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IN THE COMPANIES TRIBUNAL OF THE REPUBLIC OF SOUTH AFRICA
(“The Tribunal”) CASE NO: CT030Mar2015
In the matter between:
RAMADA INTERNATIONAL INC. THE APPLICANT
AND
RAMADA INVESTMENTS (PTY) LTD THE RESPONDENT
(2013/185610/07)
Coram K. Tootla
Decision delivered on 22 July 2015
DECISION
______________________________________________________________________________
INTRODUCTION:
[1] The Applicant is Ramada International Inc., a company incorporated in Delaware under
the “company laws of the United States of America” brings an application in terms of
Sections 11 (2) and 160 of the Companies Act 2008 (“the Act”) read with Regulation (Reg.)
153 for an order that the First Respondent change its name be ordered to change its name
because it does not comply with sections 11 (a) (iii) , or Section 11(2)(b) (iii) and 11(2)(c)(i)
of the Companies Act.
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[2] The Respondent is RAMADA INVESTMENTS (PTY) LTD, a company incorporated in
terms of the Compan ies Act having its registered place of business at address at 297
Makwarela, Sibasa, Limpopo.
PROCEDURE:
[3] The Applicant served a copy of the CTR 142 application in accordance with the rules and
filed same with the Tribunal timeously. The CTR FORM 145 and accompanying affidavit
was also served and filed.
[4] The Respondent did not serve or file any notice to oppose the Applicant’s application nor
served or filed any answering p apers to the Applicant’s claim despite having received the
letter of demand and having responded to the email of the Applicant requesting it to change
its company name.
[5] However, the Applicant has not indexed the papers sequentially and in a proper manner
to assist the Tribunal. It would be preferred that the procedure used in the High Court be
used for future purposes. The papers have not been served on the Companies and
Intellectual Commission (CIPC) as second Respondent nor has the Applicant requested an
order in accordance with Section 160 (3) and Section 14(2) of the Act. This is required to
ensure that the name is changed by CIPC if the Respondent does not do so.
[6] In addition, the Applicant’s papers are uncoordinated in that the orders requested for in
CTR 145 and the affidavits are differing and also unclear and certainly not in the interest
of the Applicant. Much of the evidence is scattered in various affidavits without proper
coordination. The Applicant’s attorney has gone to great lengths to set out the case law
which is useful and relevant. However, with due respect the application of the law to the
facts of its case has not been properly done nor justified . The Tribunal is accordingly at
pains to find reasons to justify the claims of the Applicant.
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[7] Finally, the Applicant’s attorney has confused Section 34 (1) and Section 35 of the Trade
Marks Act in its application, the former is applicable to trade mark infringement and is
solely within the jurisdiction of t he High Court, whilst the latter is applicable to well –
known trademarks as contemplated in Section 11(2 ) (a) (iii).
BACKGROUND:
[8] The Applicant claims that its trade mark RAMADA has been in existence since 1958 in
various countries in the hotel and restaurant business; and was subsequently registered in
South Africa in 1984 and has been in existence since that date.
[9] The Applicant also claims common law rights in the name”RAMADA” due to its “wide
spread and extensive use” thereof since 1958. Currently the use of the trademark is used in
900 RAMADA hotels in the United States and in more than 60 countries in the world. It can
be noted that the registration of the Respondent took place in 2013 after registration of the
RAMADA trademark and h as no consent to use the trademark as its name from the
Applicant.
[10] The Applicant contends that it has spent a considerable amount of money and time in
promoting and advertising goods under the RAMADA trade mark and that the unauthorized
use of the sa id trademark or of confusingly similar marks is damaging to the business of
the Applicant.
[11] Finally, the Applicant contends that use of the name RAMADA takes unfair advantage of
the extensive goodwill and reputation subsisting in the RAMADA trade mark.
[12] It also contends that the Respondent’s company name is “confusingly similar to its
trademark and that it offends against the provisions of Section 11(2) (b) of the Act.
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[13] An order is thus sought for the Respondent to change its name by virtue of the provisions
of Section 11(2 ) (c) ( i) on the basis that it falsely implies or suggest or is otherwise
reasonably likely to mislead a person to believe, incorrectly, that the Respondent is part of,
or associated with the Applicant. An order is also sought in terms of Section 11 (2 ) (a)
(iii) alternatively Section 11 (2) (b) (iii) and Section 11 (2) (c) (i).
APPLICABLE LAW:
[14] For the purpose of brevity Section 11 of the Companies Act and Reg 142 (applies where
relevant) will not be set out in detail herein.
[15] Note the applicable portion of Section 11 (2)(a)(iii) provided, inter alia, that the name of
the company must not be the same as a registered trade mark belonging to a person other
than the company, or a mark in respect of which an application has been filed in the
Republic for registration as a trade mark or a well-known trade mark as contemplated in
section 35 of the Trade Marks Act, 1993 (Act No. 194 of 1993), unless the registered
owner of that mark has consented in writing to the use of the mark as the name of the
company;
[16] Note the applicable portions of s 11(2 ) (b) of the Companies Act provides inter alia that
the name of a company must not be confusingly similar to a registered trade mark
belonging to a person other than the company, or a mark in respect of which an applicatio n
has been filed.
[17] Note also the applicable portions of s 11(2)(c)(i) of the Companies Act provides inter alia
that the name of a company must not falsely imply or suggest, or be such as would
reasonably mislead a person to believe incorrectly, that the company is part of, or
associated with, any other person or entity.
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EVALUATION:
[18] Applied to the matter under consideration the question as to what is the same as a t rade
mark in terms of Section 11 (2) (a) (iii) is inapplicable to the situation at hand as the
company name “ RAMADA INVES TMENTS” is not the same as the “ RAMADA”
trademark. Thus at the outset, the application fails on this ground.
[19] The Applicant has requested an or der in terms of Section 11 (2 ) (b) (iii) alternatively to
Section 11 (2) (a) (iii). Thus, what is “confusingly similar” in Section 11 (2) (b) has to be
examined carefully to determine whether this is in fact so. “Confusingly similar” means
that the names are as alike in a manner that will confuse the reasonable person, being the
“ordinary reasonable careful man, i.e. not the very careful man nor the very careless man
as stated below in Link’s and Aziza’s case. It is clear that the ordinary reasonable careful
person will be confused as mentioned in these cases merely because one word is the same
and due to its side by side by use.
[20] When referring to the case law on the subject, i t is submitted that it must be as alike in a
manner that will confuse the reasonable person, i.e. the “ordinary reasonable careful man,
i.e. not the very careful man nor the very careless man” ( Link Estates (Pty) Ltd v Rink
Estates (Pty) Ltd 1979 (2) SA 276 (E) at 280). This reasonable man (person) should further
be qualified as in Reckitt & Colman SA (Pty) Ltd v SC Johnson & Son SA (Pty) Ltd 1993
(2) SA 307 (A) at 315F-G: “A rule of long standing requires that the class of persons who
are likely to be the purchasers of t he goods in question must be taken into account in
determining whether there is a likelihood of confusion or deception.”
[21] In Azisa (Pty) Ltd v Azisa Media CC and Another [2002] 2 All SA 488 (C) the Court found
that the use of the name “Azisa Media CC” is not undesirable, but that the word “Azisa”
only would in all likelihood lead to inconvenience and confusion amongst the customers.”
only would in all likelihood lead to inconvenience and confusion amongst the customers.”
The business spheres of the applicant and the respondent are important in respect of the
Trade Marks Act No. 194 of 1993.
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[22] In Capital Estates and General Agencies (Pty) Ltd and Other v Holiday Inns Inc. and Other
1977 (2) SA 916 (A) at 929 E -0, the courts came to the conclusion that even if the parties
do not appear to carry on business in precisely the same field, this did not mean that there
will not be confusion or deception in trade.
[23] From the Capital Estate Case (929 E -O) it can be concluded that in claiming that another
corporation’s name is undesirable, there is no bar to obtain relief when there is an absence
of a common field of activity in a circumstance when there is a reasonable likelihood of
confusion. For the reasons cited above, it is clear that there is at a reasonable likelihood of
confusion due to the Applicant’s well known use of the trade mark and its presence in the
market as enunciated in the founding affidavit, but it could easily be much more.
[24] In addition, the pertinent case which is relevant to the doctrine of imperfect recollection has
been captured in Standard Bank of South Africa Limited v United Bank Limited & Another
1991 (4) SA 780 (T) 8011 to 802B, where the court said that there is a probability that a
substantial number of people will be at least confused, if not deceived, given the fact that
an individual does not have the two marks before him, side by side and that memory is often
imperfect.
[25] Thus it is clear from the aforementioned, that there is a reasonable likelihood of confusio n
if both the name and the mark are to be used together in a normal and fair manner in the
ordinary course of business especially since imperfect recollection can take place as can be
seen from some the cases quoted above. It is evident therefore that the name RAMADA as
incorporated in the Respondent’s company name falls within the ambit of only Section 11
(2) (b) (iii) of the Companies Act.
[26] In my opinion “falsely imply or suggest” in Section 11(2) (c) (i) requires at the least the
element of fault in the form of intent which has been not been proven by any evidence.
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FINDINGS:
[27] The Tribunal does not have the jurisdiction to make a finding that there has been an
infringement of a registered trade mark in terms of section 34 of the Trade Marks Act this
falls squarely on the shoulders of the High Court.
[28] However, the Applicant has shown that use of the name is “confusingly similar” as set out
in Section 11 (2 ) ( b) (iii). Similar” as in section 11 (2) (b) would be “having a marked
resemblance or likeness” and that the offending mark (or name) should immediately bring
to mind the well-known trade mark or other name (Refer Bata Ltd v Face Fashions CC
2001 (1) SA 844 (SCA)). Mere similarity is also not sufficient, it must be confusingly
so.
[29] The Applicant’s application is granted as set out below.
ORDER:
1. An administrative order is made in terms of Section 160 (3) (b) (ii) that the
Respondent change its name to one which does not incorporate the word RAMADA
as it is in contravention of Section 11 (2) (b) (iii).
2. This order must be served on the Applicant, Respondent and on the Registrar of the
CIPC by the Tribunal’s Recording Officer (Registrar).
3. The Respondent is hereby ordered to change its name within 90 days of date of
receipt of this order and to file a notice of amendment of its memorandum of
incorporation.
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4. There is no order of cost against the Respondent considering that the matter has not
been opposed. The Respondent is hereby exempted from the requirement to pay the
prescribed fee for filing the notice of amendment.
5. Since the Respondent is a profit company, in accordance with Section 11 (1) (b)
and (3) (a) of the Act, the Respondent is at liberty to use its registration number as
its company name immediately followed by the expression “ South Africa” should
it not be in a position to use another name.
6. The Registrar of CIPC is directed to inform the First respondent forthwith of the
decision of the Tribunal and to ensure that the name is changed within the requisite
time period as aforesaid; and to invite the First Respondent to file an amended
Memorandum of Incorporation using a satisfactory name.
7. Should the Respondent not comply with the order of the Tribunal within the 90 day
period, the Registrar of CIPC is directed to change the Respondent’s name to its
registration number without the Respondent’s consent (in accordance with Section
160 (3) and Section 14(2) of the Act.
k.y. tootla (electronically signed)
_____________________
KHATIJA TOOTLA
Member of the Companies Tribunal
22 July 2015