim to the
proprietorship of the Bulls Babes trademark. Prior to that
date, both
respondents had acknowledged the applicant’s proprietorship of
the trademark. The applicant viewed the respondents’
claim as a
repudiation of the agreement and cancelled the agreement on 15
February 2012. The dispute resulted in the Bulls Babes
no longer
performing at rugby matches, much to the chagrin and dismay of the
supporters of the game.
[6]
On 1 March 2010 the plaintiff lodged an urgent application against
the defendants for interdictory relief based on trade mark
infringement and passing off. The defendants opposed the application
and lodged a counter-application for an order that the first
defendant was the proprietor of the Bulls Babes trade mark,
alternatively that the plaintiff and the first defendant were
co-proprietors
of the trade mark. On 12 March 2010 the application
was eventually struck off the roll for lack of urgency.
[7]
When the matter was heard as a special motion, the court ordered that
because of factual disputes, the application should stand
as a
summons, and that the plaintiff should file a declaration. The
declaration was filed, and later amended, after the defendants
had
successfully excepted to it on the basis that it was vague and
embarrassing. The defendants thereafter filed their plea and
counterclaim on 5 September 2012.
[8]
In their counterclaim, the defendants plead that the plaintiff’s
trade marks are invalid and fall to be expunged (on grounds
other
that non-use), on the basis that the first defendant had adopted and
made use of those trade marks prior to the plaintiff
registering them
in its name. In this regard, the defendants allege that the parties’
agreement entailed a joint-venture
agreement - the plaintiff being
the repository of all the trade marks and the defendants retaining
their statutory and common law
rights to utilise the trade marks ad
infinitum, in terms of section 36 of the Act,
1
and the common law.
[9]
The defendants contend that it was a condition of the plaintiff’s
registration of the trade marks in its name that the
defendants would
be entitled to continue using the trade marks. The defendants further
contend that their, and Vodacom’s,
use of the trade marks was
unfettered, and wholly within their discretion, save for pre-booked
appearances at rugby stadiums. Vodacom,
for example, used the Bulls
Babes for
appearances
at other social functions totally unrelated to the plaintiff and
rugby. With this factual background, I consider the
interlocutory
applications.
Application
to ‘compel compliance with the defendants’ notice in
terms of s 35(3)’.
[10]
The plaintiff first filed its discovery affidavit on 27 March 2012.
On 20 August 2012 the defendants delivered a notice in
terms of rule
35(3) of the Uniform Rules of Court, in which the defendants called
for production of further documents which, in
their opinion, the
plaintiffs had in its possession, but not discovered. On 5 September
2012, the plaintiffs served a response
to the defendants’ rule
35(3) notice, in the form of an affidavit by Mr. Noeth. On 18
September 2012, the defendants lodged
the present application,
seeking to ‘compel’ the plaintiff to comply with their
rule 35(3) notice.
[11]
The application is opposed by the plaintiff on three bases. First,
that it has, in its discovery affidavit, already made discovery
of
various documents falling within the description of the documents set
out in the defendants’ rule 35(3) notice, and has
in fact,
responded that notice. Second, that in some instances, the defendants
do not identify ‘specific documents’
that the plaintiff
allegedly omitted to discover, but that their request relate to ‘a
vague and general description of documents’.
Third, that in any
event, the documents and correspondence to which Vodacom is a party,
are irrelevant to any matter in dispute,
and need not be discovered.
Before I consider these contentions, it is helpful to set out the
relevant sub-rules, 35(3) and 35(7).
[12]
Rule 35(3) provides:
'If
any party believes that there are, in addition to documents or tape
recordings disclosed as aforesaid, other documents (including
copies
thereof) or tape recordings which may be relevant to any matter in
question in the possession of any party thereto, the
former may give
notice to the latter requiring him to make the same available for
inspection in accordance with subrule (6), or
to state on oath within
ten days that such documents are not in his possession, in which
event he shall state their whereabouts,
if known to him’.
[13]
Rule 35(7) on the other hand, provides:
If
any party fails to give discovery as aforesaid ... the party desiring
discovery ... may apply to court, which may order compliance
with
this rule and, failing such compliance, may dismiss the claim or
strike out the defence’.
(my
emphasis)
[14]
I now consider the plaintiff’s contentions, in turn. The rule
35(3) notice has been complied with.
[15]
I have mentioned in para 10 that the plaintiff served a response to
the defendants’ rule 35(3) on 5 September 2012. After
the
delivery of the plaintiff’s response, there was communication
between the parties. On 5 September 2012 the plaintiff’s
attorneys addressed a letter to the defendants’ attorneys, in
which, among others, the Vodacom agreement
2
was referred to in relation to the defendants’ request for a
copy of the agreement.
[16]
On 21 September 2012 the plaintiff’s attorneys wrote to the
defendants’ attorneys, and joined issue with the defendants’
statement that none of the documents listed in their rule 35(3)
notice had been disclosed, and asserting that the only outstanding
issue was their request for a copy of the Vodacom agreement. In that
letter, it was further conveyed to the defendants’ attorneys
that Vodacom had agreed that a copy of the agreement could be made
available on a proposed strict confidentially basis. On an occasion
thereafter, the defendants’ legal representatives inspected the
redacted copy of the agreement at the offices of the plaintiff’s
attorneys, but were not allowed to make copies of the agreement.
[17]
The information referred to above, was not disclosed by the defendant
in its present application to ‘compel’. In
fact, in their
replying affidavit, it is stated that the omission to deal with
Noeth’s affidavit was ‘intentional’.
The plaintiff
sought the dismissal of the application on the grounds that it had
complied with the defendants’ request; and
that the defendants
had failed to disclose this fact, and other facts discussed above.
[18]
The plaintiff is correct in its assertion that it has responded to
the defendants’ rule 35(3). Rule 35(3) provides for
procedure
for a party dissatisfied with the discovery of another party. It
provides for a procedure to supplement discovery which
has already
taken place but which is alleged to be inadequate. Technically,
therefore, the defendants cannot seek to ‘compel’
what
has already been done. They may not like the plaintiff’s
response. I have had careful regard to the plaintiff’s
discovery affidavit, as well as its response to the defendants’
rule 35(3). I agree with the plaintiff it has made discovery
of
various documents failing within the description of the documents set
out in the defendants’ rule 35(3) notice. The remaining
issue
appears to be the defendants’ request for a copy of the
sponsorship agreement between the plaintiff and Vodacom.
[19]
Should I dismiss the application on the technical basis that the
defendants have used a wrong procedure in seeking that agreement,
the
defendants are most likely to bring an application, on the same
facts, for them to be furnished with a copy of the Vodacom
agreement.
That application would certainly be opposed on the same basis as now
(that it is irrelevant). That would be a piece-meal
adjudication of
the matter, which is not in the interests of the parties or the
administration of justice, and would be a waste
of resources. I
propose then to deal with the defendants’ application as one
for ‘further and better particulars’.
I have all the
pertinent facts before me to determine whether the Vodacom agreement
could bear any relevance to the issues in dispute
between the parties
in the main trial.
Relevance
of the Vodacom agreement
[20]
The plaintiff contends that the Vodacom agreement is of no relevance
to any matter in dispute in these proceedings. In any
event, argues
the plaintiff, the contents of the agreement are privileged and
confidential and that the defendants are not entitled
to inspect a
copy of the agreement Although the plaintiff would have been inclined
to produce a redacted version of the agreement
for inspection by the
defendants, Vodacom was not prepared to agree to the production of
the agreement. The plaintiff is contractually
bound to Vodacom not to
disclose the contents of the agreement without Vodacom’s
consent.
[21]
On the other hand, the defendants contend that the agreement is
relevant, given that Vodacom was allegedly entrusted with full
control over the use made of the Bulls Babes trade mark, which
control it alleges, was left completely in the defendants’
hands. The defendants further contend that the Vodacom agreement
deals with the very terms regulating the use of the plaintiff’s
trade marks and most importantly, allow Vodacom a very wide
discretion as to how to use them.
[22]
The courts are reluctant to go behind a discovery affidavit which is
regarded as conclusive, save where it can be shown either
(i) from
the discovery affidavit itself,
(ii)
from the documents referred to in the discovery affidavit, (iii) from
the pleadings in the action, or (iv) from any admission
made by the
party making the discovery affidavit, or (v) the nature of the case
or the documents in issue, that there are reasonable
grounds for
supposing that the party has or has had other relevant documents in
their possession, or has misconceived the principles
upon which the
affidavit should be made.
[23]
In Swissborough Diamond Mines v Government of the RSA
1999 (2) SA 279
(T) this court reviewed the authorities relating to relevance in the
context of rule
35(1),
(2), and (3), and cited with approval the principle laid down in
Compagnie Financiere et Commercial du Pacifique v Peruvian
Guano Co
(1982) 11 QBD 55:
‘
It
seems to me that every document relates to the matter in question in
the action which, it is reasonable to suppose, contains
information
which may - not which must - either directly or indirectly enable the
party requiring the affidavit either to advance
his own case or to
damage the case of his adversary. I have put in the words ‘either
directly or indirectly’ because,
it seems to me, a document can
properly be said to contain information which may enable the party
requiring the affidavit either
to advance his own case or to damage
the case of his adversary, if it is a document which may fairly lead
him to a train of enquiry
which may have either of these two
consequences’
[24]
The court (in Swissborough Diamond Mines) also pointed confirmed that
the onus of establishing that there are other documents
relevant ‘to
any matter in question’ which have not been discovered by the
other party is on the party making that
assertion. Furthermore, that
the broad meaning ascribed to relevance is determined from the
pleadings, and a party may only obtain
inspection of documents
relevant to the issues on the pleadings. See also Continental Ore
Construction v Highveld Steel & Vanadian
Corporation Ltd
1971 (4)
SA 589
(W) at 596H and Carpede v Choene
1986 (3) SA 445
(O) at
452C-J.
[25]
The courts are reluctant to go behind a discovery affidavit which is
regarded as conclusive, save where it can be shown that
there are
reasonable grounds for supposing that the party has or has had other
relevant documents in their possession, or has misconceived
the
principles upon which the affidavit should be made. This deduction
can be made either (i) from the discovery affidavit itself,
(ii) from
the documents referred to in the discovery affidavit, (iii) from the
pleadings in the action, or (iv) from any admission
made by the party
making the discovery affidavit, or (v) the nature of the case or the
documents in issue (Richardson’s Wool
Washeries Ltd \/ Minister
of Agriculture 1971(4) SA 62 (E) AT 67C-F; Continental Ore
Construction i/ Highveld Steel & Venadium
Corporation Ltd
1971 SA
589
(W) at 597E-H; Swissborough Diamond Mines (supra) at 317E-I).
[26]
In determining whether to go behind the discovery affidavit (save
where mala fides is alleged) the court will only have regard
to the
following: the discovery affidavit itself; or the documents referred
to in the discovery affidavit; or the pleadings in
the action; or any
admissions made by the party making the discovery affidavit the
nature of the case or the documents in issue
(Swissborough Diamond
Mines (supra) at 320F-H; and Federal Wine & Brandy Co Ltd v
Cantor
1958 (4) SA 735
(E) at 749G-H and 753D-G.
[27]
In the present case, it is clear from the pleadings that the issue of
the use of the plaintiffs trade marks - by whom and on
what
conditions - would feature prominently during the trial. It is also
not without significant that the Vodacom agreement was
introduced
into the fray by the plaintiff, who made extensive reference to it
with relation to the use of its trade marks. It is
therefore
difficult to see how the plaintiff can aver that the agreement is not
relevant. It is clear that the use of the plaintiff’s
trade
marks is dispositive of both the main action and the counterclaim. To
that extent I conclude that the Vodacom agreement is
relevant and
should be discovered. Having had sight of the agreement, I agree that
some of its provisions are of a confidential
nature. Only a redacted
copy of the agreement should be made available to the defendants.
The
defendants’ application to amend and the plaintiff’s
demand for security.
[28]
On 20 September 2012 the defendants gave notice of their intention to
amend their counterclaim, wherein they seek to expunge
the
plaintiff’s registered Bulls logo trade mark in certain
classes, which registrations cover a wide variety of goods and
services. On 5 October 2012, the plaintiff delivered a ‘conditional’
objection to the intended amendment. The condition
is that the
plaintiff requires of the defendants to furnish security for the
plaintiff’s costs in respect of the counterclaim,
in which
event the plaintiff would withdraw its opposition to the proposed
amendment.
[29]
On 19 October 2012 the defendants lodged an application for leave to
amend their counterclaim in accordance with their notice
dated 5
September 2012, and for the setting aside of the plaintiff’s
‘conditional’ notice of opposition. In response,
the
plaintiff filed an affidavit in support of its conditional opposition
to the defendants’ intended amendment, as well
as its
counter-application for security for costs in terms of rule 47(3), in
the amount of R500 000, alternatively as determined
by the taxing
master. The plaintiff seek that the defendants’ intended
amendment only be effected once the defendants have
put up
appropriate security, failing which their intended amendment be
refused.
[30]
Amendments are governed by rule 28. In terms of rule 28(4) an
objection to a proposed amendment shall clearly and concisely
state
the grounds upon which the objection is founded. The court exercises
a discretion in granting in considering an application
for amendment
(Krische v Road Accident Fund
2004 (4) SA 358
(W) at 363). From an
overview of the authorities, two distinct considerations can be
distilled for the exercise of that discretion.
First, that the party
seeking an amendment bears the onus of showing that it is made bona
fide. Second, that there is no prejudice
to the other party. See
generally, Trans-Drakensberg Bank Ltd v Combined Engineering (Pty)
Ltd
1967 (3) SA 632
(D), where the court made a useful overview of
cases on the subject, and concluded that the primary object of
allowing an amendment
was to obtain a proper ventilation of the
dispute between the parties.
[31]
In the present matter, the plaintiff’s only basis for opposing
the proposed amendment is the defendants’ refusal
to provide
security for the plaintiff’s costs to be incurred in defending
the proposed counterclaim. The plaintiff relies
on s 8 of the Close
Corporation Act 69 of 1984 to demand security from the first
defendant, which provides:
‘
When
a corporation in any legal proceedings is a plaintiff or applicant or
brings a counterclaim or counter-application, the court
concerned may
at any time during the proceedings if it appears that there is reason
to believe that the corporation or, if is being
wound up, the
liquidator thereof, will be unable to pay the costs of the defendant
or respondent, or the defendant or respondent
in reconvention, if he
successful in his defence, require security to be given for those
costs, and may stay all proceedings till
the security is given’.
[32]
On behalf of the plaintiff, it is stated that the first defendant (a
close corporation) is not in a financial position to pay
the
plaintiff’s costs likely to arise in defending the proposed
counterclaim on the ground that the first defendant has no
assets and
does not own any immovable property in South Africa. Against the
second defendant, the contention is that he only owns
a single
property which is bonded in the amount of R1 million. Furthermore, it
is argued that the second defendant’s sole
source of income is
the first defendant, which is said to be an empty shell.
[33]
In the main action, the trial court will have to answer the crisp
question as to where, between the plaintiff and the first
defendant,
does the goodwill of the trade marks reside. When one has regard to
the defendants’ counterclaim, it relates largely
to the same
issue raised by the plaintiff in the main claim. In the
circumstances, I take a view that it would be inappropriate,
in
principle, to order the defendants to furnish security for the
plaintiff’s defence of the counterclaim. I did not understand
the plaintiffs counsel to join issue with this principle. What the
plaintiff is concerned about is the potential of an escalation
of
costs as a result of the counterclaim.
[34]
In the main action, the plaintiff relies on the use of the Bulls
trade marks for purposes of trade mark infringement. (The
Bulls Babes
logo trade mark is said to have been used by the plaintiff mainly
through its relationship with the defendants). Accordingly,
it has to
prove such use by it or its licensees in order to successfully stave
off an application for expungement of its trade
marks. Put
differently, the plaintiff will need to produce evidence that
(whether by itself or through another party using the
plaintiff’s
trade mark with its permission), it has made of use of the Bulls logo
trade mark in relation to each and every
good and services covered by
the trade mark registrations in question, that such use had occurred
during the 5 year period as contemplated
by 27(1 )(b) of the
Trade
Marks Act, 194 of 1993
.
[35]
In this, lies the gravamen of the plaintiffs contention for the
defendants to furnish security. The plaintiff alleges that
for it to
achieve the above, it would have to consult with approximately 30
licensees authorised to use the plaintiff’s Bulls
logo trade
mark in relation to different goods and services, in order to obtain
the documentary evidence and for their oral evidence
at the trial.
These licensees, the plaintiff states, use the trade marks in
relation to gear and memorabilia, including jerseys,
shirts, caps,
flags etc. This, the plaintiff says, will require ‘several
weeks’ of consultation, preparation and additional
discovery.
The duration of the trial will also be lengthened, with the
concomitant increase in legal costs, so it is argued.
[36]
In this regard, Ms Jansen, counsel for the defendants, contended that
the use of the trade mark by the plaintiff’s licensees
in
relation to gear, memorabilia, clothing, would merely be
‘promotional’ use of the trade mark, which does not
constitute
use
of
the mark for the purposes of trade mark infringement, as that use
would not be in the course of trade as a trademark. Counsel,
by
analogy, referred to Verimark (Pty) Ltd 1/ BMW AG; BMW AG v Verimark
(Pty) Ltd
2007 (6) SA 263
(SCA) para 7; and Salt of the Earth
Creations (Pty) Ltd & Others v The Gap, Inc, and Another
2012 (5)
SA 259
(SCA), where it was remarked that the use of a trade mark for
purely descriptive purposes would not, generally, constitute an
infringement
of the mark, as it does not necessarily create an
impression of a material link between the infringer’s product
and the owner
of the mark. I accept the analogy as apposite.
[37]
On its own version, it seems that (a) the plaintiff’s use of
the trade marks is limited to the Bulls rugby teams, matches,
players
clothing and memorabilia and (b) that the first defendant’s
business includes sports and entertainment management
and agency
services. The plaintiff will therefore have to consult regarding the
use that has been made of its trade marks in relation
to rugby
matches, rugby players and their clothing, and nothing beyond that.
Consultation with the other licensees outside the
scope of the three
classes might prove unnecessary, unless the plaintiff would seek to
prove use of the trade marks by the licensees
which enhanced its
reputation and goodwill. Such case is not made out in the plaintiff’s
papers.
[38]
In short, for the plaintiff to succeed in its action against the
defendants, it has to prove that all its alleged registered
trade
marks are valid and in force. It has to do the same in defending the
defendants’ expungement counterclaim. Hence the
very issue
which arises in the counterclaim is already the issue in the
plaintiff’s cause of action against the defendants.
[39]
I have to make the observation that the plaintiff's opposition to the
intended amendment is peculiar in that it is raised in
the form of
demand for security for costs. This is quite novel, and despite
diligent search, I have not come across any authority
for such an
objection. The proper approach seems to be that an objection to an
amendment must relate, and be intrinsically linked,
to the merits of
the proposed amendment, and not to anything extraneous.
[40]
I therefore agree with the defendants’ contention, and
conclude, that there is no real opposition to the defendants’
application to amend its counterclaim in the respect it intends to.
The defendants should accordingly be granted leave to amend.
It
follows that the plaintiff’s counter-application (its objection
to the amendment) should be dismissed. I am fortified
in this
conclusion by the absence of any demonstrable prejudice attendant to
the plaintiff as a result of the defendants’
proposed
amendment.
[41]
If this conclusion is wrong, there is still a potentially
constitutional dimension to the matter. In every application for
a
litigant to set up security for costs, s 34 of the Constitution
3
has to be considered. It guarantees everyone the right to access to
courts. The court should therefore be alert and sensitive to
the risk
that by making such order it may be infringing this right. Thus, I
must bear in mind, and weigh the application in the
light of this and
other facts, by conducting a ‘balancing exercise’ in the
quest to achieve equity and fairness. In
Giddey NO v JC Barnard and
Partners
[2006] ZACC 13
;
2007 (5) SA 525
(CC) para 8, the position was neatly
summarized as follows:
‘
The
courts have .... recognised that in applying section 13, they need to
balance the potential injustice to the plaintiff if it
is prevented
from pursuing a legitimate claim as a result of an order requiring it
to pay security for costs, on the one hand,
against the potential
injustice to the defendant who successfully defends the claim, and
yet may well have to pay all its own costs
of the litigation. To do
this balancing exercise correctly, a court needs to be apprised of
all the relevant information. An applicant
for security for costs
will therefore need to show that there is a probability that the ...
company will be unable to pay costs.
The respondent company, on the
other hand, must establish that the order for costs might well result
in its being unable to pursue
litigation and should indicate the
nature and importance of the litigation to rebut a suggestion that it
may be vexatious or without
prospects of success...’
(footnotes
omitted)
See
also Kini Bay Village Association v Nelson Mandela Municipality
[2008] ZASCA 66
;
2009
(2) SA 166
(SCA) and Zietsman v Electronic Media Network Ltd and
Others
2008 (4) SA 1
(SCA).
[42]
In the present application, there are no facts placed before the
court, save for a bald assertion that the first defendant
is a close
corporation without any assets, and that the second defendant’s
immovable property is bonded to the tune of over
R1m. Furthermore,
there is no suggestion by the plaintiff that the defendants’
counterclaim may be vexatious or without any
prospects of success.
[43]
To sum up. The defendants’ application to amend its plea should
be granted, and the plaintiff’s application for
the defendants
to furnish security for costs should fail. The plaintiff should
furnish a redacted copy of the Vodacom agreement
to the defendants.
In this regard I need to make it clear that the defendants and their
legal representatives, are entitled to
a copy of the agreement.
[44]
There remains the issue of costs. In respect of their application to
amend, and the plaintiff’s demand for security,
the defendants
have been successful. Costs should follow the cause. With regard to
the costs of the defendants’ application
to compel compliance
with their rule 35(5) notice, I am of the view that it is fair that
no order be made, on account of what is
discussed in paragraphs 18
and 19 above. Although the issues perse are not complicated to
warrant the employment of senior counsel
(being interlocutory
applications) the parties all employed senior counsel, understandably
so, as it is almost certain that the
same senior counsel would handle
the trial. It is fair in the circumstances that costs of senior
counsel should be allowed.
[45]
In the result the following order is made:
1.
The defendants are granted leave to amend their plea dated 5
September 2012 in accordance with their notice of intention to amend
dated 19 September 2012;
2.
The plaintiff’s application in terms of rule 47(1) for the
defendants to furnish security for costs is dismissed;
3.
The plaintiff is ordered, within 10 days of this order, to furnish
the defendants with a redacted copy of the sponsorship agreement
between it and Vodacom;
4.
The plaintiff is ordered to pay the defendants’ costs in
respect of their application to amend, and in respect of its
application for the defendants to furnish security for costs;
5.
There is no costs order with regard to the defendants’
application to compel compliance with its rule 35(3).
TM
MAKGOKA
JUDGE
OF THE HIGH COURT
DATE
OF HEARING : 12 NOVEMBER 2012
JUDGMENT
DELIVERED : 15 APRIL 2013
FOR
THE APPLICANTS(THE DEFENDANTS) : ADV MM JANSEN SC
INSTRUCTED
BY : SAVAGE, JOOSTE & ADAMS INC.,
PRETORIA
FOR
THE RESPONDENT : ADV C E PUCKRIN SC (with (THE PLAINTIFF) ADV L G
KILMARTIN)
INSTRUCTED
BY : ADAMS AND ADAMS ATTORNEYS,
PRETORIA
1
Section
36 protects the right of any person against the proprietor of a
registered trademark, to use such trademark if that person
had made
continuous and
bona fide
use of that trademark on certain condition
2
Vodacom became a sponsor of the plaintiff in 2005.
3
Republic of South Africa Constitution Act, 108 of 1996.