Alliance Property Group (Pty) Ltd v Alliance Group Ltd (8828/2007) [2009] ZAKZPHC 31 (20 June 2009)

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[2009] ZAKZPHC 31
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Alliance Property Group (Pty) Ltd v Alliance Group Ltd (8828/2007) [2009] ZAKZPHC 31; 2009 BIP 412 (KZP) (20 June 2009)

IN THE HIGH COURT OF SOUTH AFRICA
NATAL PROVINCIAL DIVISION
CASE NO. 8828/2007
In
the matter between:
ALLIANCE
PROPERY GROUP PTY (LTD) APPLICANT
and
ALLIANCE
GROUP LIMITED FIRST RESPONDENT
AUCTION
ALLIANCE
KWA-ZULU
NATAL PTY (LTD) SECOND RESPONDENT
JUDGMENT
SISHI
J
INTRODUCTION
[1] The
Applicant in this matter seeks a permanent interdict restraining the
Respondents from passing-off their services in the
field of property
as those of the Applicant, or as being associated with the Applicant
in the cause of trade by using the name,
mark & trading style
“Alliance Group” or any other name, mark & trading style
which is confusingly or deceptively similar
to the Applicant’s mark
& trading styles “Alliance Group”.
[2] The
Applicant conducts business in the field of commercial and industrial
property including property development and facilitation,
evaluations
and consultancy, property sales, property letting, property
management and public auctions of property. The Applicant
alleges
that it conducts its business in major centers in South Africa,
including in particular Kwa-Zulu Natal, Eastern Cape, Western
Cape
and Gauteng.
[3] The
Respondents conduct the business of property inspections and
evaluation, property auctions, business sales and property
finance
throughout South Africa. However, the core business of the
Respondents is that of property auctions.
[4] The
First Respondent commenced trading as “Auction Alliance Pty (Ltd)”
in 1998. In May 2000 the First Respondent changed
its name to
“Auction Alliance Holdings Ltd” and thereafter in March 2003 to
“Asset Alliance Ltd”. The First Respondent
traded in Kwa-Zulu
Natal prior to the incorporation of the Second Respondent in 2000.
The Second Respondent was incorporated on
15 December 2000 as “Kusasa
Commodities (Pty) Ltd” and changed its name on 7 March 2001 to
“Auction Alliance Kwa-Zulu Natal
(Pty) Ltd”. The Second
Respondent conducts the First Respondent’s business in Kwa-Zulu
Natal and has done so since 2001.
[5] In September 2007 the Respondents ceased using the
names “Auction Alliance Group” and “Auction Alliance Kwa-Zulu
Natal”
and began trading as “Alliance Group”.
[6] The Applicant contends that these proceedings arise
out of the Respondents’ change of the trading style from “Auction
Alliance”,
used essentially in relation to the conduct of auctions
of immovable property to “Alliance Group” in September 2007, in
the
face of the Applicant’s existing reputation and goodwill
residing in the trading styles “Alliance” and “Alliance
Property
Group” in the fields of property, including auctions. The
Applicant contends that the effect of the Respondents conduct was to

remove the only feature of their trading style, which distinguishes
their services and business from those of the Applicant and
to add
Group element of the Applicant’s trading style to their trading
style, thereby misrepresenting that their business is
that of the
Applicant or associated in the cause of trade with the Applicant.
THE LAW APPLICABLE AND THE
MEANING OF PASSING -OFF
[7] The following cases were referred to by the parties
on meaning of passing-off.
Capital Estate & General Agencies (Pty) Ltd &
Others v Holiday Inn Incorporated & Others
1977 (2) SA 916
(A)
,
a case which deals with what has been a commonly used definition of
passing-off, where Rabie JA stated the following at 929 C-D
“The wrong known as passing-off consists in a representation by one
person that his business (or merchandise, as the case may
be) is that
of another, or that it is associated with that of another, and, in
order to determine whether a representation amounts
to a passing-off,
one enquires whether there is a reasonable likelihood that members of
the public may be confused into believing
that the business of the
one is, or connected with that of another. Whether there is a
reasonable likelihood of such confusion
arising is, of course, a
question of fact which will have been determined in the light of the
circumstances of each case. And
if the evidence establishes that
there is a reasonable likelihood of such confusion arising, even if
the parties concerned cannot
be said to be carrying on their
activities in a common field, it is difficult to see how the absence
of such a common field can
nevertheless constitutes a ground for
denying a relief to an aggrieved party. The absence of a common
field of activities is of
course a factor which has to be taken into
account when considering the question whether someone’s conduct is
likely to lead
to confusion of the kind mentioned but the proper
weight to be assigned thereto would depend on the consideration of
all relevant
facts. The crucial question in every case is whether
there is a reasonable likelihood of confusion and this being so it
cannot
be suggested that the absence of a common field of activity
will always be sufficient to bar a party from obtaining relief.”
[8]
Carterham
Car Sales & Coach Works Ltd v Birkin Cars & Another
[1998] ZASCA 44
;
1998 (3)
SA 938
(A)
in
this case Harms JA referred, to the elements of the wrongs as
“… the “classical trinity” of reputation (or goodwill),
misrepresentation and damage”, at 947 A-B.
In
the same case at paragraph 15, Harms JA went on to state:
“
The
essence of an action for passing-off is to protect a business against
a misrepresentation of a particular kind, namely that
the business,
goods or services of the representor is that of a plaintiff or is
associated therewith”.
[9]
Premier Trading Co (Pty)
Ltd & Another v Sporttopia (Pty) Ltd
2000 (3) SA 259A
at 266H to
267C
where Nienaber JA stated the
following:
“Passing-off is a wrong consisting of a false representation made
by one trader (the defendant) to members of the purchasing
public
that the enterprise, goods, or services of a rival trader (the
plaintiff) either belong to him (the defendant) or are connected,
in
the course of trade, with his own enterprise, goods or services. …
The defendant’s representation is a misrepresentation
if it is
likely to deceive or confuse the substantial number of the public as
to the source, origin of his product. Passing-off
to be actionable,
he erodes the plaintiff’s goodwill. Goodwill is the product of
accumulation of factors, the most important
of which, in the context
of passing-off is the plaintiff’s reputation. Reputation is the
opinion, which the relevant section
of the community holds the
plaintiff or his product. If favourable, it would dispose potential
customers to patronize the plaintiff
or his product and, if
unfavourable, it would tend to discourage them from doing so …”
[10] To illustrate that reputation has a territorial
aspect, Harms JA in
Carterham Car Sales &
Coachworks Ltd, supra,
at para 20, said
the following:
“
The
correct question can be distilled from the judgments on passing-off
of this court mentioned earlier in paragraphs 15 and 16
…. In
general terms, it appears to me to be whether the plaintiff has, in a
practical and business sense, a sufficient reputation
among the
substantial number of persons who are either clients or potential
clients of the business. As far a location of reputation
is
concerned, it must subsist where the misrepresentation or complaint
causes actual or potential damage to the drawing power of
the
plaintiff’s business. Otherwise the misrepresentation would be
made in the air and without any consequences…”
[11] In paragraph 22 of the same judgment, the court
dealt with the aspect of timing. The following is stated:
“The reputation relied upon must have been in existence at the time
the defendant entered the market, in other words, the plaintiff

cannot rely on a reputation that overtook the business of the
defendant. It must also exists when the misrepresentation is
committed”
What can be crystilized from the cases referred to above
is that passing-off is mainly about two issues, namely, reputation
and
misrepresentation.
THE
APPLICANT’S REPUTATION
[12] The issue under this head is whether the Applicant
has in a practical and business sense sufficient reputation among a
substantial
number of persons who are either clients or potential
clients of its business. (See
Carterham Car
Sales & Coachworks Ltd, supra,
at
947B-C
).
[13] It
is trite that the onus is on the Applicant to establish the requisite
reputation.
(
Premier
Trading Company (Pty) Ltd supra
at 267 D-E) (
Initiative
Promotions & Designs v Initiative Media South Africa 2005 BIP 516
(DCLD) at 525A-F
)
[14] In
Carterham Car Sales &
Coaches Works Ltd, supra
, Harmes JA
pointed out that the only component of goodwill of a business that
can be damaged by means of a passing-off is its reputation
and it is
for this reason that the first requirement for a successful
passing-off action is proof of a relevant reputation. (At
para 16)
See also:
Brian Boswell Circus (Pty) Ltd v
Boswell-Wilki Circus (Pty) Ltd
1985 (4) SA 466A
at 479D
and
Adhoc-Ingrim Products Ltd v Birchim SA (Pty) Ltd
1977 (4) SA 434W
at
436 – 437)
[15] The
Applicant contend that it has established its reputation and the
Respondents on the other hand contend that the Applicant
has failed
to discharge the onus resting on it in establishing the requisite
reputation.
[16] The principal deponent to the Applicant’s
founding affidavit is Robert Roy Marshall Alderdice, the Director of
the Applicant
whilst Rael Levitt, the Chief Executive Officer of
Alliance Group Companies and Director of the First and Second
Respondents has
deposed to an answering affidavit and further
affidavits on behalf of the Respondents.
[17] I shall first deal with the essential factual
averments on the affidavits of both parties and their contentions on
the aspect
of the Applicant’s reputation.
[18] Mr Alderdice says that the Applicant commenced
business on the 4
th
of March 1997 and had adopted the trading name, the company name and
trading style “Alliance Property Group”. The Applicant
traded
under the style of “Alliance” and “Alliance Property Group”
since 1997 and the use of these trading styles has been
extensive
through Kwa-Zulu Natal, the Eastern Cape, Western Cape and Gauteng.
[19] Mr Alderdice says that since its inception, the
business of the Applicant has encompassed the facilitation of
property development,
property evaluations and property consultancy,
property management, property sales, property letting and public
auctions. He says
that the Applicant has always enjoyed the highest
reputation amongst the public, more particularly the public
interested in the
property field where the Applicant is known for its
expertise and trustworthiness.
[20] Since 1997, the Applicant has facilitated a number
of property developments having a combined value of over R800 million
as
a major aspect of its business. (See annexure “RA2A” pg 30
Record). They include the development of Rob Roy Retirement
Lifestyle
Village worth R160 million. Over the years since 1997,
R427 million worth of property developments have been serviced
through
the Applicant. At the same time and as of September 2007
there were R413 million worth of developments being current projects
which were facilitated and serviced by the Applicant. This is a
substantial activity. Levitt for the Respondents has not denied

these figures save to deny that the Applicant is in any significant
degree involved in the business of public auction.
[21] Over the years since 1997 the company’s portfolio
of commercial and industrial properties, which it manages, has grown
to
54 buildings worth over R948 million. These properties are
located in Kwa-Zulu Natal, Eastern Cape, Western Cape and Gauteng.
[22] Mr Alderdice says that one aspect of its business
has been the conduct of public auctions of property. The Applicant
conducted
its first public auction during February 1998 when it
auctioned a Glenashely Shopping center and has continued to conduct
such
auctions since then. The Applicant has conducted a number of
such public auctions worth some R388 million.
[23] The largest of these auctions, according to Mr
Alderdice took place in Dubai in November 2005 and involved
auctioning property
worth R283 million. The auction attracted
considerable interest both in South Africa and internationally as
this was a first property
auction in Dubai.
[24] The website report on an auction conducted by the
Applicant in Dubai on page 39 Record reads as follows:
“
The
auction was expertly hosted by a representative from a world renown
commercial and industrial property consultancy Alliance
Property
Group, who traveled from South Africa specifically for the event.
Roy Alderdice auctioneer and managing director said
it was a great
honour and great privilege to conduct this very exciting and
prestigious property auction here in Dubai”.
[25] It has been contended on behalf of the Applicant
that one does not go and conduct an international auction unless one
has a
reputation. This was an indication that the Applicant has a
reputation. In this regard, I pause to mention that reputation must

subsist where the misrepresentation complained of causes actual or
potential damage to the drawing power of the Plaintiff’s business
–
(See
Caterham Car Sales & Coachworks
Ltd, supra at para 20
.)
[26] Alderdice testified that the Applicant has acted as
consultants and advisors as well as auctioneers to IFA, the Dubai
based
company, which has been a core developer of the well-known
prestigious Zimbali Golf Course and Leisure Resort in KwaZulu Natal
along with Moreland Developments.
[27] Since the year 1998, the Applicant’s turn over
from its property related activities primarily in the form of
commissions
has exceeded R91 million as reflected on the schedule
marked “RA9” page 54, Record.
[28] The Applicant has made extensive use of the printed
media including advertising boards in order to advertise its services
and
its property sales. The amount spent by the Applicant in
advertising its services has exceeded R1.744 million. Levitt of the
Respondents,
however, testified that during the period 2003 – 2007
in Kwa-Zulu Natal alone, the Respondents spent the sum of R16 466
392-00
in relation to advertising. As far as the group adverting of
the Respondents is concerned for the period 2006 – 2007, the
Respondents
spent the sum of R57 411 218-00. The advertising
expenses of the Applicant, as compared to the Respondent a total of
R400 927-00
for a period a 2006-2007 pale into insignificance.
[29] Mr Morley for the Applicant submits correctly in my
view that if the Respondents submit that they have advertised far
more
extensively than the Applicant, if it is so, that advertising
pertains to the mark “Auction Alliance”, not “Alliance Group”.

He submits that throughout up until September 2007, the Respondents
were “Auction Alliance”. That is distinct from “Alliance

Property Group” for example. He submits further that it is not
good enough to say, they engaged in more advertising than the

Applicant over that particular period, but the advertising pertains
to “Auction Alliance”, not to “Alliance” on its own
or
“Alliance Group”.
[30] Alderdice further testified that in further support
of the Applicant’s reputation and goodwill in its name and trading
style,
“Alliance” and “Alliance Property Group”, he has
annexed affidavits of Redmond Norgate Dales, Brian Duncan Reardon,
Julian
Hilton Beare, Murray Russell Collins and Russell Dennis Cleave
who have extensive knowledge of the property industry in Kwa-Zulu

Natal and who attest to the Applicant’s reputation covering the
field of property. Some of the deponents also allege that in
their
opinion, the change of name from “Auction Alliance” to “Alliance
Group” will cause confusion to members of the public.
[31] Indeed, a close examination of these affidavits,
reveal that the Applicant as “Alliance Property Group” has
established
a sound reputation in the property industry and has been
well known in the Durban area.
[32] The Respondents contend that the word “Alliance”
is common to both Applicant’s and Respondents’ names and that
this
word in the contexts of these names will result in confusion.
The Respondent argued that even if it were to be found that the
Applicant has established a reputation which would entitle it to the
relief sought, the Applicant has failed to establish any reputation

other than in Kwa-Zulu Natal and parts of the Eastern Cape.
[33] Mr Levitt for the Respondents denies that the
Applicant has any reputation outside Kwa-Zulu Natal other than areas
in the Eastern
Cape which were formerly part of Transkei and denied
that the Applicant conducts any business in the Western Cape or
Gauteng and
if it does that this business is negligible.
Use of
“Alliance” as a descriptive name
[34] The Respondents contend that the word “Alliance”
is a descriptive word and that the Applicant itself concedes that the
word has descriptive connotations.
[35] The Respondents contended that the word “Alliance”
is a descriptive word and it means: “a union or association formed

for mutual benefit; a relationship based on affinity” (Concise
Oxford English Dictionary 11
th
edition 2006, Oxford University Press).
[36] The Applicant on the other hand on the meaning of
the word “Alliance” has referred to the Concise Oxford Dictionary
(9
th
edition at
34) and states that it defines “Alliance” as follows:
“n1. a union or agreement to co-operate, especially of states by
treaty or families by marriage. b. the parties involved. 2 (alliance)

a political party formed by the allying of separate parties. 3 a
relationship resulting from an affinity on the nature of qualities

etc (
the old alliance between logic and metaphysics
). 4 bot a
group of allied families….”
[37] In dealing with the principles applicable when a
descriptive name is being used, counsel for the Respondents referred
to the
case of
Rovex Ltd & Another v
Prima Toys (Pty) Ltd 1982(2) SA 403 (C)
in which the C
ourt quoted with approval (at 405
E-H) the following passage from an Australian case,
Hornsburg
Building Information Center (Pty) Ltd v Sydney Building Information
Center Pty Ld
:
“There is a price to be paid for the advantages flowing from the
possession of an eloquent trade name. Because it is descriptive
it
is equally applicable to any business of a like kind, its very
descriptiveness ensures that it is not distinctive of any particular

business and hence its application to other like business will not
ordinarily mislead the public. In cases of passing-off, where
it is
the wrongful appropriation of the reputation of another or that of
his goods that is in question, the plaintiff which uses
descriptive
words in its trade name will find that quite small differences in a
competitors trade name will render the latter immune
from action –
Office Cleaning Services Ltd v. Westminster Window & General
Cleaners Ltd (1946) 63RPC 39 at 42 per Lord Simonds.”
[38] His Lordship said (at 43), the possibility of
blunders by members of the public will always be present when names
consists
of descriptive words –
“So long as descriptive words are used by two traders as part of
their respective trade names, it is possible that some members
of the
public will be confused whatever the differentiating words may be.
The risk of confusion must be accepted, to do otherwise is to give
the one who appropriates to himself descriptive words an unfair

monopoly in those words and might even deter others from pursuing the
occupation which the words describe.”
[39] In
Selected Products Ltd
v Enterprise Bakeries (Pty) Ltd
1963 (1) SA 237C
the Applicant’s biscuits were called “Coconut Cookies” at 240F
–243A, Theron AJ as he then was said:
“Now it has been stated over and again by the Courts that if a
trader has applied to his merchandise ordinary descriptive words,
he
will have great difficulty in proving that such words constitute a
trade name designating his goods as opposed to those of others.
Save
in most
exceptionally circumstances
no individual can be
allowed to monopolise words which are the common heritage of us all
and which provide a convenient and natural
method – even if not the
only or most correct method – of describing an article. The
reluctance of the Courts to find that
words primarily descriptive
have acquired among the public or that class of the public likely to
deal with the article designated
thereby, a subsidiary or secondary
meaning denoting or connoting a particular origin, is well
illustrated by the following passage
from the judgment of Lord Shand
in
Cellular Clothing Company Ltd v Maxtion”
1899 AC
326
(a case which has often been relied upon in our Courts)
at page 340:
“
of
that case (i.e.
Reddaway
v Banham
1896 AC 199
)
I shall only say that it no doubt shows that it is possible where a
descriptive name has been used to prove that so general, I
should
rather say so universal, has been the use of it as to give it a
secondary meaning and so to confer on the person who has
used it a
right to its exclusive use or, at all events, to such a use that
others employing it must qualify their use by some distinguishing

characteristics. But I confess that I have always thought that I
still think that it should be made almost impossible for anyone
to
obtain the exclusive right to the use of the word or term which is an
ordinary use in our language and which is descriptive
only and indeed
were it not for the decision in Reddawys case. I should say this
made altogether impossible.”
[40] In
Park Court Hotel Limited v Trans World Hotel Limited (1972) RPA
C 27
,
the plaintiff being the owner of the
hotel called “Hotel International” sought to interdict the
defendant from using the name
“London International Hotel”. At
page 31 line 3-7 the Court stated:
“A distinction is made between a distinctive word used in a name
and an inventive or fancy name. The descriptive word need not
be the
only or necessary word to effect the description. It is sufficient
if it is in the terms as stated in the speeches in the
Cellular
Clothing Company case, “applicable to the subject matter”, or if,
by it, the description is “conveniently enough
and appropriate
enough described” and “aptly and appropriately describe””.
At
page 34, line 14 to 25 the Court went on to state in relation the use
of the word “International”:
“So I conclude that it is a descriptive word and is used in the
name as a descriptive word. But it seems to me that the words,

though descriptive and in common use, like the word “International”
as used in this case is not so strongly and inevitably
descriptive in
its own connotation as the word “Cellular” in the Cellular
Clothing case.
But it is descriptive, substantially descriptive,
and in my view sufficiently descriptive to offend against the
principle in law,
or of policy in which the law has been jealous to
safeguard, that a descriptive word shall not, except under stringent
condition
be monopolized
. It seems to me that, in the present
day conditions particularly, it is undesirable that such a word as
“International” should
be monopolized in the context in which is
used in this case.”
[41] The
Respondents contend correctly in my view that the word “Alliance”
like the word “International” is substantially
and sufficiently
descriptive that the Applicant cannot claim a monopoly on this widely
used and descriptive word in its trade name.
[42] In
Sea Harvest
Corporation (Pty) Ltd v Irvin & Johnson Ltd
1985 (2) SA 355(C)
,
the learned Acting Judge stated the following at 360B –D:
“A long line of decisions in passing-off and trade mark cases has
established that while descriptive words as opposed to invented
or
fancy words are used in a trade name or trade mark, the Courts will
not easily find that such words have become distinctive
of the
business or products of the person using them, and will not give what
amounts to a monopoly in such words to one trader
at the expense of
others.
Cellular Clothing v Murray
1899 AC 326
(HL); Patlansky
& Co Ltd v Patlansky Brothers 1914 (TPD) 475 at 492; Selected
Products (Pty) Ltd v Enterprise Bakeries Ltd
1963 (1) SA 237(C)
at
242F to 243B; Rovex Ltd & Another v Prima Toys (Pty) Ltd
1982 (2)
SA 403(C)
”
[43] Mr Levitt for the Respondent testified that the
meaning of the word “Alliance” makes it attractive for use in
names of
businesses in which co-operation, networking and a united
effort towards a common goal would be appropriate. The Respondents
contend
that for this reason it is clear that the word is used in a
variety of company and trading names. This is particularly so in the

field of property sales, management and development in which
co-operation of number parties is required for a successful business

venture. The Respondents have contended that they have established
that apart from the Applicant and the Respondents, there are
numerous
corporate entities registered in South Africa in which the word
“Alliance” features prominently in the entities’
names. These
include: New African Alliance Properties, Strategic Alliance Property
Ventures, Alliance Property Developments, Alliance
Property
Management, Global Alliance Properties, African Alliance Properties,
Strategic Alliance Property Consultants, Strategic
Alliance Property
Investments, Strategic Alliance Property Consultants and Alliance
Properties (Record pg 159 –167). Mr Morley
for the Applicant
submitted correctly that these are names on the register, e.g. in New
Alliance Properties, the word “Alliance
“ is very descriptive so
as in Strategic Alliance Property Ventures, Alliance Property
Developments is a subsidiary of the Applicant.
Strategic Alliance
Property Consultants is located in Sandton, African Alliance Property
is based in the Cape. Alliance Properties
is based in the Western
Cape.
[44] The Applicant submits that the Respondents have not
demonstrated that these entities trade using these registered names
in
which the words “Alliance” features. The Respondents contend
that it is highly unlikely that entities with such registered
names
would not trade using (descriptive) registered names. In this
regard, I find that it is probable that these entities do
trade as
such.
[45] Mr Levitt, for the Respondents testified that the
First Respondent effectively owned and controlled twelve (12)
different companies
with the words “Alliance” coined to their
respective names since 11 March 1998 with no complaints whatsoever by
the Applicant
for a period of nearly ten (10) years. Save for
stating that the related companies have never traded as “Alliance”
or “Alliance
Group”. These allegations have never been
specifically denied by the Applicant.
[46] The Respondents have established that there are a
number of entities which clearly trade using the word “Alliance”
in their
names which are active in the field of property. These
include: Alliance Property; Strategic Alliance Property Consultants
Pty
Ltd; and African Alliance Properties. The locations of these
companies have been dealt with in paragraph 48 above. None of them

are located within the Province of KwaZulu Natal.
[47] Furthermore, the Applicant has also demonstrated
(See annexure “RA15” to the Applicant’s replying affidavit,
record page
227) that there are a large number of companies in Durban
and surrounding areas which trade with the word “Alliance”
featuring
prominently in their names. These include amongst others
Alliance Focus, Alliance Brokers, Alliance Business Brokers; Alliance

Finance; Alliance Business Solutions; Alliance IT and Business
Solutions, and Alliance Real Estate. The Respondents contend that
it
is clear that the Applicant cannot contend that the word “Alliance”
represents its trade name within KwaZulu-Natal and the
Eastern Cape
and certainly not nationally. The Applicant cannot claim the right
to exclusive use of a word which is descriptive
and is also used in a
massive number of other businesses some of which are also active in
the field of property. The Respondents
appear to be correct in this
regard.
[48] Mr Levitt also testified that in a research
conducted by his legal representative on 22 January 2008, marked
“RL80”, there
are no less than twenty-two (22) entities in South
Africa in which the word “Alliance” features prominently in the
entities’
name.
[49] Any distinctiveness which may have attached to the
Applicant’s trade name has been lost due to the fact there are so
many
entities trading with the same name or with a similar name (
see
Peregrine Group Pty Ltd v Peregrine
Holdings Ltd 2001(3) SA 1268 (SCA) at 1275 at paragraphs 12 & 13
;
see also
Peregrine
Group Pty Ltd v Peregrine Holdings Ltd 2000(1) SA 187(WLD
).
In the
SCA
Peregrine Pty Ltd case
at paragraph 12,
the Court stated as follows:
“…In sum, the registration of the Respondents’ names was not
the cause of the likelihood of confusion because of the gradual

erosion of the distinctive character of the word as part of the
company name. And, because the appellants were not the first to

adopt the word as part of their names, they can not rely upon a
vested right by virtue of the first use of registration.”
[50] The Respondents also contends that it is also
instructive to note that the Applicant has not produced any evidence
of it seeking
to interdict any of these entities from trading with
the word “Alliance” featuring prominently in their names. The
Applicant
is thus being selective in seeking to pursue the
Respondents. The Respondents submit that the word “Alliance” has
become synonymous
with its business, namely, property, and that a
significant portion of the public identifies the Respondents business
with the
use of the word “Alliance” in the property field. In
this regard counsel for the Respondents referred to the evidence of
advertising,
which
obviously
indicates that the Respondents spend more per annum on advertising
than the Applicant. It has, however, been pointed above that

advertising relates to Auction Alliance. The Respondents contend
that this advertising not only affects the reputation of the
parties
in the minds of the public but also will lead to the public being
aware of the identity of the Respondents compared to
the Applicant
and then as a result there will be no confusion.
[51] The Respondents refer to paragraph 17 of the WLD
Peregrine case, supra
,
which reads as follows:
“I do not agree with the registrar’s categorization of the word
“Peregrine”
as being an ordinary generic word. The
word genus is defined in the Oxford dictionary as being “belonging
to a genus or class;
applied to a large group of or class of objects;
general (opposed to specific or special class)… In any event the
word
Peregrine
in the context in which it is used by
the parties in this matter can hardly be described as generic or
descriptive of the services
which they offer. Be that as it may, I
can not ignore the approach adopted by the registrar or that there
are twenty-nine (29)
companies and close co-operations which the
registrar has permitted to use word
Peregrine
as part
of their registered name.”
In paragraph 23 of the same case the following is
stated:
“the name
Premier
was not descriptive of any of the
products or services of the parties. It was simply an attractive
English noun that enhanced
the image of the companies which used it.
In my view, the name
Peregrine
(which is also non
descriptive of the services offered by the parties in the present
matter) serves a similar purpose. I am mindful
of the fact that the
word
Peregrine
cannot be said to be in common to the
same degree as the word Premier. The word is, however, an ordinary
English word and has
been permitted by the Registrar as part of the
names of no less than twenty nine (29) companies. As such in my
view, it would
be inappropriate to confer a monopoly in the word
Peregrine
unless the word has acquired a secondary
meaning in association with the business conducted by the
Applicants…”
Then in paragraph 24 of
the same case the Court refers to the
case
Van Der Watt v Humansdorp Marketing CC
1993 (4) SA 779
(SE)
were Zitsman JP held that:
“Where an Applicant uses his own name or mere
descriptive words in naming his business, an interdict will not be
easily granted
unless the Applicant can show his name or the
descriptive words used by him, have become so associated with his
business or his
products that they have acquired a secondary meaning
and are associated in the minds of the public with the Applicant’s
products
or business, and with that of no-one else”. (At 782J –
783B)
[52] Counsel for the Respondent contends, correctly in
my view, that this is exactly what is lacking in this case. He
submits that
no where in the Applicant’s papers one would find an
allegation that the name “Alliance”, has acquired a secondary
meaning.
That is the reason why the Applicants says it symbolizes
its business but symbolization is not good enough it has to acquire a

secondary meaning. Indeed nowhere has the Applicant alleged that the
name “Alliance” has acquired a secondary meaning as contemplated

in that case.
[53] Reference is also made to paragraph 25 of the
Peregrine
case,
supra, which reads as follows:
“
I
tend to consider whether the Applicants have established that the
name
Peregrine
has as a result of the Applicant’s use of the name, acquired a
secondary meaning in the minds of the public. The Applicants
do not
expressly allege that they have established for the name
Peregrine
a secondary meaning in particularly market place. Instead they do so
obliquely by denying the Respondents allegation that the Applicants

have established such secondary meaning ...”
[54]
Towards the end of paragraph 25 at D, the following is stated:
“…
The
Respondents have not however, established that the term
Peregrine
has acquired a secondary meaning in the minds of the public
associated with their business. Based on my assessment of the
evidence
none of the litigants have established the existence of a
secondary meaning in the
Peregrine
name which is associated with their respective businesses. On this
ground alone, given the generic nature of the word
Peregrine
and the extent of its use by the legal entities in the corporate
world, it would be inappropriate to permit the Applicants or
the
Respondents (for that matter) to be entitled to a monopoly of the
name.”
The
Respondents contend that this is the position in the present case.
The Applicants cannot be granted a monopoly in this name.
[55
] Mr
Morley’s submission that the Peregrine case, supra, only deals with
company name registration is not correct. This case
also deals with
passing-off of goods (see paragraphs 1, 2, 32 of the Peregrine case
(WLD)). The Applicant’s claim in this case
is based on both
section 45(2A) of Act 61 of 1973 and on the grounds of common law
passing-off so as the finding by the Court.
[56] Evidence has established that apart from the
Applicant and the Respondents, there are a number of corporate
entities in South
Africa in which the word “Alliance” features
prominently in the entities names. The names of these companies
active in the
filed of property have been given (see paragraphs 49,
52 and 53 above). The Applicant itself has shown (in annexure “RA15,
Applicant’s
Replying Affidavit, record page 227) that there are a
large number of companies in Durban and surrounding areas which trade
with
the word “Alliance” featuring prominently in their names.
These include (amongst others) Alliance Brokers; Alliance Business

Brokers; Alliance Finance; Alliance Institute Business Solutions;
Alliance Institute IT & Business Solutions and Alliance Real.
I
therefore find that the word “Alliance” is indeed a descriptive
word and in this case is used as a descriptive word.
[57] The Applicant therefore cannot claim the right to
exclusive use of a word which is descriptive and is also used in a
number
of other businesses some of which are active in the field of
property. The law requires that descriptive words shall not save in

exceptional circumstances be monopolized. The word “Alliance” is
substantially and sufficiently descriptive that the Applicant
cannot
claim a monopoly on this widely used and descriptive word in its
trade name. Furthermore, the name “Alliance” is not
descriptive
of any of the services offered by the parties in this case. It would
therefore be inappropriate to confer a monopoly
in the word
“Alliance” unless it has acquired a secondary meaning in
association with the business conducted by the Applicant.
[58] Based on my assessment of the evidence in this
matter neither the Applicant nor the Respondents have established the
existence
of a secondary meaning in the name “Alliance” which is
associated with their respective businesses. In the result neither
party is entitled to the monopoly in the name “Alliance”.
[59] The Respondents referred to its adverts dealing
with the name change. Two of such adverts in the commercial review
states
that Alliance Group was formerly Auction Alliance and Action
Alliance has now become Alliance Group (pgs 59 & 61 of the
Papers).
The Respondents contends that why would someone who wants
to pass off his goods as those of the competitor go into print and
advertise
that it is the company formerly know as Auction Alliance
and contends that this is the very last thing one would like to do.
Most
probably no reference would be made to the company’s former
name Auction Alliance if the intention is to pass off its goods as

those of the competitor.
[60] The Applicant submits that the Respondents cannot
rely upon a reputation which has overtaken that of the Applicant. In
support
of this proposition the Applicant has referred to the case of
is
Carterham Car Sales & Coachworks
Ltd, supra,
at page 950 H-J:
“
The
reputation relied upon must have been in existence at the time the
defendant entered the market, in other words, a plaintiff
cannot rely
upon a reputation that overtook the business of the defendant
(Antheuser-Busch
Incorporated v Budejovicky Budvar – NP (t/as Budweiser Budvar
Brewery) & Others (1984) FSR413 (CA) at 462),
it must also exist when the misrepresentation is committed.”
[61] According
to the Respondents this authority establishes that an action of
passing-off cannot be established by a party relying
on a reputation
which overtook that of the Defendant/ Respondent. It is not
authority for the proposition that a Defendant/Respondent
cannot rely
on its own reputation overtaking that of the Plaintiff/Applicant. It
must exist when the misrepresentation is being
committed.
[62] The
Respondents’ contention with regard to the above quoted paragraph
in
Carterham
Car Sales & Coachworks Ltd, supra
,
appears
to be correct. There is no suggestion in this case that the
Applicant’s reputation overtook the reputation of the Respondents,

on the facts of this case it appears to be vice versa with the
Respondent’s active advertising campaign after the change of
its
name.
MISPRESENTATION
[63] The
Applicant contend that the Respondents have not established any use
of the name “Alliance” on its own as opposed to
“Auction
Alliance” and that at best “Auction Alliance” was the only
symbol that indicated their business and reputation.
The Respondents
first began to trade as “Alliance Group” in September 2007. They
have advertised their change of name and
trading style extensively.
The Applicant contend that even taking the Applicant’s style
“Alliance Property Group” and the
trading style “Alliance
Group”, it has now become for all intents and purposes virtually
identical. The missing word “property”
matters not because they
are trading as “Alliance Group” in the field
inter
alia
of property. Using “Alliance Group” in relation to property is
likely to lead to deception and confusion. What the Respondents
have
done in essence is the remove the distinguishing feature of their
trading style, those which distinguish them from the Applicant
and
brought themselves as it were within the ambit of deception and
confusion. The Applicant also contended that apart from leaving
out
the non-distinctive word “property”, the name and trading style
“Alliance Group” is identical to the Applicant’s
name and
trading style “Alliance Property Group”.
[64] It
was held in
Sir
Roberts McAlpine Ltd v Alfred McAlpine PLC
[2004] EWHC 630
;
(2004) RPC 36
in which the defendant dropped the word ALFRED from its logo and
re-branded itself with the word McAlpine across a slanted purple
logo
that:
“
(35)
It is apparent from this that the word ALFRED as a distinguisher is
played down so that it is virtually non-existent. No
replacement
distinguisher is provided.
(36) Accordingly
there is, and will be, a situation in which McALPINE features
exclusively in a trading of persona of Alfred (Alfred
McAlpine PLC).
Does this amount to a misrepresentation for the purposes of law of
passing-off? In relation to relevant activities
it seems to me that
it does. I have already found that the word is capable of referring
to Robert (Sir Robert McAlpine Ltd) so
using the word will inevitably
amount to a misrepresentation because the business being referred to
is not in fact of Robert …
Since the use of that word lies at the
heart of the present corporate presentation and image, the
misrepresentation is made out.
Alfred
has taken steps to suggest that it is the sole owner of the name,
and to do that is to affect the value of the name to
Robert because
it starts to elbow it out – it deprives Robert of some of the
value of the name or diminishes Robert’s rights”.
[65] The
Applicant referred to the summary of the McAlpine case at H13 page
100 which says:
“
The
effect of the defendant’s re-branding exercise was to play down the
word ALFRED as a distinguisher, so that it was virtually

non-existent. No replacement distinguisher was provided. There was
and there would be a situation in which McALPINE featured
almost
exclusively under the trading persona of the defendant. Because the
word McAPLINE was capable of referring to the claimant,
so using the
word would inevitably amount to a misrepresentation because the
business being referred to was not that of the claimant”
[66] In
this particular case the Applicant contends that they have a
reputation and goodwill in “Alliance Property Group” and
in
Alliance. They are the symbols by which they are known. The
Respondents had a symbol “Auction Alliance”. What they have
done
they have dropped the distinguisher “Auction”. The Respondents
have brought themselves into the ambit of blurring and
diminishing
the value of the Applicant’s goodwill and in doing so they are
likely to cause deception or confusion. By their
actions in this
case, one must have regard to the immensity of the advertising
campaign, the Respondents are now suggesting to
the world that they
are the “Alliance Group”. They want to oust as it were, the
reputation and goodwill of the Applicant.
[67] The
Applicant submitted that in
Initiative
Promotions & Designs CC v Initiative Media SA (Pty) Ltd (2005)
BIP 516
the Applicant had established a reputation in the word “Initiative”.
The Respondent, which had been trading as “MAI”,
which was the
abbreviation for the name “Media Initiative Africa”, and later as
“INB” which was the abbreviation for the
name “Initiative Nota
Bene”, adopted the word “Initiative” as dominant feature of its
trade name. It was held by his Lordship
Mr. Justice Levinson that a
passing-off had been established and that the Respondent’s use of
the name “Initiative” was unlawful
(at 529F & 531F). The
Applicant submits that in this matter the Respondents re-branding
exercise constitutes a misrepresentation
that “Alliance Group”
is, or is associated with, the business of the Applicant.
[68] Mr
Morley submitted that there is evidence on the papers of the
Applicants use of the word “Alliance” on its own. He referred
to
annexure “RA7 and RA8” on the papers, pages 42 to 46 record. He
specifically referred to page 45 where it is stated that
Alliance’s
clients includes major banks and retailers. He also referred to page
50 of the record, depicting the company’s profile, and
specifically
to the paragraph reading as follows:
“
A
barometer of
Alliances
growth can be measured in its staff which has grown by 300s”
He
submitted that there is evidence of dominant features of “Alliance
Property Group Ltd” trading style being Alliance.
[69] Both
annexures “RA7 and RA8” inclusive of the company profile clearly
indicates by the headings that the company involved
is “Alliance
Property Group Ltd”. This is not evidence that the Applicant ever
traded using the name “Alliance” on its
own. There is no such
evidence on the papers before Court. The Applicant in this case has
not established reputation on the word
“Alliance” on its own. The
Respondents too have not advanced any evidence that they ever traded
using the name “Alliance”
on its own. It has always been used by
both parties in conjunction with other names. I therefore find that
the Applicant has
not established that the name “Alliance” is its
own trading style. The facts of this case are distinguishable from
the case
of Initiative Promotions & Designs CC supra. In that
case the Applicants had established a reputation in the word
“Initiative”.
The Respondents adoption of the word “Initiative”
as a dominant feature in its trade name established passing-off.
[70] Mr
Morley for the Applicant referred to the case of Hoechst
Pharmaceuticals (Pty) Ltd c The Beauty Box (Pty) Ltd
1987 (2) SA 600
(A) at 619 D where Nicholas AJA stated:
“
Confusion
per se does not give rise to an action for passing-off. It does so
only where it is the result of a misrepresentation
by the Defendant
that the goods which he offers are those of the Plaintiff or are
connected with the Plaintiff…”
Mr
Morley then submitted that if there is a misrepresentation which
causes confusion and indirect misrepresentation, it is when
one sees
a name which is calculated to deceive or cause confusion.
The
difference between the businesses of the Applicant and the
Respondents
The
Respondents allege that there are a number of important differences
between the business of the Applicant and that of the Respondents.

These differences are the following:
- The
Respondents conduct the business of property inspections and
evaluations, property auctions, business sales and property finance

throughout South Africa. However, (Record pg 87 para 17) the
Applicant is active in Kwa Zulu Natal and Eastern Cape only;
- The
Applicant has conducted auctions but this has been extremely limited.
For example in 2007, the Applicant did not conduct
any auctions
whilst in eth preceding 9 years the Applicant conducted an average of
2.4 auction a year; (Record pg 91 para 23.3)
- The
Applicant’s business is focused on private sales and not auctions.
The Respondents main area of business is auctions; (Record
pg 91,
para 23.3)
- The
Applicant primarily provides property management services whilst the
Respondents do not; (Record pg 90, para 23.2)
[71] The
Applicant’s response to these allegations is that although there
are differences between the Applicant and the Respondents’

business, they are active in the property field and their services
are offered to buyers and sellers of property. (Record pg 203,
para
25; record pg 212, para 55).
[72] The
Respondents submit that in terms of the Plascon- Evans Rule, the
differences between the Applicant and the Respondents
businesses as
alleged by the Respondents must be accepted.
[73]
There is evidence to demonstrate that the Applicant’s business
also conducts auctions, but at a lesser scale than the Respondents.

It is therefore not be correct as the Respondents contend that the
Applicant’s business is focused on private sales and not
on
property auctions. There is ample evidence to demonstrate that the
Applicant is also involved in property auctions.
[74] The
Applicants’ allegation that the Respondents’ main area of
business is in the conduct of auctions should be viewed in
the light
of the Respondents’ advert in the Natal Mercury of 6 September 2007
which reads as follows:
“
Auction
Alliance is not just a name change, it is an evolution of Alliance
Group” (Annexure “RA11” pg 56 Record).
[75] A
further advert proclaiming the word “Auction Alliance” is not
just a name change it is an evolution of “Alliance Group”
reads
as follows:
“
For
years we have been connecting buyers and sellers under the Auction
Alliance brand. Our continued mission to keep you, our client,
one
step ahead has led to several exciting assets sales and service
offering. As a result we have “evolved” our brand to Alliance

Group. Our focus now extends beyond auctions to a diverse range of
specialist assets and services. It’s about true wealth creation

for you. It show we keep you ahead of the game”
[76] The
Applicant contended correctly in my view that because not only has
the name been changed or the trading style been changed
from “Auction
Alliance” to “Alliance Group”, but now there is the
proclamation to the world that the Respondents are now
going to
diversify their services. The contention by the Respondents that
their main area of businesses is in auctions cannot
be correct in the
light of what is set out above. Although there are some differences
in their fields of activity, they are both
involved in the property
field.
Geographical
Considerations
[77] The
Respondents have contended that whilst they conduct their business
throughout South Africa, the Applicant is active in
Kwa Zulu Natal
and in parts of the Eastern Cape only. The Respondents have alleged
that they initially traded in Western Cape
and Gauteng but have now
conducted auctions nationally since 1998.
[78] Mr
Alderdice testified in the replying affidavit that although a large
proportion of its business is conducted in KwaZulu Natal,
the
Applicant also conducts a significant amount of business in the
Eastern Cape. The Applicant is also conducting business in
Western
Cape and Gauteng. He estimates that approximately one third of the
Applicant’s income is derived from business it conducts
in the
Eastern Cape. The Applicant however has not stated what portion of
its income, if any, is derived from the Western Cape
and Gauteng.
[79] In
this regard the Respondents contends that the only reasonable
inferences that can be drawn is that the vast majority of
the
remaining two third of income is derived from business activities in
KwaZulu Natal. The Respondents submit further that on
the proper
application of the test in
Plascon
Evans Paints. Ltd v Van Riebeeck Paints (Pty) Ltd
1984 (3) SA 632A
(“
Plascon-
Evans Rule”), the court must find that the Applicant’s business
is limited to KwaZulu Natal and any business conducted
outside that
area is very limited. The Respondents referred to the case of
GPS
Restuarante BK v Cantina Tequila (Mexican Connection CC) (1997 1
ALL-SA 603(T) at 609 B-D
,
the Court quoted with approval the case of
Star
Industrial Company Ltd v Yap Kwee COR
1976 FSR 256
at 269
in
which that court stated:
“
Goodwill
as the subject of proprietary right is incapable of subsisting by
itself. It has no independent existence apart from the
business to
which it is attached. It is local in character and divisible; if the
business is carried on in several countries and
separate goodwill
attaches to it in each”.
(See
also:
Tie
Rack PLC v Rack Store (Pty) Ltd & Another
1989 (4) SA 427
(TPD)
[80] The
Respondents correctly pointed out that a right which is being capable
of being protected must in the area in which an Applicant
seeks to
prevent another from using a similar name or get up. See
Carterham
Car Sales & Coach Works Ltd supra
at par 20
where the following is stated:
“…
as
far as the location of reputation is concerned, it must subsist where
the misrepresentation complained of causes actual or potential
damage
to the drawing power of the plaintiff’s business. Otherwise the
misrepresentation would be made in the air and without
any
consequences…”
[81] Although
the Applicant appears to have demonstrated that it has reputation
within the province of KwaZulu Natal and some parts
of the Eastern
Cape, the issue is whether it has also establish whether it has such
reputation capable of being protected outside
those areas. The
Respondents have contended that they in comparison have traded
nationally and have substantial reputation in
areas in which the
Applicant has no presence or reputation. This apparent from the
following facts:
The
Applicant is based in Durban;
The
example of alleged actual confusion have all taken place or arisen
in KwaZulu Natal;
The
affidavit of Collin, Dales, Realton, Beare and Cleaver who trade in
KwaZulu Natal and Durban established that the Applicant
has a
reputation in KwaZulu Natal and nowhere else. In this regard the
Respondent appear to concede that these affidavits establish
that
the Applicant has a reputation in KwaZulu Natal and nowhere else;
The
Applicant, itself, states that it has grown into one of Durban
leading industrial and commercial consultants (Record pg
42).
[82] There
is only a bare allegation by the Applicant’s deponent that the
Applicant also conducts business outside KwaZulu Natal
and Eastern
Cape. There is no evidence on the papers to demonstrate that the
Applicant also conduct business either in Western
Cape or Gauteng or
anywhere else other than the single sale which appeared to be a once
off incident in Dubai which of course does
not add to the reputation
of the Applicant as Dubai is outside South Africa. The Applicant has
contended that it also conducts
business in Western Cape and Gauteng
by virtue of its property management there. Annexure RA3, p34 of
record, referred to by Applicant
in support of this allegation does
not bare testimony to this, it only refers to Applicant’s clients
in KwaZulu Natal and some
parts of Eastern Cape and other unnamed
areas.
[83] The
probabilities are therefore high that the Applicant has not
discharged the onus of proving that it has a reputation in
areas
outside KwaZulu Natal and parts of the Eastern Cape.
[84] The
question to be decided in this regard is whether the Applicant’s
goodwill extends to areas outside KwaZulu Natal and
some parts of the
Eastern Cape and in my view, the Applicant must prove this fact on a
balance of probabilities. On my assessment
of all the facts, in this
regard, I am satisfied that the Applicant has not succeeded in
establishing that its reputation extends
beyond the areas of KwaZulu
Natal and parts of the Eastern Cape.
Probability
of deception or confusion
[85] The crucial question in every case of passing-off
is whether there is a reasonable likelihood of confusion or
deception. The
onus is on the Applicant to prove that there is
confusion or deception on the balance of probabilities.
(
Capital
Estate & General Agencies (Pty) Ltd & Others v Holiday Inn
Incorporated & Others
1977 (2) SA
196
(A) at 929 C-E); Selmack Pty Ltd v West Street Trading Company Pty
Ltd
1981 (4) SA 707
(D and CLD) at 712 H).
I must point at this stage that based on my assessment of the
evidence in this matter there is common field of activity on the

businesses of both the Applicant and the Respondent. The most common
being the sale of property, whether industrial, residential
or
otherwise, they are both engaged in the field of property. It has
been submitted on behalf of the Applicant correctly in my
view that
in the present case the common customers are buyers and sellers of
immovable property and it matters not that to the
particular method
by which the desire to buy and sell property. Although as a matter
of law, common field of activity is not required,
evidence has
established that there is a common field of activity in the
businesses of both the Applicant and the Respondents.
[86] Evidence of persons who have been actually deceived
is of great importance in cases of passing-off. The Applicant has
presented
the following evidence in this regard:
The
Applicant has received telephone calls from members of the
interested public inquiring as to the Alliance Groups collection

with the Applicant, this evidence is not supported by any
confirmatory affidavits. The Respondents submitted correctly in my

view that no evidential weight should be attached to this evidence
as it is of a hearsay nature.
[87] Collins, Dales, Messrs Rearton, Beare and Cleave
have filed affidavits on behalf of the Applicant and they are of the
opinion
that the change of name from “Action Alliance” to
“Alliance Group” will cause confusion to members of the public.
The
Respondents have submitted, correctly in my view, that the
opinions of these individuals that confusion could occur is
irrelevant
to these proceedings as they are in no better position
than the Court to make such a determination. Mr Morley for the
Applicant
has conceded that these witnesses cannot give evidence that
is relevant to the issue of deception or confusion.
[88] Alderdice in his Supplementary Affidavit testified
that a journalist in his report was confused regarding the identity
of the
Applicant and the Respondents. He then prepared a press
release which included the following:
“Please note that the Alliance Property Group is not to be confused
with Cape Town based, and recently rebranded, Alliance Group

(formerly Auction Alliance). The two companies are entirely separate
and are not related in any way.”
According to Mr Alderdice upon receipt of this press
release by the reporter with the Natal Mercury prepared a report
which was
published in the Natal Mercury on Tuesday 20 May 2008,
Alderdice testified that notwithstanding their warning to the
reporter not
to confuse the Applicant with the First Respondent, it
will be noted from the report that the Applicant has been confused
with
the First Respondent. In his report, the reporter referred to
the “Alliance Group” instead of the Applicant on two occasions
in
his report. Besides the fact that this evidence is in fact hearsay,
this has not been confirmed by the reporter. There was
no reason for
the reporter to be confused as he was warned previously by Mr
Alderdice in a press release. In my view this does
not constitute
evidence of actual confusion.
[89] Alderdice testified that the first page of the
Google search of the World Wide Web, the word “Alliance” in pages
from South
Africa result in a link to the Respondents’ website.
The printout of such search is “RA17” on page 229 on record. He
submits
that a person who is aware of the Applicant’s “Alliance”
mark and wishes to search the telephone directory or the internet
for
its contact details is likely to be diverted to the Respondents’
details by conducting such a search. Interestingly what
appears on
annexure “RA17” amongst other names is the Respondents’
previous name “Auction Alliance” and not “Alliance
Properties”.
According to the Respondents this search demonstrate how common the
use of the word “Alliance” is (256 000)
results in South Africa
returns, record page 229), and how the Applicant cannot have any
rights to its exclusive use. The Respondents
submit that it is trite
that the results of such a search engine are not within the
Respondents’ control. It is highly unlikely
that a person would
search for the Applicant by using the word “Alliance” only. The
results for a similar search conducted
using the word “Alliance
Property Group” are very different. The Applicant has not produced
any evidence that members of the
public are being diverted to the
Respondents or their website due to this search engine. No confusion
exists as the Applicant
and the Respondents’ websites are also so
different that no reasonable person could be confused by them. The
Applicant’s first
name of its website appears on page 182 record
annexure “RL37” and it is boldly written “Alliance Property
Group”, the
Respondents’ website appears on page 184 record
annexure “RL38” and it is also written in bold “Alliance
Group”, there
are a number of differences on the two websites. A
close examination of these websites reveals that no reasonable minded
person
can be confused by the two websites.
[90] It is clear from the analysis of the evidence
presented by Applicant in support of actual confusion that the
evidence establishes
no actual confusion in the significant portion
of the public. The issue is therefore whether there is any likelihood
that a significant
portion of the public would be confused or misled
in dealing the businesses of the parties.
[91] The Applicant’s getup in annexures “RL7 and
RL8” to the Applicant’s Founding Affidavit, record pages 42 to 43
have
been correctly described by the Respondents as follows:-
the Applicant’s
name is written in white on a blue background;
the text below is
in red;
the
name “Alliance Property Group” is written in a font which is not
in caps (i.e. in capital letters);
the
name of the Applicant is written as “Alliance Property Group “
and below a horizontal line, the words “Commercial and
Industrial
Property Consultant” appear (record pages 42 to 52);
the
words are also placed in close proximity to a grycoscope which is a
mark or logo of the Applicant (record page 42 to 52).
[92] The Respondents’ get-up (which is reflected in
annexure “RL11” to the Applicant’s Founding Affidavit, record
page 56
and pages 146, 147, 153 to 158) can be described as follows:-
the
name “Alliance Group” is written in blue on a white background;
the
word “Alliance” is also written in caps and the word “Group”
in ordinary letters;
the text of the
Respondents advertisement is usually blue or black depending on
whether the colour will reproduce well in the
media in which the
advertisement is being place;
in
addition, the words “Alliance Group” never appear without a
triangle facing downwards either below or next to the words.
This
triangle (which is also blue) forms an integral part of the
trademark of the “Alliance Group” and is distinctive
of the
Respondents’ business.
[93] The Applicant submitted that by virtue of the
marked similarities between the “Alliance Group” and the
Applicant’s trading
style, there is at least a reasonable
likelihood that members of the public may be confused in believing
that the business of the
Respondent is connected with that of the
Applicant. The Applicant submitted that this is exacerbated by the
following similarities
between the Respondent’s advertisement and
the Applicant’s boards:
both are printed
in the same colours, namely, blue and white;
both
are printed in similar fonts and the use a combination of capital
letters and small letters;
the text of the
Respondent’s advertisement is often blue which is the colour
predominately used by the Applicant.
[94] The Applicant submits that the differences do not
obviate the likelihood of deception or confusion as the word mark
“Alliance”
is dominant and buyers and sellers are unlikely to
draw the distinction on the basis of the non-distinctive elements of
the respective
advertisements.
It is clear that relatively small differences, in get-up
may be sufficient to avoid confusion or deception
(
see
Reckitt Colman SA (Pty)Ltd v SC Johnson
& Son (Pty) Ltd
1995 (1) SA 725
TPD).
In this matter the Court found that
differences between the Applicant and Respondent’s get-up will
avoid any confusion.
[95] The Applicant submits that the confusion lies in
the name. The most important ways in which companies’ reputation
is spread
in any industries is by word of mouth. People spreading
reputation of a company by word of mouth, do so because of their
experience
with that company and not as a result of seeing
advertisement in the media or elsewhere.
Considering the distinctions and similarities referred
to above,
I am of the view that there is no
reasonable likelihood that members of the public at large may be
confused into believing that
the business of the Respondent is or
connected with that of the Applicant.
[96] Considering the totality of the evidence presented,
and argument advanced in this regard, I am of the view that the
Applicant
has certainly failed to prove that there is a reasonable
likelihood of confusion or deception in this matter.
[97] Consequently, the Applicant has failed to establish
that the Respondents are passing-off their property or services as
those
of the Applicant, or as being associated with the Applicant in
the course of trade, by using the name, mark and trading style
“Alliance
Group”.
[98] In order for the Applicant to succeed in obtaining
a final interdict the Applicant must establish:
(1) A clear right;
(2) An injury actually committed or reasonably
apprehended; and
(3) The absence of any other satisfactory or alternative
remedy.
I am satisfied that the Applicant has failed to satisfy
the requirements for a final interdict.
[99] In the result the Applicant’s application falls
to be dismissed.
[100] There is no reason why costs should not follow the
result in this matter. Counsel for the Respondents has asked for
costs
of three Counsel. Although this matter is complex, it is not
complex enough to warrant the engagement of two Silks and one Senior

Junior. One Senior Counsel and one Senior Junior would have been
able to represent the Respondents adequately in this matter.
In the
circumstances, I will allow the costs of two Counsel in this matter.
In
the result, I make the following order:
The
application is dismissed with costs, such costs to include the costs
consequent upon the employment of two Counsel.
______________________
SISHI J
Date of hearing : 20 June 2008
Date
of Judgement :
Applicants’
Attorneys : Cox
and
Yeats
C/o
Stowel and Co.
295 Pietermaritzburg Street
Pietermaritzburg
Appl
icants’
Counsel : Adv. G.E. Morley SC and D.W. Finnigan
Respondents
’
Attorneys : Hofmeyr Herbstein Gihwala Incorporated
C/o
Mason Incorporated
3
rd
Floor Fedsure House
215 Church Street
Pietermaritzburg
Respondent’s
Counsel : Adv. H.
M.
Carstens SC; Adv. J. A Roux
SC
and Adv. D.Van Reenen
_______________________________________________________________________________
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